DETAILED ACTION
Acknowledgements
This action is in response to Applicant’s filing on Dec. 29, 2025, and is made Final. This action is being examined by James H. Miller, who is in the eastern time zone (EST), and who can be reached by email at James.Miller1@uspto.gov or by telephone at (469) 295-9082.
Interviews
Examiner interviews are available by telephone or, preferably, by video conferencing using the USPTO’s web-based collaboration platform. Applicants are strongly encouraged to schedule via the USPTO Automated Interview Request (AIR) portal at http://www.uspto.gov/interviewpractice. Interviews conducted solely for the purpose of “sounding out” the examiner, including by local counsel acting only as a conduit for another practitioner, are not permitted under MPEP § 713.03. The Office is strictly enforcing established interview practice, and applicants should ensure that every interview request is directed toward advancing prosecution on the merits in compliance with MPEP §§ 713 and 713.03.
For after-final Interview requests, supervisory approval is required before an interview may be granted. Each AIR should specifically explain how the After-Final Interview request will advance prosecution—for example, by identifying targeted arguments responsive to the rejection of record, alleged defects in the examiner’s analysis, proposed claim amendments, or another concrete basis for discussion. See MPEP § 713. If the AIR form’s character limits prevent inclusion of all pertinent details, Applicants may send a contemporaneous email to the examiner at James.Miller1@uspto.gov.
The examiner is generally available Monday through Friday, 10:00 a.m. to 4:00 p.m. EST.
For any GRANTED Interview Request, Applicant can expect an email within 24 hours confirming an interview slot from the dates/times proposed and providing collaboration tool access instructions. For any DENIED Interview Request, the record will include a communication explaining the reason for the denial.
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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on Dec. 29, 2025, was filed after the first Office action on the merits but before final action and contained the fee set forth in 37 CFR 1.17(p). Therefore, the IDS is in compliance with the provisions of 37 CFR 1.97(c). Accordingly, the IDS has been considered.
Claim Status
The status of claims is as follows:
Claims 1, 2, 5–9, and 21–33 are pending and examined with Claims 1 and 23 in independent form.
Claims 1, 2, 21, 22, 23, 24, 25, and 26 are presently amended.
No Claims are presently cancelled or added.
Response to Amendment
Applicant's Amendment has been reviewed against Applicant’s Specification filed Nov. 2, 2016, [“Applicant’s Specification”] and accepted for examination. No new matter was entered.
Response to Arguments
35 U.S.C. § 101 Argument
Applicant argues that even assuming the claims are abstract at Step 1, the "additional elements" (database search, validation, credit prescreening, pre-population) are similar to Core Wireless and overcome the rejection under the second part of the Alice/Mayo test. These elements amount to "significantly more" than the judicial exception. Applicant’s Reply at 10–2.
Examiner respectfully disagrees.
The additional elements recited in the claims are well-understood, routine, and conventional activities. Searching databases for user information, validating data, and using that information to populate form fields are standard data processing operations performed by generic computer components. Unlike Core Wireless, which recited specific structural limitations on the user interface (particular manner of access, limited data set, particular state requirement), Applicant's claims merely recite functional results without specifying the technological means. Under MPEP § 2106.05(d), such routine computer functions do not provide an inventive concept. Additionally, Core Wireless is inapposite because the Federal Circuit found eligibility at Step 1 while Applicant is using Core Wireless to argue eligibility at Step 2B.
Applicant argues the claim elements recite "a specific manner of displaying a limited set of information to the user (user specific pre-populated electronic application), rather than using conventional user interface methods to display a generic index (a form without any prefill). Applicant’s Reply at 12.
Examiner respectfully disagrees.
This characterization misapprehends Core Wireless. The "specific manner" in Core Wireless referred to claimed architectural constraints: (1) application summary reachable "directly from the menu," (2) display of a "limited set of data" with explicit restraints on data type, and (3) display "while applications are in an unlaunched state." Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1360–63 (Fed. Cir. 2018). The pending claims contain no such structural limitations. Reciting pre-population as a functional result does not constitute a "specific manner." The claims do not specify which fields are populated, what data constraints apply, or any technical implementation details.
Applicant argues the additional elements "utilize a computer system to perform a search as described in detail, find user specific information, validate the information, and then utilize the user information to fill in some of the blanks in the form," thereby reducing "form fatigue" and improving the user interface. Applicant’s Reply at 12–3.
Examiner respectfully disagrees.
Applicant's specification confirms that the problem addressed is human frustration and form abandonment: "error prone, tedious, time-consuming, and often times a user will quit the process" (Spec. ¶ 20). This describes a human problem, not a technical computer problem. Core Wireless addressed "deficits relating to the efficient functioning of the computer." Core Wireless, 880 F.3d at 1363. Reducing user effort through automation does not constitute improvement to computer functionality. See Broadband iTV, Inc. v. Amazon.Com, Inc., 113 F.4th 1359, 1368 (Fed. Cir. 2024) (improving user experience alone insufficient for eligibility). The improvement lies in relieving human burden, not enhancing computer operations.
Applicant argues Core Wireless found improvements to "speed of a user's navigation through various views and windows" and reducing steps from "scrolling around and switching views many times" to "only three steps." Similarly, the instant claims improve speed by pre-populating forms, which reduces user steps and time. Applicant’s Reply at 13–4.
Examiner respectfully disagrees.
The speed improvements in Core Wireless derived from specific claimed technical architecture—the summary window structure that eliminated the need to launch applications. The court emphasized this was a technical solution improving "efficient functioning of the computer." Core Wireless, 880 F.3d at 1363. Applicant's claims reduce user time through automation (performing work for the user), not through technical efficiency improvements to computer operations. A process that automates tasks so users do less work merely applies the abstract idea using conventional computer functions.
Applicant argues In direct contrast to the Office Action's assertions, Core Wireless "directly addressed the improvement to software with 'a focus on the claims in the physical exhaustion by humans including improvements of speed and scrolling.'" Applicant’s Reply at 14.
Applicant mischaracterizes the holding.
The Federal Circuit explicitly stated: "The asserted claims in this case are directed to an improved user interface for computing devices" Core Wireless, 880 F.3d at 1362. (emphasis added). The court further held that "the specification confirms these claims disclose an improved user interface for electronic devices" and that "prior art interfaces had many deficits relating to the efficient functioning of the computer" Id. at 1263 (emphasis added). The improvements were to the technological interface, not merely to user experience. Applicant's specification focuses exclusively on human burden reduction, not computer functionality improvements.
Applicant argues the August 4, 2025 USPTO Memorandum requires that "if it is a 'close call' as to whether a claim is eligible, [examiners] should only make a rejection when it is more likely than not (i.e., more than 50%) that the claim is ineligible." This creates a "presumption in favor of eligibility" and establishes a "preponderance of evidence standard." Applicant’s Reply at 10, 14–5.
The Memorandum does not alter the substantive legal standards for eligibility; it clarifies the evidentiary burden for making rejections.
The instant rejection is not a "close call." As detailed in this Office Action across multiple pages, the claims are directed to the abstract idea of collecting user information and pre-filling forms—commercial interactions and mental processes performable by hand. The claims lack the specific technical limitations present in Core Wireless (particular manner, data restraints, state requirements). The specification confirms the focus on human problems (form fatigue), not technical improvements. Examiner has met the preponderance standard by demonstrating it is substantially more than 50% likely the claims are ineligible.
Applicant argues Claims 2, 5-9, 21-22, 24-33 depend from Claims 1 and 23, and therefore also overcome the § 101 rejection for the same reasons. Applicant’s Reply at 15.
Examiner respectfully disagrees.
The dependent claims add limitations such as secondary database searches, specific database types (reverse phone lookup, social media), and fraud validation criteria. These additions specify sources and types of conventional data gathering but do not transform the claims into patent-eligible subject matter. They remain directed to abstract ideas of information collection and form completion, implemented using generic computer components performing routine functions. None of the dependent claim limitations provide the specific technical improvements or unconventional arrangements necessary to establish an inventive concept under Step 2B.
Claim Interpretation
Under the broadest reasonable interpretation, the following claim terms are presumed to have their plain meaning consistent with the specification as it would be interpreted by one of ordinary skill in the art. MPEP § 2111.
“performing a company's private database search” is interpreted as “performing a search of a company’s private database.” Spec., ¶ 37.
“performing a credit prescreen on the user specific information” is interpreted as also “producing a result of the credit prescreen” so that “said result of the credit prescreen” (Limitation J) below has proper antecedent basis. Spec., ¶¶ 50, 51.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 2, 5–9, and 21–33 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more.
Analysis
Step 1: Claims 1, 2, 5–9 and 21–33 are directed to a statutory category. Claims 1–9, 21, 22, 32, and 33 recite “a non-transitory computer-readable storage medium” and are therefore directed to the statutory category of “an article of manufacture.” Claims 23–31 recite “a method” and are therefore, directed to the statutory category of “a process”.
Representative Claim
Claim 1 is representative [“Rep. Claim 1”] of the subject matter under examination and recites, in part, emphasis added by Examiner to identify limitations with normal font indicating the abstract idea exception, bold limitations indicating additional elements. Each limitation is identified by a letter for later use as a shorthand notation in referencing/describing each limitation. Portions of the claim use italics to identify intended use limitations1 and underline, as needed, in further describing the abstract idea exception:
[A] 1. A non-transitory computer-readable storage medium having instructions embodied therein that when executed cause a computer system to perform a method comprising:
[B] receiving a message, the message being a response from a user to an incentive offer and including at least one user identifier provided by said user;
[C] obtaining from said message a device identifier associated a said user's mobile device;
[D] performing a search of a company's private database, using said device identifier and said user identifier, for user specific information, said search of said company's private database comprising:
[E] user specific information for customers having existing accounts with said company; and
[F] user specific information for previous applicants for an account from said company;
[F1] validating the existing accounts prior to utilizing said existing accounts to obtain said user specific information,
[G] obtaining said validated user specific information as a result of said search of said company’s private database,
[G1] said user specific information comprising at least two of: a name, a full address, a partial address, a driver's license number, and a social security number;
[H] performing a credit prescreen on the user specific information;
[I] accessing an electronic application for a credit account offer;
[J] utilizing said result of the credit prescreen in conjunction with said user specific information to pre-populate a plurality of fields of said electronic application to generate a user specific pre-populated electronic application for said credit account offer prior to transmitting said electronic application to said user;
[K] transmitting said user specific pre-populated application form for said credit account offer to said user;
[L] receiving from said user a verification of said user specific information contained in said user specific pre-populated electronic application for said credit account offer in conjunction with additional identification data input by said user;
[M] transmitting a terms and conditions information to said user;ADS-133Serial No.: 15/341,988
[N] Examiner: Miller, J.2Group Art Unit: 3694receiving a signature submitted by said user, said signature being an agreement of said terms and conditions information;
[O] generating a new credit account for said user, said new credit account comprising a digital credit account identifier;
[P] transmitting said digital credit account identifier to said user's mobile device, wherein once received at said user's mobile device said digital credit account identifier is instantly available as a form of payment.
Claims are directed to an abstract idea exception.
Step 2A, Prong One: Rep. Claim 1 recites a “generating a new credit account for said user, said new credit account comprising a [ ] credit account identifier,” (Limitation O) which recites the abstract idea exception of commercial or legal interactions under organizing human activity because generating a new credit account recites “sales activities or behaviors, and business relations” between two people. MPEP § 2106.04(a)(2)(II)(B) (citing Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 123 USPQ2d 1100 (Fed. Cir. 2017)). Limitations B–N, P recite the required steps for “generating a new credit account,” and therefore, recite the same exception. Id.
Step 2A, Prong Two: Rep. Claim 1 does not contain additional elements that integrate the abstract idea exception into a practical application because the additional elements are mere instructions to apply the abstract idea exception. MPEP § 2106.05(f). The additional elements are limited to the computer components and indicated in bold, supra. The additional elements are: A non-transitory computer-readable storage medium, instructions, computer system, user’s mobile device, a search of a company's private database; and digital and electronic characterization of a credit account identifier and application, respectively, a computer.
Regarding the non-transitory computer-readable storage medium, instructions, computer system, user’s mobile device, a search of a company's private database; and digital and electronic characterization of a credit account identifier and application, respectively, a computer, Applicant’s Specification does not otherwise describe them or describes them using exemplary language as a general-purpose computer, as a part of a general-purpose computer, or as any known and exemplary (generic) computer component known in the prior art. Thus, Applicant takes the position that such hardware/software is so well known to those of ordinary skill in the art that no explanation is needed under 35 U.S.C. § 112(a). Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1463 (Fed. Cir. 1984) (citing In re Meyers, 410 F.2d 420, 424 (CCPA 1969) (“[T]he specification need not disclose what is well known in the art”). E.g., Spec., ¶ 95 (generic and exemplary “computer-readable and computer-executable instructions that reside, for example, in non-transitory computer-readable storage media of a computer system”); ¶¶ 16, 96–99 (generic and exemplary “general purpose networked computer systems”); ¶ 23 (generic and exemplary user’s mobile device); ¶ 37 (known and exemplary “Alliance Data Legacy database or the like”); ¶ 25 (any information is obtained with the user's prior permission”); ¶ 74 (“The offer may be any of the types”); ¶ 86 (“retail store 400 is any physical brick and mortar store”); ¶99 (“Processors 506A, 506B, and 506C may be any of various types of microprocessors”); ¶ 103 (“The computing system 500 is only one example of a suitable computing environment and is not intended to suggest any limitation as to the scope of use or functionality of the present technology. Neither should the computing environment be interpreted as having any dependency or requirement relating to any one or combination of components illustrated in the example computing system 500.”); ¶ 105 (“any two or more embodiments may be combined”). The generic processor, here, appears to perform calculations (functions) that are programmed by software. Spec. ¶ 95. This is a computer doing what it is designed to do—performing directions it is given to follow.
Limitations B–P describe the medium, instructions, and computer system performing the steps of the claimed invention, which represents the abstract idea exception itself. Performing the steps of the abstract idea exception itself simply adds a general-purpose computer after the fact to an abstract idea exception, MPEP § 2106.05(f)(2), or generically recites an effect of the judicial exception. MPEP § 2106.05(f)(3).
Limitation H describes the medium, instructions, and computer system performing a credit prescreen, and Limitation O describes the medium, instructions, and computer system generating a new credit account which as drafted, covers any solution to performing a credit prescreen or generating an account, including by hand, with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result. MPEP 2106.05(f)(1). Limitation I describes the medium, instructions, and computer system accessing an application (transmits/receives/stores data) and Limitation J pre-populates a portion of the application form (receives, stores, and displays data), which merely invoke computers in their ordinary capacity to transmit, receive, display, or store data. MPEP § 2106.05(f)(2).
Limitation D, E, F, and G performing a search of the company's private database using a device and user identifiers (database search) (Limitation D), storing particular user specific information (Limitations D, E, & F), and obtaining (comparing, matching, transmitting) user specific information, which merely invokes a database/computer machinery in its ordinary capacity to transmit, receive, and store data. MPEP 2106.05(f)(2).
Limitation F1 is mental processes. A practical application cannot be furnished by an abstract idea exception itself. MPEP §§ 2106.05(I), 2106.04(d)(III).
Therefore, the claim as a whole, looking at the additional elements individually and in combination, are no more than mere instructions to apply the exception using generic computer components and is not a practical application. MPEP § 2106.05(f). The additional elements do not integrate the abstract idea exception into a practical application because they do not impose any meaningful limits on the abstract idea exception. Accordingly, Rep. Claim 1 is directed to an abstract idea.
Rep. Claim 1 is not substantially different than Independent Claim 23 and includes all the limitations of Rep. Claim 1. Independent Claim 23 contains no additional limitations. Therefore, Independent Claim 23 is also directed to the same abstract idea.
The claims do not provide an inventive concept.
Step 2B: Rep. Claim 1 fails Step 2B because the claim as whole, looking at the additional elements individually and in combination, are not sufficient to amount to significantly more than the recited judicial exception. As discussed with respect to Step 2A, Prong Two, the additional elements in the claim amount to no more than mere instructions to apply the exception using a generic computer and/or generic computer components. MPEP § 2106.05(f). The same analysis applies here in Step 2B. Mere instructions to apply an exception using a generic computer and/or generic computer components cannot provide an inventive concept. MPEP § 2106.05(I).
The additional elements, taken individually and in combination, do not result in the claim, as a whole, amounting to significantly more than the identified judicial exception.
The pending claims in their combination of additional elements is not inventive. First, the claims are directed to an abstract idea. Second, each additional element represents a currently available generic computer technology, used in the way in which it is commonly used (individually generic). Last, Applicant’s Specification discloses that the combination of additional elements is not inventive. Spec., ¶ 15 (steps/functions may be performed in any order); ¶¶ 16, 23, 25, 37, 74, 86, 95–99, 103, 105 (known and generic (exemplary) computer equipment as explained and cited supra.)
Thus, Examiner finds the additional elements of Rep. Claim 1 are elements that have been recognized as well-understood, routine, and conventional (“WURC”) activity in the particular field of this invention based on Applicant’s own disclosure2. Spec. ¶¶ 16, 23, 25, 37, 74, 86, 95–99, 103, 105; MPEP § 2106.05(d). Specifically, Applicant’s Specification discloses the recited additional elements (i.e., the non-transitory computer-readable storage medium, instructions, computer system, user’s mobile device, a search of a company's private database; and digital and electronic characterization of a credit account identifier and application, respectively, a computer) are limited to generic computer components. These elements do no more than “apply” the recited abstract idea(s) on a known computer and computer-related components. As additional evidence of the conventionality indicated by Applicant’s own disclosure, the limitations “performing a search of a company's private database ... for user specific information” and “'utilizing said result of the credit prescreen in conjunction with said user specific information to pre-populate a plurality of fields of said electronic application” are well-understood, routine, and conventional activities as evidenced by (all cited PTO-892):
Goodman et al. (U.S. Pat. Pub. No. 2005/0257134 A1), which discloses “machine learning techniques to automatically fill (autofill) one or more fields across a diverse array of web forms,” ¶ 6, by “utilize[ing] one or more databases of information about the user,” ¶ 7 and “mapping from database fields to form values.” ¶ 13. This patent publication demonstrates that searching user databases and pre-populating form fields was known and practiced over a decade before Applicant's Aug. 16, 2016, priority date.
Ait-Mokhtar et al. (U.S. Pat, Pub. No. 2011/0271173), which discloses a “method for filling a form” by “receiving a user's personal data” from a database, ¶ 14, “automatically filling form fields,” ¶ 15, and applying “auto-filling rules” to populate forms. ¶ 16. This reference shows the conventional nature of automated form filling through database searches.
Lymer et al. (U.S. Pat. Pub. No. 2014/0258828), which discloses using a “secure personally identifiable information (PII) database” to store data for “complet[ing] a checkout procedures” at online stores and banks, ¶ 21, with “autofill database maintenance” for form completion. Abstract. This demonstrates that database-driven form pre-population for financial applications was conventional in the art.
Ramos et al. (U.S. Pat. No. 8,732,004), which discloses “data warehouses” storing “credit-related and demographic information,” “client-selected pre-screen attributes,” and “searching databases” for credit prescreening purposes. Claim 1. This shows that database searches for credit prescreening were conventional in the credit industry
The Examiner also finds the functions of receiving, storing, transmitting, displaying, and processing (e.g., performing mathematical operations on) data, described in Limitations A-P are all normal functions of a generic computer.
There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the additional elements in combination adds nothing that is not already present when looking at the elements individually. Their collective functions merely provide conventional computer implementation of the abstract idea at a high level of generality. Thus, Rep. Claim 1 does not provide an inventive concept.
Rep. Claim 1 is not substantially different than Independent Claim 23 and includes all the limitations of Rep. Claim 1. Independent Claim 23 contains no additional limitations. Therefore, Independent Claim 23 also do not recite an inventive concept.
Dependent Claims Not Significantly More
The dependent claims have been given the full two-part analysis including analyzing the additional limitations both individually and in combination. The dependent claim(s) when analyzed both individually and in combination are also held to be patent ineligible under 35 U.S.C. § 101. Dependent claims are dependent on Independent Claims and include all the limitations of the Independent Claims. Therefore, all dependent claims recite the same Abstract Idea. Dependent claims do not contain additional elements that integrate the abstract idea exception into a practical application or recite an inventive concept because the additional elements: (1) are mere instructions to apply the abstract idea exception; and/or (2) further limit the abstract idea exception of the Independent Claims. The abstract idea itself cannot provide the inventive concept or practical application. MPEP §§ 2106.05(I), 2106.04(d)(III).
Dependent Claims 2, 5, 6, 24, 27, and 28 all recites a “wherein” clauses or limitations that further limit the abstract idea of the Independent Claims and contains the additional elements of: one or more databases from the group consisting of: a company specific database, and a shared customer database (Claims 2 & 24); a reverse phone number look up database (Claims 5 & 27); and one or more databases from the group consisting of: a social media site, a search engine, an online public record storage, and an online private record storage (Claims 6 & 28). The characterization of the particular type of database (e.g., “a company specific”) is non-functional descriptive material. MPEP § 2111.05. Merely a database is required. A database was analyzed supra with respect to Rep. Claim 1 in Step 2A, Prong Two, and determined to be generic. The claims here, like those of Rep. Claim 1 there, describe the functions of the database receiving a search request, presumably storing information of a particular type, and returning (comparing, matching, transmitting) particular information, which merely invokes a database/computer machinery in its ordinary capacity to transmit, receive, and store data. MPEP 2106.05(f)(2). The computer is used as a tool. MPEP § 2106.05(f). Claims 2, 5, 6, 24, 27, and 28 merely further limit the abstract idea of Independent Claims. The abstract idea itself cannot provide the inventive concept or practical application. MPEP § 2106.05(I); MPEP § 2106.04(d)(III).
Dependent Claims 7, 8, 29, and 30 all recite “receiving” particular information in a particular way (single text message) from a mobile device, which further limits the abstract idea of the Independent Claims but contain the additional elements of: said user’s mobile device. The user’s mobile device database was analyzed supra with respect to Rep. Claim 1 in Step 2A, Prong Two, and determined to be generic. The claims here, like those of Rep. Claim 1 there, describe the functions of the user’s mobile device transmitting particular information, which merely invokes a mobile device in its ordinary capacity to transmit, receive, and store data. MPEP 2106.05(f)(2). The computer is used as a tool. MPEP § 2106.05(f). Claims 7, 8, 29, and 30 merely further limit the abstract idea of Independent Claims. The abstract idea itself cannot provide the inventive concept or practical application. MPEP § 2106.05(I); MPEP § 2106.04(d)(III).
Dependent Claim 9 recites additional limitations that form part of the same abstract idea exception as recited in Independent Claim 1 and contains no additional elements. Performing the credit prescreen at a credit reporting agency recites a mental process exception that under the broadest reasonable interpretation, cover performance in the human mind or with pen and paper but for the recitation of the generic computer components, to the extent a “credit reporting agency” is a computer. If a claim limitation under BRI, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract idea exception. MPEP § 2106.04(a)(2)(III). Performing the steps of the abstract idea itself simply adds a general-purpose computer after the fact to an abstract idea exception, MPEP 2106.05(f)(2), or generically recites an effect of the judicial exception. MPEP 2106.05(f)(3). This method of claiming covers any solution to performing a credit prescreen, including by head and hand, with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result. MPEP 2106.05(f)(1). The abstract idea itself cannot provide the inventive concept or practical application. MPEP § 2106.05(I); MPEP § 2106.04(d)(III).
Dependent Claims 21 and 25 recite additional limitations that form part of the same abstract idea exception as recited in Independent Claims and contains no additional elements. “[U]tilizing a confidence factor threshold to validate the user specific information found during … the company’s private search,” as drafted, recites a mental process by forming a judgment as to whether the information found in the search applies to the user. Thus, for the same reasoning as explained in the analysis of Dependent Claim 9, the abstract idea itself cannot provide the inventive concept or practical application. MPEP § 2106.05(I); MPEP § 2106.04(d)(III).
Dependent Claims 22 and 26 recite additional limitations that form part of the same abstract idea exception as recited in Independent Claims and contains no additional elements. “[P]erforming a secondary source database search for the user specific information; using a result of the secondary source database search to verify any of said user specific information found during the private database search that fell below said confidence factor threshold; and supplementing said user specific information found during the private database search with said result of said secondary source database search,” as drafted, recites a mental process by forming a judgment as to whether the information found in the search applies to the user. Thus, for the same reasoning as explained in the analysis of Dependent Claim 9, the abstract idea itself cannot provide the inventive concept or practical application. MPEP § 2106.05(I); MPEP § 2106.04(d)(III).
Dependent Claim 31 recites a “wherein” clause or limitation that further limits the abstract idea of the Independent Claims and contain no additional elements. The abstract idea itself cannot provide the inventive concept or practical application. MPEP § 2106.05(I); MPEP § 2106.04(d)(III).
Dependent Claims 32 and 33 all recite “wherein” clauses or limitations that further limit the abstract idea of the Independent Claims and contain no additional elements. Additionally, “wherein said validating comprises: …” are mental processes that are practically performed in the human mind or with pen and paper because it requires mere observation, evaluation, judgment, and/or opinion to “validat[e] the existing accounts prior to utilizing said existing accounts to obtain said user specific information” in the manner claimed. For example, ignoring an account with a brand with an above threshold propensity for fraud are steps that can be practically performed in the human mind under Classen because it requires the mere comparison of two known pieces of data: (1) the threshold and (2) the brand propensity for fraud. Similarly, “opened within a predefined number of days and subject to an address change within a predefined number of days” can be practically performed in the human mind under Classen because it again requires the mere comparison of two known pieces of data. A derogatory status is practically performed in the human mind or with pen and paper because it requires mere observation, evaluation, judgment, and/or opinion.
Conclusion
Claims 1, 2, 5–9, and 21–33 are therefore drawn to ineligible subject matter as they are directed to an abstract idea without significantly more. The analysis above applies to all statutory categories of invention. As such, the presentment of Rep. Claim 1 otherwise styled as another statutory category is subject to the same analysis.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES H MILLER whose telephone number is (469)295-9082. The examiner can normally be reached M-F: 10- 4 PM (EST).
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, Bennett M Sigmond can be reached at (303) 297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES H MILLER/Primary Examiner, Art Unit 3694
1 Statements of intended use fail to limit the scope of the claim under BRI. MPEP § 2103(I)(C).
2 See Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), 3-4, https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-20180419.PDF (April, 18, 2018) (That additional elements are well-understood, routine, or conventional may be supported by various forms of evidence, including "[a] citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).").