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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/26/26 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, 3-7, 9-15, 17 and 19-20 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 Practices, Commercial and Legal Interactions, or Managing Personal Behavior or Relationships or Interactions Between People.
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
4. Under Step 1 of the 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 1 as the representative claim, it is determined that apart from generic hardware and extra-solution activity discussed in Step 2A, Prong 2 below, the claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language “method for generating a Balance Transfer (“BT”) response estimate using a predictive model…, establishing a bank account for a customer; receiving…and storing…the one or more internal tradeline level data signals and the one or more external tradeline level data signals; receiving…financial transactions associated with the bank account causing changes in the balance signal and the payment history signal” is a fundamental economic practice. 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. Also, the claim language “deriving predictor variables to determine tradeline activity, the predictor variables being based only on change patterns of the one or more internal tradeline level data signals and/or the one or more external tradeline level data signals, wherein: Weight of Evidence (“WOE”) transformed variables are generated from the predictor variables by: a) binning the predictor variables; b) statistically comparing event rates of neighboring bins, c) combining neighboring bins having similar event rates until each remaining bin is statistically different from its neighboring bin, d) calculating a WOE value as a logarithm of distribution of an event to a non-event; an event represents a responder to a BT offer and a non-event represents a non-responder to a BT offer; implementing a linear model using the WOE value to generate a representation of nonlinearity between the predictive variables; develop a pattern recognition model based at least in part on the data structure; development of the pattern recognition model comprises; isolating the one or more internal tradeline level data signals from the one or more external tradeline level data signals; and generating a development data set by merging four months of the one or more internal tradeline level data signals, the development data set
being used as a maximum likelihood that a customer would accept the BT offer when the pattern recognition model is applied to the one or more external tradeline level data signals; apply the pattern recognition model only to the one or more external tradeline level data signals to determine a probability of whether the one or more external tradeline level data signals indicates that an BT offer was accepted by a customer associated with the one or more external tradeline level data signals; develop an overall customer account level model based on desired historical
account behavior; apply the overall customer account level model to account usage patterns of a
plurality of customers to determine, via logistic regression, a likelihood of whether each
customer will accept a BT offer from a financial institution other than the host financial
institution, the account usage patterns consisting of changes in the balance of an account
and the payment history of the account; rank each customer account based on the determined probability and the likelihood that the customer associated with the account would accept a BT offer from the financial institution; generate an output including a score value for each customer account based on the ranking; and identify a customer from the plurality of customers for receiving the BT offer based on the score value and transmitting the BT offer to the identified customer” can be performed in the human mind, or with the assistance of a pencil and paper. Any actions that can be performed in the human mind fall into the category of mental a process. 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 “storing the data structure in the non-transitory computer memory; one or more computer system, and processor.” These additional elements, considered in the context of claim 1 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of storing data and processing data using a generic computer system. 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 recited memory, processor, computer system and the non-transitory computer readable memory are caused to perform these steps. Also, the recited processor, computer system and the non-transitory computer readable memory, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed abstract ideas. For instance, the limitation “store the data structure in the non-transitory computer readable memory” when considered as a whole, is a mere data gathering step considered to be insignificant extra-solution activities. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Also, the limitation of executing instructions read from non-transitory computer-readable memory with a processor is simply the application of technical field and technology. Lastly, the claimed steps “the bank account maintained by one or more computer systems that monitor customer accounts and generate data signals including a balance signal and a payment history signal, wherein the customer is associated with one or more internal and external accounts giving rise to one or more internal tradeline level data signals and one or more external tradeline level data signals; the processor being in communication with the one or more computer systems that generate balance and tradeline signals, the instructions causing the processor to generate a data structure” are recited to further narrow the scope of the abstract idea. Thus, it is determined that claim 1 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.
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 1 are the generically recited processor, computer system and the non-transitory computer readable memory. The specification substantiates this, for instance at paras 00155-00160. 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.
The examiner contends that the ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188— 89 (1981).” A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.” Specifically, an improvement to an abstract idea cannot be a basis for determining that the claim recites significantly more than an abstract idea. Furthermore, relying on a “processor” to “perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OJP Techs., Inc. v. Amazon.com, Inc., 7788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, the examiner concludes that the claim does not recite additional elements that amount to significantly more than the judicial exception within the meaning of the 2019 Guidance. 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. Furthermore, the limitations in the dependent claims are thus subject to the same analysis as in claim 1 and are rejected using the same rationale as in claim 1 above. More specifically, dependent claims 5-7, 11-12, 17 and 20 do not recite additional elements but merely further narrow the scope of the abstract idea. Also, while claims 3-4, 9, 13-15 and 19 recite additional elements, but these additional elements comprise the analysis of data, which are 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”).
Response to Arguments
Applicant's arguments filed 05/26/26 have been fully considered but they are not persuasive.
In response to appellant’s argument that the claims recite operational constraints for a computerized process and improve upon the way in which the computer component operates, the examiner disagrees. 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 alleged advantages and improvement that the applicant touts do not concern an improvement to computer capabilities but instead relate to an alleged improvement in a 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.
To the extent that the applicant argues that the claimed invention is rooted in technology because it solves three technical problems (i.e. 1. allows the computer component to operate with limited data; 2. allows the computer component to generate a more accurate output; and 3. reduces computational resources), the examiner disagrees. The examiner contends that the claimed solution stems from the ordinary capabilities of a general-purpose computer, which does not materially alter patent eligibility of the claimed subject matter. Like the claims in FairWarning, the focus of claim 1 is not on an improvement in computer processors as tools, but on certain independently abstract ideas that use generic computer components as tools. See FairWarning, 839 F.3d at 1095.
Further, the elements recited by the claims provide a commercial solution not a technical solution. As the Federal Circuit explained in Bancorp Svcs., LLC v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012), both Research Corp. and SiRF Tech, involved improvements to the underlying technology itself. That is not the case here. Rather here, as in Bancorp, the claimed invention merely uses the underlying computer technology in its ordinary capacity to perform processes “more efficiently.” See Bancorp, 687 F.3d at 1279.
The examiner went further to search the specification to understand the alleged technical solutions implied by the applicant, but the specification recites functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, the one or more processors is caused to perform these operations. For instance paragraphs 00156-00159 of the specification simply states “The computer systems and servers described herein each contain a memory that will configure associated processors to implement the methods, steps, and functions disclosed herein. Such methods, steps, and functions can be carried out, e.g., by processing capability on mobile device, POS terminal, payment processor, acquirer, issuer, or by any combination of the foregoing. The memories could be distributed or local and the processors could be distributed or singular. The memories could be implemented as an electrical, magnetic or optical memory, or any combination of these or other types of storage devices. Moreover, the term "memory" should be construed broadly enough to encompass any information able to be read from or written to an: address in the addressable space accessed by an associated processor. Aspects of the present disclosure shown in FIGs. 2-7, or any part(s) or function(s) thereof, may be implemented using hardware, software modules, firmware, tangible computer-readable media having instructions stored thereon, or a combination thereof and may be implemented in one or more computer systems or other processing systems…FIG.10 illustrates an example computer system 1000 in which embodiments of the present disclosure, or portions thereof, may be implemented as computer-readable code. For example, the various aspects of the methods described herein can be implemented in computer system 1000 using hardware, software, firmware, non-transitory computer readable media having instructions stored thereon, or a combination thereof and may be implemented in one or more computer systems or other processing systems. Hardware, software, or any combination of.” As such, applicant’s argument regarding the provision of technical solutions is not persuasive.
Applicant's citation of McRo is unpersuasive, as the claims at issue in McRo are readily distinguishable over the instant claims. The claims in McRO were 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 were not abstract in the sense that is dispositive here - they had 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.
In response to applicant’s argument that the claims implement a novel predictive model, the examiner disagrees. “As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty."). In addition, the search for an inventive concept is different from an obviousness analysis under 35 U.S.C. 103. See, e.g., BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) ("The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . . [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces."). Specifically, lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional elements. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101.” While applicant claims do generate an estimate using a predictive model as implied, this limitation is part of the abstract idea itself, which is being carried using a generic computer system.
Applicant's citation of Enfish is unpersuasive because the claims at issue in Enfish are readily distinguishable over the instant claims. In Enfish the claims were held to be patent-eligible because the claimed solution was directed to improvements in computer technology with database software designed as a "self-referential" table. The patent claims here do not address improvements in computer technology with database software designed as a "self-referential" table, so Enfish is not applicable. In contrast, the instant claims also provide a generically computer-implemented solution to a communication/business-related or economic problem.
All the advantages that the applicant touts do not make the recited process non-abstract because they come from the capabilities of the recited generic hardware and not from the recited process.
In response to applicant’s argument that the claim limitations cannot be performed by a human, the examiner disagrees. The examiner contends that the claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language “method for generating a Balance Transfer (“BT”) response estimate using a predictive model…, establishing a bank account for a customer; receiving…and storing…the one or more internal tradeline level data signals and the one or more external tradeline level data signals; receiving…financial transactions associated with the bank account causing changes in the balance signal and the payment history signal” is a fundamental economic practice. 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. Also, the claim language “deriving predictor variables to determine tradeline activity, the predictor variables being based only on change patterns of the one or more internal tradeline level data signals and/or the one or more external tradeline level data signals, wherein: Weight of Evidence (“WOE”) transformed variables are generated from the predictor variables by: a) binning the predictor variables; b) statistically comparing event rates of neighboring bins, c) combining neighboring bins having similar event rates until each remaining bin is statistically different from its neighboring bin, d) calculating a WOE value as a logarithm of distribution of an event to a non-event; an event represents a responder to a BT offer and a non-event represents a non-responder to a BT offer; implementing a linear model using the WOE value to generate a representation of nonlinearity between the predictive variables; develop a pattern recognition model based at least in part on the data structure; development of the pattern recognition model comprises; isolating the one or more internal tradeline level data signals from the one or more external tradeline level data signals; and generating a development data set by merging four months of the one or more internal tradeline level data signals, the development data set being used as a maximum likelihood that a customer would accept the BT offer when the pattern recognition model is applied to the one or more external tradeline level data signals; apply the pattern recognition model only to the one or more external tradeline level data signals to determine a probability of whether the one or more external tradeline level data signals indicates that an BT offer was accepted by a customer associated with the one or more external tradeline level data signals; develop an overall customer account level model based on desired historical account behavior; apply the overall customer account level model to account usage patterns of a plurality of customers to determine, via logistic regression, a likelihood of whether each customer will accept a BT offer from a financial institution other than the host financial institution, the account usage patterns consisting of changes in the balance of an account and the payment history of the account; rank each customer account based on the determined probability and the likelihood that the customer associated with the account would accept a BT offer from the financial institution; generate an output including a score value for each customer account based on the ranking; and identify a customer from the plurality of customers for receiving the BT offer based on the score value and transmitting the BT offer to the identified customer” can be performed in the human mind, or with the assistance of a pencil and paper. Any actions that can be performed in the human mind fall into the category of mental a process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
In response to applicant’s argument that the claims integrate any abstract idea into a practical application, the examiner disagrees. The examiner contends that the claim recites a combination of additional elements including “storing the data structure in the non-transitory computer memory; one or more computer system, and processor.” These additional elements, considered in the context of claim 1 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of storing data and processing data using a generic computer system. 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 recited memory, processor, computer system and the non-transitory computer readable memory are caused to perform these steps. Also, the recited processor, computer system and the non-transitory computer readable memory, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed abstract ideas. For instance, the limitation “store the data structure in the non-transitory computer readable memory” when considered as a whole, is a mere data gathering step considered to be insignificant extra-solution activities. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Also, the limitation of executing instructions read from non-transitory computer-readable memory with a processor is simply the application of technical field and technology. Lastly, the claimed steps “the bank account maintained by one or more computer systems that monitor customer accounts and generate data signals including a balance signal and a payment history signal, wherein the customer is associated with one or more internal and external accounts giving rise to one or more internal tradeline level data signals and one or more external tradeline level data signals; the processor being in communication with the one or more computer systems that generate balance and tradeline signals, the instructions causing the processor to generate a data structure” are recited to further narrow the scope of the abstract idea. Thus, it is determined that claim 1 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 that the claims recite meaningful limitations, citing Bascom, DDR, and content extraction, the examiner disagrees. The examiner contends that the focus here is not on novelty; rather, the focus is on whether the claims of the asserted patents fall within the excluded category of abstract ideas. After all, the Supreme Court has long interpreted § 101 and its statutory predecessors to contain an implicit exception: “laws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. Pty Ltd. v. CLS Bank Int’l, 573 U.S. __, 134 S. Ct.2347, 2354 (2014). And since the claims in the pending case have been determined to be directed to an abstract idea, then they are not patent eligible.
Applicant's citation of Bascom is unpersuasive, as the claims at issue in Bascom are readily distinguishable over the instant claims. In Bascom the claims were held to be patent-eligible because the claimed solution focused upon the specific asserted improvement in filtering technology by providing individually customizable filtering at a remote ISP server by taking advantage of the technical capability of certain communication networks. The invention in Bascom was a technological solution to a technological problem, using an improved filtering technology rather than using conventional filtering technology. In contrast, again, the instant claims provide a generically computer-implemented solution to a business-related or economic problem, and are incomparable to the claims at issue in Bascom.
Applicant’s citation of DDR is unpersuasive, as the claims at issue in DDR are readily distinguishable over the instant claims. The examiner contends that while the claims in DDR Holdings, as described by the Court, involve conventional computers and the Internet, the claims addressed the problem of retaining website visitors who, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be instantly transported away from a host’s website after “clicking” on an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257. “[T]he claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” However, this is just not the case with the claimed subject matter, where a generic computer system is being applied to carry out the abstract idea.
The examiner further contends that the court have identified electronically scanning or extracting data from a physical document (Content Extraction) to be routine and conventional and patent ineligible.
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 3697
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