DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Acknowledgements
This action is in response to the preliminary amendments filed on 02/03/2026. The system claim 13 has been canceled. Claims 1-20 are pending and presented for examination.
Claim Objections
Claim 1 is objected to because of the following informalities: “One or more processors” should be “one or more processors.” Appropriate correction is required.
Claim 5 is objected to because of the following informalities: “n endpoint” should be “an endpoint.” Appropriate correction is required.
Claims 10 and 19 are objected to because of the following informalities: “received from” should be “obtained from.” Appropriate correction is required.
Claim 11 is objected to because of the following informalities: “the user device” should be “a user device.” Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5, 10, 12-16, and 19-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9 and 18 of U.S. Patent 12,346,894. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are broader in scope than claims 9 and 18 of U.S. Patent 12,346,894 (see below). Furthermore, “obtain” and “receive” are interpreted to have similar meaning in the context of these claims. Claims 9 and 18 of U.S. Patent 12,346,894 are method and computer product claims, respectively. While claims 1-5, 10, and 12 of the instant application are system claims, they would be rejected over method claim 9 of U.S. Patent 12,346,894 because one of ordinary skill in the art would recognize that modifying method claim 9 of U.S. Patent 12,346,894 to be implemented by one or more processors would result in a predictable structure that would read on claims 1-5, 10, and 12 of the instant application.
Application 19/223,937
U.S. Patent 12,346,894
Claim 13. A method, comprising:
obtaining at least one identity claim as at least one by-reference identity claim from an issuing party device;
digitally signing, using a processor, an access token to obtain a digitally signed access token;
obtaining an API call; and
sending the at least one by-reference identity claim and the digitally signed access token that corresponds to the at least one identity claim.
Claim 9. The method of claim 1,
wherein the user device obtains the at least one identity claim as the at least one by-reference identity claim from the issuing party device, wherein the at least one by-reference identity includes the URL of the endpoint of the attribute value;
digitally signs an access token to obtain the digitally signed access token;
receives the API call from a relying party device; and
sends the at least one by-reference identity claim and the digitally signed access token that corresponds to the at least one identity claim to the relying party device based on the API call.
Claim 14
Claim 9
Claim 15
Claim 9
Claim 16
Claim 9
Claim 19
Claim 9
Claim 20
Claim 18
Claim 1
Claim 9
Claim 2
Claim 9
Claim 3
Claim 9
Claim 4
Claim 9
Claim 5
Claim 9
Claim 10
Claim 9
Claim 12
Claim 9
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wahl U.S. 2010/0299738 in view of Cross et al. U.S. Patent 7,703,128 (herein as “Cross”).
Re Claim 1, Wahl discloses a system, comprising:
One or more processors configured to:
obtain at least one identity claim as at least one by-reference identity claim from an issuing party device (Fig. 4, 402 – “generate claim (i.e. identity claim) at identity provider (i.e. issuing party device) using one or more processors of identity provider, claim including first indicator specifying access rights of entity with respect to service (i.e. by-reference identity claim) provided by relying party);
digitally sign an access token to obtain a digitally signed access token ([0051] – “The token is encrypted and signed by identity provider 104);
obtain a […] call [0037] – “Upon receiving the request for information from relying party 108”; and
send the at least one by-reference identity claim and the digitally signed access token that corresponds to the at least one identity claim ([0052] – “forwards the token to the server. The server decrypts the token to determine the user’s access rights, which are specified by the first claim,” Fig. 4, 406 – “provide first indicator to relying party,” the claim includes the first indicator, therefore, the claim, i.e. by-reference identity claim, is provided, i.e. sent).
However, Wahl does not expressly disclose
the call is an API call.
Cross discloses a process and an apparatus for digital ID management. Specifically, Cross discloses
the call is an API call (Col. 7, lines 18-26, Fig. 2 – request(s) can be made via an API call to perform various actions on credentials).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Wahl’s request for information to the teachings of requesting via an API call in Cross. One would be motivated to make this modification, i.e. using an API, so that different application programs do not have to be designed and/or developed using specific digital IDs or digital ID types Cross, Col. 15, lines 16-17 and to allow digital IDs and credentials to be uniformly configured regardless of the particular operating environment or the application program Cross, Col. 15, lines 20-22, thereby simplifying program design and development.
Re Claim 2, Wahl in view of Cross teach the system of claim 1, and Wahl in view of Cross further teach wherein the at least one identity claim is obtained with a user device (Wahl, [0032], Fig. 1 – a user system 106 including client 114, [0043] – “Upon receiving the claim containing the indicator…client 114 provides…,” i.e. user system obtains the claim).
Re Claim 3, Wahl in view of Cross teach the system of claim 1, and Wahl in view of Cross further teach wherein the at least one identity claim is obtained from an issuing party device Wahl, [0036].
Re Claim 4, Wahl in view of Cross teach the system of claim 1, and Wahl in view of Cross further teach wherein the at least one by-reference identity claim includes a URL Wahl, [0046] – “the indicator may specify attributes associated with the entity,” [0073] – “Scope URI attribute 314a represents a uniform resource indicator (URI) associated with a relying party. The URI may include a uniform resource locator (URL).”
Examiner notes that the limitation of claim 4 is nonfunctional descriptive material see MPEP 2111.05. The content of the at least one by-reference identity claim does not meaningfully limit any of the claimed method step(s) and/or computer operation(s). Therefore, the content of the at least one by-reference identity claim cannot be given patentable weight. However, for purposes of compact prosecution, prior art is provided above.
Re Claim 5, Wahl in view of Cross teach the system of claim 4, and Wahl in view of Cross further teach wherein the URL comprises the URL of n endpoint of an attribute value (Wahl, [0073] – “The URI may indicate location of the relying party within a computer network,” i.e. an endpoint).
Examiner notes that the limitation of claim 5 is nonfunctional descriptive material see MPEP 2111.05. The content of the URL does not meaningfully limit any of the claimed method step(s) and/or computer operation(s). Therefore, the content of the URL cannot be given patentable weight. However, for purposes of compact prosecution, prior art is provided above.
Re Claim 6, Wahl in view of Cross teach the system of claim 5, wherein the attribute value comprises a credit score.
Examiner notes that the limitation of claim 6 is nonfunctional descriptive material see MPEP 2111.05. The content of the attribute value does not meaningfully limit any of the claimed method step(s) and/or computer operation(s). Therefore, the content of the attribute value cannot be given patentable weight.
Re Claim 7, Wahl in view of Cross teach the system of claim 1, and Wahl in view of Cross further teach wherein the digital signing is performed with a user device (Wahl, [0051] – “The token is encrypted ad signed by identity provider 104,” [0036] – “Identity provider 104 is a computer,” i.e. a user device. Paragraph [0040] of the instant specification discloses that a user device, without limitation, may be selected from a desktop computer, a server, etc.).
Re Claim 8, Wahl in view of Cross teach the system of claim 7, and Wahl in view of Cross further teach wherein the digital signing uses a user private key Cross, Col. 16, lines 44-46 – “private key 612…give a user the ability to authenticate, digitally sign…”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Wahl’s digital signing with the teachings of using a private key for digital signing in Cross. Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. Therefore, the combination of prior art elements according to known methods would yield predictable results and renders the claim obvious.
Re Claim 9, Wahl in view of Cross teach the system of claim 1, and Wahl in view of Cross further teach wherein the digital signed access token is valid for a specified period of time Wahl, [0051] – “incorporates the first claim into an encrypted and signed token,” [0092] – “claim includes a first indicator,” [0045] – “the indicator is effective for a designed period of time.”
Re Claim 10, Wahl in view of Cross teach the system of claim 1, and Wahl in view of Cross further teach wherein the API call is received from a relying party device Wahl, [0037].
Re Claim 11, Wahl in view of Cross teach the system of claim 1, and Wahl in view of Cross further teach wherein sending the at least one by-reference identity claim and the digitally signed access token is with the user device (Wahl, [0052] – “Client 114 forwards the token to the server,” The server decrypts the token to determine the user’s access rights, which are specified by the first claim,” Fig. 4, 406 – “provide first indicator to relying party,” the claim includes the first indicator, therefore, the claim, i.e. by-reference identity claim, is provided, i.e. sent, Fig. 1 – user system 106 includes the client 114).
Re Claim 12, Wahl in view of Cross teach the system of claim 1, and Wahl in view of Cross further teach wherein sending the at least one by-reference identity claim and the digitally signed access token is to the relying party device (Wahl, [0052] – “forwards the token to the server,” The server decrypts the token to determine the user’s access rights, which are specified by the first claim,” Fig. 4, 406 – “provide first indicator to relying party,” the claim includes the first indicator, therefore, the claim, i.e. by-reference identity claim, is provided, i.e. sent, [0047] – “relying party 108 is represented as a server”).
Re Claims 13-19, they are the method claims of system claims 1-4, 7, and 9-10, respectively. They recite similar distinguishing features as system claims 1-4, 7, and 9-10. Therefore, claims 13-19 are rejected for similar reasons above.
Re Claim 20, it is the computer program product of system claim 1. It recites similar distinguishing features as claim 1. Furthermore, Wahl discloses computer program products comprising software stored on computer-readable medium to operate as described in the prior art [0120]. Therefore, claim 20 is rejected for similar reasons above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Gassner et al. U.S. 2018/0218121 directed to system and method for online identity management. See at least [0048].
Satish et al. U.S. Patent 8,881,253 directed to method and apparatus for accepting a digital identity of a user based on transitive trust among parties. See at least Col. 3, lines 22-48.
O’Brien et al. U.S. 2011/0088090 directed to enhancements to claims based digital identities. See at least [0034].
Cameron et al. U.S. Patent 8,104,074 directed to identity providers in digital identity system. See at least Col. 3, lines 23-48.
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/CHRISTINE DANG/Examiner, Art Unit 3698