Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/04/25 has been entered.
Claim Rejections - 35 USC § 101
1. 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.
2. Claims 1, 3-6, 8, 11-27, 30-31, and 55-56 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Subject Matter Eligibility Standard
3. The examiner contends that, under the judicial exceptions enumerated in the 2019 PEG, to determine the patent-eligibility of an application, a two- part analysis has to be conducted.
Part 1: it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
Part 2A: Prong 1: (1) Determine if the claims are directed to an abstract idea or one of the judicial exceptions. Examples of abstract ideas referenced in Alice Corp. include:
1. Certain method of organizing human activity such as
fundamental economic concept or commercial and legal interactions.
2. A mental process.
3. Mathematical relationships/formulas.
Part 2A: Prong 2: determine if the claim as a whole integrates the judicial exception into a practical application.
Part 2B: determine if the claim provides an inventive concept.
Analysis
In the first analysis, it is found that the claim indeed recites a series of steps and therefore, is a process – one of the statutory categories.
Under Step 2A (Prong 1), using claim 27 as the representative claim, it is determined that apart from generic hardware and extra-solution activities discussed in Step 2A, Prong 2 below, the claim as a whole recites a method of organizing human activity. For instance, the claimed steps “a method for sharing information associated with suspicious finance-related activities of a customer of multiple financial institutions; processing…an access request for access to a secure data processing database from a user associated with a first financial entity; verifying…the user is authorized with the first financial entity; verifying…the first financial entity is an active participant in a statutory information sharing program intended to identify and report suspicious finance-related activities to other financial entities that are also active participants in the statutory information sharing program; and receiving…information related to the suspicious finance-related activities of the customer from a source not affiliated with the first financial entity” are fundamental economic practices. Fundamental economic practices fall into the category of certain methods of organizing human activity. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Under Step 2A (Prong 2), the examiner contends that the claim recites a combination of additional elements including “providing…an access to the secure data processing database through an interactive graphical user interface over a secure network connection with the secure data processing database.” These additional elements, considered in the context of claim 27 as a whole, do not integrate the abstract idea into a practical application because they simply recite the process of processing data using a generic computer system. The examiner further contends that the computer network and database are used to simply process, transmit, store and output data. In other words, these additional limitations are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, the computer network and database are caused to perform these steps. The computer network and database, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Further, the examiner contends that the claimed “interactive GUI” is recited at a high level of generality to simply perform the generic computer function of displaying information. Further still, the additional limitation can be reasonably characterized as reciting a patent-ineligible insignificant extra-solution activity. For instance, the limitation “providing…an access to the secure data processing database through an interactive graphical user interface over a secure network connection with the secure data processing database” is a mere data gathering step considered to be an insignificant extra-solution activity. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Lastly, the limitations “wherein the financial entity is associated with receiving, processing, compiling, storing or sharing information; wherein the active participants are identified as eligible entities in the secure data processing database; wherein the suspicious finance-related activities are selected from the group consisting of fraud, money laundering, suspected terrorist activities, economic sanctions, financing and counter-financing of terrorists activities; wherein the interactive graphical user interface is configured to… alert a second financial entity of suspicious finance-related activities of a customer of the second financial entity based on the customer’s finance-related activities at the first financial entity” are simply recited to limit the scope of the abstract idea. Thus, the claim is not directed to an abstract idea. Thus, it is determined that claim 27 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Lastly, under Step 2B, it is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 27 are the generically recited “computer network and database.” The specification does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional hardware components or systems being used in their ordinary manner. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself. Note: The analysis above applies to all statutory categories of invention. As such, the independent claims otherwise styled as a computer-readable medium encoded to perform specific tasks, machine or manufacture, for example, would be subject to the same analysis. While claim 1 recites substantially the same limitations as claim 27 above, claim 1 recites an additional limitation “generating a profile on the customer engaged in the suspicious financial-related activities.” However, this additional limitation is directed to the analysis of data, which is nothing but the automation of mental tasks. See Benson, Bancorp and Cyberphone. Also see Electric Power, 830 F.3d at 1354 (“[W]e have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes”). Similarly, while claims 55 and 56 recite substantially the same limitations as claim 27 above, claims 55 and 56 recite additional elements “generating a profile based on the customer engaged in the suspicious finance-related activities; and reporting the suspicious finance-related activities to the other financial entities serving the customer that are also active participants in the statutory information sharing program.” However, these additional limitations are directed to the analysis of data, which is nothing but the automation of mental tasks. See Benson, Bancorp and Cyberphone. Also see Electric Power, 830 F.3d at 1354 (“[W]e have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes”). Furthermore, the limitations in the dependent claims are thus subject to the same analysis as in claim 27 and are rejected using the same rationale as in claim 27 above. More specifically, the dependent claims 3-6, 8, 11-22, 24 do not necessarily recite additional elements but merely further narrow the scope of the abstract idea. Lastly, claims 23, 25-26 recite additional elements, but these additional elements are mere data gathering steps considered to be an insignificant extra-solution activity. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity).
Response to Arguments
Applicant's arguments filed on 09/04/25 have been fully considered but they are not persuasive.
In response to applicant’s arguments that the examiner’s rationale runs afoul of the PTO’S current standard, and as such the claims do not recite a judicial exception, the examiner finds this argument unpersuasive. The examiner contends that the claims actually recite a judicial exception as required by the guidance. For instance, the claimed steps “a method for sharing information associated with suspicious finance-related activities of a customer of multiple financial institutions; processing…an access request for access to a secure data processing database from a user associated with a first financial entity; verifying…the user is authorized with the first financial entity; verifying…the first financial entity is an active participant in a statutory information sharing program intended to identify and report suspicious finance-related activities to other financial entities that are also active participants in the statutory information sharing program; and receiving…information related to the suspicious finance-related activities of the customer from a source not affiliated with the first financial entity” are fundamental economic practices. Fundamental economic practices fall into the category of certain methods of organizing human activity. Thus, the claim recites a judicial exception, i.e., an abstract idea.
In response to applicant’s argument that the claims integrate any exception into a practical application, the examiner disagrees. The examiner contends that the claim recites a combination of additional elements including “providing…an access to the secure data processing database through an interactive graphical user interface over a secure network connection with the secure data processing database.” These additional elements, considered in the context of claim 27 as a whole, do not integrate the abstract idea into a practical application because they simply recite the process of processing data using a generic computer system. The examiner further contends that the computer network and database are used to simply process, transmit, store and output data. In other words, these additional limitations are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, the computer network and database are caused to perform these steps. The computer network and database, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Further, the examiner contends that the claimed “interactive GUI” is recited at a high level of generality to simply perform the generic computer function of displaying information. Further still, the additional limitation can be reasonably characterized as reciting a patent-ineligible insignificant extra-solution activity. For instance, the limitation “providing…an access to the secure data processing database through an interactive graphical user interface over a secure network connection with the secure data processing database” is a mere data gathering step considered to be an insignificant extra-solution activity. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Lastly, the limitations “wherein the financial entity is associated with receiving, processing, compiling, storing or sharing information; wherein the active participants are identified as eligible entities in the secure data processing database; wherein the suspicious finance-related activities are selected from the group consisting of fraud, money laundering, suspected terrorist activities, economic sanctions, financing and counter-financing of terrorists activities; wherein the interactive graphical user interface is configured to… alert a second financial entity of suspicious finance-related activities of a customer of the second financial entity based on the customer’s finance-related activities at the first financial entity” are simply recited to limit the scope of the abstract idea. Thus, the claim is not directed to an abstract idea. Thus, it is determined that claim 27 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
In response to applicant’s argument, citing McRo, that the examiner’s analysis conflicts with updated USPTO guidance, the examiner disagrees. Applicant's citation of McRo is unpersuasive because the claims at issue in McRo are readily distinguishable over the instant claims. In McRO, the claims are directed to the creation of something physical—namely, the display of “lip synchronization and facial expressions” of animated characters on screens for viewing by human eyes. Id. at 1313. The claimed improvement was to how the physical display operated (to produce better quality images), unlike (what is present here) a claimed electronic device with no improved display mechanism. The claims in McRo thus are not abstract in the sense that is dispositive here - they have the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it. In McRo, the claimed rules transform a traditionally subjective process performed by humans into a mathematically automated process executed on computers. The human process and computer process in McRo produced a similar result but do so in fundamentally different ways. It is the incorporation of the claimed rules, not the use of the computer that improves the existing technological process by allowing the automation of further tasks. In contrast, the present claims do not provide improved rules and “merely implement an old practice in a new environment.
Applicant’s argument that the examiner’s assessment fails to recognize the technical solutions and improvements provided by the pending claims is unpersuasive. The examiner contends that there is a clear difference between the improvement in computer functionality, on one hand, and the use of existing computer as tools to perform a particular task, on the other. The solution that is addressed by the applicant’s claims is a business problem and not a technical problem. Rather than addressing a problem unique to the technology in which the solution is implemented, the applicant’s claim merely automates, using generic computer technology, a business process in which profitability is increased by processing finance-related information. Thus, it is determined that the claim is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception. Further, the alleged advantage that the applicant touts does not concern an improvement to computer capabilities but instead relate to an alleged improvement in computer-based process; that is, a process in which a computer is used as a tool in its ordinary capacity which is to process data.
Further, the recited computer network and secure data processing database, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Also, the claimed “interactive GUI” is recited at a high level of generality to simply perform the generic computer function of displaying information with no improved display mechanism. The “secure computer network architecture” are simply configured and applied to carry out the abstract steps. Further still, the specification does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional hardware components or systems being used in their ordinary manner. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
In response to applicant’s arguments that the claimed invention as a whole provide something "significantly more" than the abstract idea. The examiner contends that there is a clear difference between the improvement in computer functionality, on one hand, and the use of existing computer as tools to perform a particular task, on the other. The “GUI” are recited at a high level of generality to simply perform the generic computer function of displaying information. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of the elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself. The examiner further contends that, in (Versata) 793 F.3d at 1335, 115 USPQ2d at 1702, the steps of generating, receiving, analyzing, comparing, storing, processing, calculating and transmitting information, as recited in the claims, are conventional and basic functions of a computer processor (See MPEP 2016.05(d)). The examiner further takes official notice that it is old and well known in the art to use a computer processor and GUI to process and display as recited in the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OJO O OYEBISI whose telephone number is (571)272-8298. The examiner can normally be reached on Monday-Friday, 9am-7pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Behncke can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OJO O OYEBISI/Primary Examiner, Art Unit 3695