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 .
Status of Claims
The reply filed on 05/13/2026 is acknowledged. Claims 1-3, 5, 7-15, and 17-20 have been amended. Claims 1-20 are pending and presented for examination.
Claim Objections
Claim 13 is objected to because of the following informalities: “a digitally signed access toke associated with the user device of the user that requested that the issuing party device issue the at least one identity claim for the user n” in lines 5-7 should be “a digitally signed access token associated with the user device of the user that requested that the issuing party device issue the at least one identity claim for the user Appropriate correction is required.
Response to Arguments
Applicant’s amendments, filed 05/13/2026, to claims 1, 5, 10-11, and 19 have overcome the claim objections set forth in the Non-Final Rejection 02/13/2026. Therefore, the claim objections to claims 1, 5, 10-11, and 19 have been withdrawn.
In response to the Applicant’s remarks regarding the double patenting rejection on pgs. 6-7, Examiner notes that the double patenting rejection is not provisional since the first application, which is the basis for the rejection, has been issued as a patent. The instant claims are still considered not patentably distinct from U.S. Patent 12,346,894. During the interview on 05/08/2026, Applicant asserted that the instant application is claiming a different perspective than U.S. Patent 12,346,894. However, upon further consideration, claims 9 and 18 of the patent are claiming steps/operations performed by a user device, which is similar to the instant application. Therefore, the double patenting rejection stands. Please see below for more details.
Applicant’s amendments, filed 05/13/2026, to claims 1, 13, and 20 have overcome the prior art rejection set forth in the Non-Final Rejection 02/13/2026. Therefore, the 35 U.S.C. 103 rejection of claims 1-20 has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of McLean et al. U.S. 2020/0244464.
In response to Applicant’s remarks regarding Wahl and Cross not providing for a user device that sends a by-reference identity claim on pg. 10, Wahl discloses in [0051] that the first claim, i.e. by-reference identity claim, is incorporated into an encrypted and signed token. The token is provided to the client, i.e. user, and the client forwards, i.e. sends, the token, which contains the first claim, to the server. Therefore, Wahl does disclose that the user sends both the token and by-reference identity claim. Examiner recognizes that the token is not signed by the user device as claimed. Such limitation is remedied by McLean, as noted below. Please see below for a detailed mapping and rationale on how the prior art applies to the claimed limitations.
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 are 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. Similarly, the digitally signed access token associated with the user device in the instant claims is interpreted to be analogous to the user device performing the step of digitally signing the access token in claims 9 and 18 of the patent. 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:
in response to a request, by a user of a user device, that an issuing party device issue at least one identity claim for the user, obtaining at least one by-reference identity claim for the user from the issuing party device;
digitally signing, using a processor, an access token to obtain a digitally signed access toke associated with the user device of the user that requested that the issuing party device issue the at least one identity claim for the user n;
obtaining an API call; and
sending the at least one by-reference identity claim and the digitally signed access token associated with the user device.
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 McLean et al. U.S. 2020/0244464 (herein as “McLean”), and further 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 of a user device configured to Fig. 1, 106, 114, Fig. 10:
in response to a request, by a user of the user device, that an issuing party device issue at least one identity claim for the user ([0034] – “client 114 may send a request”), obtain at least one by-reference identity claim for the user from the issuing party device ([0051] – “Identity provider 104, i.e. issuing party device, incorporates the first claim, i.e. by-reference identity claim, into an encrypted and signed token, which identity provider 104 provides to client 114,” i.e. obtain. The first claim specifies the user’s access rights, i.e. at least one by-reference identity claim for the user);
[…]
obtain a […] call directed to an application of the user device ([0037] – “Upon receiving the request for information from relying party 108, client 114…,” client 114 can be a Web browser, Web crawler, or other type of client deployed on user system 106 [0034]); and
send the at least one by-reference identity claim and the digitally signed access token […]([0051] – first claim is incorporated into the token that is encrypted and signed, [0052] – “Client 114 forwards, i.e. sends, the token to the server).
However, Wahl does not expressly disclose
digitally sign an access token to obtain a digitally signed access token associated with the user device of the user that requested that the issuing party device issue the at least one identity claim for the user.
McLean discloses a blockchain based authentication method and system. Specifically, McLean discloses
digitally sign an access token to obtain a digitally signed access token associated with the user device of the user that requested that the issuing party device issue the at least one identity claim for the user [0052] – “The generated authentication token is digitally signed by the user A device and is transmitted,” [0047] – “user A wants to access the database…is requesting authentication via a smart phone.”
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 claims-based authorization for managing access with the teachings of a user device digitally signing an access token in McLean. One would be motivated to make the combination to ensure that the protected resources can only be accessed by an appropriate user McLean, [0018].
However, Wahl in view of McLean do not explicitly teach
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 in view of McLean’s claims-based authorization for managing access with 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 McLean and Cross teach the system of claim 1, and Wahl in view of McLean and Cross further teach wherein the at least one by-reference identity claim specifies an endpoint from which an attribute value associated with the at least one by-reference identity claim is dynamically retrievable upon presentation of a digitally signed access token (Wahl, [0092] – “The claim includes a first indicator specifying access rights of an entity with respect to a service provided by a relying party,” i.e. relying party is analogous to an endpoint).
Examiner notes that the limitation of claim 2 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 3, Wahl in view of McLean and Cross teach the system of claim 2, and Wahl in view of McLean and Cross further teach wherein the attribute value is dynamically retrievable by a relying party device (Wahl, [0043] – “Relying party 108 compares the indicator to information stored in, i.e. the attribute value, (or otherwise accessible to) relying party 108 to verify that the entity is authorized to access the service).
Examiner notes that claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure MPEP 2111.04. In this instance, the attribute value being dynamically retrievable by a relying party device does not limit the structure of the user device or computer product, or require any steps to be performed. Therefore, claim 3 cannot be given patentable weight. However, for purposes of compact prosecution, prior art is provided above.
Re Claim 4, Wahl in view of McLean and Cross teach the system of claim 1, and Wahl in view of McLean and 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 McLean and Cross teach the system of claim 4, and Wahl in view of McLean and Cross further teach wherein the URL comprises the URL of an 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 McLean and 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 McLean and Cross teach the system of claim 1, and Wahl in view of McLean and Cross further teach wherein the application obtaining the API call is a Digital Identity Wallet (DIW) application of the user device (Cross, Fig. 2, 706 – digital identity (ID) store, Col. 6, lines 11-14 – “These communications include communications 220, 222, and 224 from the application program 702 via the DIMS API 100, and to the digital ID store(s) 706”).
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 in view of McLean’s claims-based authorization for managing access with the teachings of the application being a digital identity wallet application of the user device in Cross. One would be motivated to make the modification to collectively manage a plurality of digital IDs, thereby allowing credential functionality Cross, Col. 6, lines 43-48.
Re Claim 8, Wahl in view of McLean and Cross teach the system of claim 1, and Wahl in view of McLean and Cross further teach wherein the digital signing is performed using a user private key McLean, [0044] – “signed by the user’s private key.”
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 claims-based authorization for managing access with the teachings of using a user private key for digital signing in McLean. 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 McLean and Cross teach the system of claim 1, and Wahl in view of McLean and Cross further teach wherein the digitally 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 McLean and Cross teach the system of claim 1, and Wahl in view of McLean and Cross further teach wherein the API call is obtained from a relying party device Wahl, [0037].
Re Claim 11, Wahl in view of McLean and Cross teach the system of claim 1, and Wahl in view of McLean and Cross further teach wherein the digitally signed access token authorizes a relying party device to retrieve an attribute value from an endpoint (Wahl, [0052] – “Client 114 forwards the token to the server,” Fig. 4, 406 – “provide first indicator (included in the token, see [0092]) to relying party,” [0043] – “Relying party 108 compares the indicator to information stored in, i.e. the attribute value, (or otherwise accessible to) relying party 108 to verify that the entity is authorized to access the service).
Re Claim 12, Wahl in view of McLean and Cross teach the system of claim 1, and Wahl in view of McLean and Cross further teach wherein sending the at least one by-reference identity claim and the digitally signed access token is to a 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 and 9-10, respectively. They recite similar distinguishing features as system claims 1-4 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.
Mani et al. U.S. 2019/0253255 directed to a system and universal access control device that may enable a user device to gain access to a secure area or resource. See at least [0019-20] and [0061].
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/CHRISTINE DANG/Examiner, Art Unit 3698
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