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 .
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, 3-5, 7-17 and 20-23 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 activities 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 “predicting future expenses; retrieve transaction data for a first plurality of transactions between a first customer and a first merchant…; identify text on the check of each transaction…; …tokenize the identified text into one or more terms and drive…a generalized semantic meaning from the identified text by generalizing the one or more terms into one or more generalized categories using latent sematic indexing; determine based on the associated expense frequency that the first customer will be charged the recurring expense within a predetermined time period; …generate an expense warning associated with the recurring expense; identify a recurring expense and an associated expense frequency based on the identified text; perform named entity recognition on the identified text to identify the first merchant when no merchant identifier is available for the transaction data; comparing the identified text associated with each transaction to the one or more past transactions; and retrieving…one or more past recurring expenses associated with the identified text for a second customer; determining a second level of similarity between first respective transactions of the first customer in the one or more past transactions and the one or more past recurring expenses of the second customer; and in response to determining the first level of similarity between the first respective transactions is above a predetermined threshold, identifying the first respective transactions as relate to the recurring expense;…determined, based on the associated expense frequency, that the first customer will be charged the recurring expense within a predetermined time period; retrieve transaction data for a first plurality of transactions between a first customer and a first merchant” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. In addition, the claim language “predicting future expenses; identify text on the check of each transaction…; …generate…one or more annotations associated with each check based on one or more annotations associated with each check based on one or more terms and the generalized semantic meaning; identify a recurring expense and an associated expense frequency based on the identified text; responsive to identifying the text, tokenize the identified text into one or more terms and derive…a generalized semantic meaning from the identified text by generalizing the one or more terms into one or more generalized categories using latent semantic indexing; perform named entity recognition on the identified text to identify the first merchant when no merchant identifier is available for the transaction data; comparing the identified text associated with each transaction to the one or more past transactions; determining a second level of similarity between first respective transactions of the first customer in the one or more past transactions and the one or more past recurring expenses of the second customer…; and in response to determining the first level of similarity between the first respective transactions is above a predetermined threshold, identifying the first respective transactions as relate to the recurring expense;…determined, based on the associated expense frequency, that the first customer will be charged the recurring expense within a predetermined time period;…generate an expense warning associated with the recurring expense; retrieve transaction data for a first plurality of transactions between a first customer and a first merchant…; and retrieving…one or more past recurring expenses associated with the one or more generated annotations for a second customer” are steps that can be performed in the human mind. Any steps that can be performed in the human mind falls into the category of mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Under Step 2A (Prong 2), The examiner further contends that the claim recites a combination of additional elements including “…storing a plurality of check images associated with a plurality of transactions between a plurality of customers and a plurality of merchants; one or more processors, transaction database and memory.” For instance, the limitation “…storing a plurality of check images associated with a plurality of transactions between a plurality of customers and a plurality of merchants; retrieve transaction data for a first plurality of transactions between a first customer and a first merchant…; send…a signal; responsive to receiving the first customer’s approval, dynamically update the crowdsourcing annotation database based on the first annotation” are mere gathering steps 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). In other words, this additional element, considered in the context of claim 1 as a whole, does not integrate the abstract idea into a practical application because it simply recites the step of storing and transmitting data using a generic computer system. Further, the recited processors, first user device, transaction database and memory are simply being applied to carry out the abstract idea. These recited steps merely describe an intangible property of data that does not affect the examiner’s characterization of the additional limitations as insignificant extra-solution activities. Lastly, the limitation “wherein the machine learning model is trained to generate the one or more annotations based on the one or more training annotations and on a first level of similarity between the plurality of training merchants and the first merchants” is merely 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 to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 1 are the generically recited “memory,” transaction database;” “first user device,” and “processors.” The applicant 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. Further, the filed specification supports the determination that these components are well-understood, routine and conventional: substantiates this, for instance at paras [0081-0082]. Thus, applying an exception using a generic computer 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.
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. For instance, independent claim 8 recites similar limitations to those in independent claim 1 and are thus subject to the same analysis as in claim 1 and are rejected using the same rationale as in claim 1 above. In addition, claim 14 recites additional limitations “identify first transaction data for a first transaction between a first customer and a first merchant and a second transaction between the first customer and the first merchant, wherein the first transaction data comprises a first image of a first check for the first transaction and a second image of a second check for the second transaction; identify second transaction data for a third transaction between a second customer and the first merchant and a fourth transaction between the second customer and the first merchant, wherein the second transaction data comprises a third image of a third check for the third transaction and a fourth image of a fourth check for the fourth transaction; identify text on each check based on optical character recognition of a respective image of a respective check; associating the crowdsource annotations with the first merchants, wherein the crowdsourced annotations are shared among, and contributed by, a plurality of users; determine that the first transaction data exceeds a threshold of similarity to the second transaction data by comparing the identified text associated with the first transaction data to the identified text associated with the second transaction data; identify a first recurring expense and a first associated expense frequency for the first customer based on first transaction data; responsive to (i) the first transaction data exceeding the threshold of similarity to the second transaction data and (ii) the first recurring expense and first associated expense frequency being identified for the first customer, determine a second recurring expense and second associated expense frequency for the second customer; generate a first graphical user interface (GUI) comprising a suggestion indicating a new check be generated for the second recurring expense” but these additional elements 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”). Also the limitation “receive a response from the first user device via the GUI” when considered as a whole, 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). Further, the limitations “transmit the first GUI to a first user device; and responsive to the response being an acceptance of the generation of the new check, transmit instructions to a financial institution system to generate the new check for payment of the financial institution system to generate the new check for payment of the second recurring expense” are directed to insignificant post-solution activities of sending data from one system to another (see Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir. 2016). Further still, dependent claims 3, 10-11, 15-16 do not recite additional elements but merely further narrow the scope of the abstract idea. Claims 4-5, 7, 9, 12-13 and 17, 20-23 do recite additional elements, but these additional elements 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 on 08/05/26 have been fully considered but they are not persuasive.
In response to applicant’s argument that the claims do not recite a judicial exception and are integrated into a practical application, the examiner disagrees. The examiner further contends that the claim recites a combination of additional elements including “…storing a plurality of check images associated with a plurality of transactions between a plurality of customers and a plurality of merchants; one or more processors, transaction database and memory.” For instance, the limitation “…storing a plurality of check images associated with a plurality of transactions between a plurality of customers and a plurality of merchants; retrieve transaction data for a first plurality of transactions between a first customer and a first merchant…; send…a signal; responsive to receiving the first customer’s approval, dynamically update the crowdsourcing annotation database based on the first annotation” are mere gathering steps 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). In other words, this additional element, considered in the context of claim 1 as a whole, does not integrate the abstract idea into a practical application because it simply recites the step of storing and transmitting data using a generic computer system. Further, the recited processors, first user device, transaction database and memory are simply being applied to carry out the abstract idea. These recited steps merely describe an intangible property of data that does not affect the examiner’s characterization of the additional limitations as insignificant extra-solution activities. Lastly, the limitation “wherein the machine learning model is trained to generate the one or more annotations based on the one or more training annotations and on a first level of similarity between the plurality of training merchants and the first merchants” is merely 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.
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.
Applicant's citation of Finjan is unpersuasive because the claims at issue in Finjan are readily distinguishable over the instant claims. It is held that the claims in Finjan are directed to a behavior-based virus scanning which employs a new kind of file that enables a computer security system to do things it could not do before including “accumulating and utilizing newly available, behavior-based information about potential threats.” 2018 WL 341882 at *4 (Fed. Cir. Jan. 10, 2018). The claimed behavior-based scans, in contrast to prior art systems which searched for matching code, enabled more “nuanced virus filtering” in analyzing whether “a downloadable’s code . . . performs potentially dangerous or unwanted operations.” Id. at *3. Finjan’s claims, compared to the present claims, constitute non-abstract improvements in functionality, rather than the abstract idea of computer security. The claims in Finjan are not similar to the claims in the pending application.
In response to applicant’s argument that the claims do not fall under the enumerated groupings of abstract ideas, the examiner disagrees. The claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language “predicting future expenses; retrieve transaction data for a first plurality of transactions between a first customer and a first merchant…; identify text on the check of each transaction…; …tokenize the identified text into one or more terms and drive…a generalized semantic meaning from the identified text by generalizing the one or more terms into one or more generalized categories using latent sematic indexing; determine based on the associated expense frequency that the first customer will be charged the recurring expense within a predetermined time period; …generate an expense warning associated with the recurring expense; identify a recurring expense and an associated expense frequency based on the identified text; perform named entity recognition on the identified text to identify the first merchant when no merchant identifier is available for the transaction data; comparing the identified text associated with each transaction to the one or more past transactions; and retrieving…one or more past recurring expenses associated with the identified text for a second customer; determining a second level of similarity between first respective transactions of the first customer in the one or more past transactions and the one or more past recurring expenses of the second customer; and in response to determining the first level of similarity between the first respective transactions is above a predetermined threshold, identifying the first respective transactions as relate to the recurring expense;…determined, based on the associated expense frequency, that the first customer will be charged the recurring expense within a predetermined time period; retrieve transaction data for a first plurality of transactions between a first customer and a first merchant” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. In addition, the claim language “predicting future expenses; identify text on the check of each transaction…; …generate…one or more annotations associated with each check based on one or more annotations associated with each check based on one or more terms and the generalized semantic meaning; identify a recurring expense and an associated expense frequency based on the identified text; responsive to identifying the text, tokenize the identified text into one or more terms and derive…a generalized semantic meaning from the identified text by generalizing the one or more terms into one or more generalized categories using latent semantic indexing; perform named entity recognition on the identified text to identify the first merchant when no merchant identifier is available for the transaction data; comparing the identified text associated with each transaction to the one or more past transactions; determining a second level of similarity between first respective transactions of the first customer in the one or more past transactions and the one or more past recurring expenses of the second customer…; and in response to determining the first level of similarity between the first respective transactions is above a predetermined threshold, identifying the first respective transactions as relate to the recurring expense;…determined, based on the associated expense frequency, that the first customer will be charged the recurring expense within a predetermined time period;…generate an expense warning associated with the recurring expense; retrieve transaction data for a first plurality of transactions between a first customer and a first merchant…; and retrieving…one or more past recurring expenses associated with the one or more generated annotations for a second customer” are steps that can be performed in the human mind. Any steps that can be performed in the human mind falls into the category of mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
In response to applicant’s argument that the pending claims are similar to those in Ex Parte Desjardins, the examiner disagrees. The examiner contends that the claim in Ex Parte Desjardins recites an additional element "adjust the first values of the plurality of parameters to optimize performance of the machine learning model on the second machine learning task while protecting performance of the machine learning model on the first machine learning task,” which constitutes an improvement technological field. No such additional element or improvement is recited in the pending claims. In other words, the pending claims are 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 pending claims are similar to those in Example 42 of PEG (more specifically claim 1), the examiner disagrees. The additional elements in Example 42 integrate the judicial exception into a practical application. Specifically, the additional elements allow remote users to share information in real time in a standardized format regardless of the format in which the information was input by the user. No such additional element or improvement is recited in the pending claims. In other words, the pending claims are 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 pending claims are similar to those in Example 37 of PEG (more specifically claim 2), the examiner disagrees. The elements in claim 2 of Example 37 of PEG do not fall under the groupings of abstract idea enumerated in the 2019 revised guidelines. However, the pending claims are directed to both a method of organizing human activities and steps that can be performed in the human mind. Thus, the claim recites a judicial exception, i.e., an abstract idea.
In response to applicant’s argument that the pending claims are similar to those in Example 47 of PEG (more specifically claim 3), the examiner disagrees. The additional elements in claim 3 of Example 47 integrate the judicial exception into a practical application. Specifically, the additional elements allow for network intrusion detection by detecting the source address associated with the potentially malicious packets…dropping potentially malicious packets…and blocking future traffic from the source address. No such additional element or improvement is recited in the pending claims. In other words, the pending claims are 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 are patent eligible because they recite a combination of elements that is significantly more than an abstract idea, the examiner disagrees. 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 to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 1 are the generically recited “memory,” transaction database;” “first user device,” and “processors.” The applicant 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. Further, the filed specification supports the determination that these components are well-understood, routine and conventional: substantiates this, for instance at paras [0081-0082]. Thus, applying an exception using a generic computer 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.
Regarding the argument that the final office action violates Berkheimer, the examiner did not rely upon 2106.05(d) considerations. Instead the examiner stated the additional elements of the claim were mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do "more than simply stat[e] the [judicial exception] while adding the words ‘apply it’". Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984 (warning against a § 101 analysis that turns on "the draftsman’s art").
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 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
