DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is response to communication: response to original application filed on 04/29/2025.
Claims 1-20 are currently pending in this application.
The IDS filed on 04/29/2025 has been accepted.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 2, 9-12, 16, and 17 are rejected under 35 USC 101 because the clamed invention is directed toward an abstract idea without significantly more. The independent claims require generating an authentication request, delivering the request using an inter-process communication when an operating system version of the passkey service is lower than a predefined version, and delivering the passkey authentication request when the operating version of the passkey service is equal or greater than the predefined version. These limitations merely cover mental processes, but for the recitation of generic computing components.
Next, the judicial exception is not integrated into a practical application. Other elements in the claim include operating systems, service applications, and libraries in a computing environment. These additional elements do not improve the functioning of a computer or other technology, are not applied with any particular machine (except for generic computing elements), do not effect a transformation of a particular article to a different state, and are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Using a generic computing device to receive and process data amounts to merely applying the judicial exception using a generic computing component. Moreover, delivering a request one way vs. another way based on an operating system version amount to insignificant extra-solution activity that is insufficient to integrate the abstract idea into a practical application. Since the claims do not recite an improvement to the functioning of the computer system or other computer related products, nor do the claims recite an improvement to a technical field, the claims do not integrate the abstract idea into a practical application and are thus directed toward an abstract mental process.
Further, the claims do not include additional elements that are sufficient to amount to significantly more than a judicial exception. The present claims do not recite specific limitations that are not well understood, routine, and conventional. As mentioned above, the claims recite forwarding a request in two different ways based on the operating system version. Routing requests based on compatibility is a well understood and routine. The claims do not go any further in how the requests are transformed or routed when an operating system version is not compatible. Such limitations amount to no more than applying the exception using generic computer components.
Therefore, the claims are not patent eligible as the claims are directed toward a judicial exception that do not amount to significantly more. Dependent claims 2, 4, 9, 10, 12, and 17 do not cure such deficiencies.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
As per claims 1-10, the claims recite “A passkey service provision apparatus comprising” This language invokes 112(f). As the claims invoke 112(f), the claims now pertain to a single means claims. The claims are rejected under 35 U.S.C. 112(a) because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-10 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim elements “passkey service provision apparatus” included in claims 12-19 are limitations that invokes 35 U.S.C. 112(f). However, the written description fails to clearly link or associate the disclosed structure, material, or acts to the claimed function such that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112 (f); or
(b) Amend the written description of the specification such that it clearly links or associates the corresponding structure, material, or acts to the claimed function without introducing any new matter (35 U.S.C. 132(a)); or
(c) State on the record where the corresponding structure, material, or acts are set forth in the written description of the specification and linked or associated to the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Allowable Subject Matter
Claims 3-8 would be allowable if rewritten to overcome the 101 and 112 rejections, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 13-15 and 18-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Below is the closest art the Examiner has found.
“The Conversation: Apple’s Passkeys update could make traditional passwords obsolete” teaches when passkeys are incompatible with an OS, workarounds are provided. Workarounds include inter-process communications such as utilizing authentication via other devices (page 4).
“The New Stack: 3 Steps to make Logins with Passkeys Relaible” teaches deliveryign a passkey authetnicaiton request provided by an OS when an OS is equal/higher/up to date (see page 2 with mainstream way of utilizing passkeys), and further teaches utilizing inter-process communications when the operating systems are not compatible (pages 3 and 4 with utilizing cross-device authentication when utilizing Android and Ipad systems).
Mondello et al. US Patent Application Publication 2023/0396607 teaches a system utilizing passkeys and passkey management.
Although the references above teach many limitations of the claimed invention, the claims, as a whole, would not have been obvious over the prior art of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON KAI YIN GEE whose telephone number is (571)272-6431. The examiner can normally be reached on Monday-Friday 8:30-5:00 PST Pacific.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Farid Homayounmehr can be reached on (571) 272-3739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON K GEE/ Primary Examiner, Art Unit 2495
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