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 .
Application Status
Claims 1 and 24 have been amended by Applicant in communications received 11/20/2025.
Claims 1, 3-6, 8, 13-16, 18, 21, 22, and 24-26 are pending and have been examined.
This action is final, necessitated by Applicant amendment.
Claim Rejections
Claims 1, 3-6, 8, 13-16, 18, 21, 22, and 24-26 remain rejected under 35 U.S.C. § 101 for being directed to an abstract idea without significantly more.
Examiner’s Note
Examiner notes Applicant’s amendment provided incorrectly fails to indicate certain amendments as new with an underline, as required by 37 CFR 1.121(b) (c) (2): “…The text of any added subject matter must be shown by underlining the added text”. Specifically, the following limitations are not underlined, despite being newly added claim limitations in the received 11/20/2025 claim amendment:
“… providing instructions, by the server, for generation of a message to display at a user interface of a user device of the user immediately in response to the adjusting the second credit limit, the message indicating the user both that the second credit limit has been adjusted, and an indication of a reason for the adjusting of the second credit limit,”
Examiner respectfully request Applicant please underline all newly added limitations in the future, as it promotes clarity of the record. Examiner notes any future failure to properly identify any newly added claim limitations will result in the Examiner identifying any such hypothetical future amendments as an incomplete response, which would impact the timeliness of prosecution of the instant application.
Acknowledgement of Issues Raised by Applicant
Applicant’s arguments drawn to the 35 U.S.C. § 101 rejections of claims 1, 3-6, 8, 13-16, 18, 21, 22, and 24-26 have been fully considered but are not persuasive. See “Response to Applicant Arguments” section below.
Response to Applicant Arguments
35 U.S.C. § 101
With respect to the 35 U.S.C. § 101 rejections, examiner notes Applicant argues the claims are patent eligible under Alice/Mayo analysis per not reciting an abstract idea under step 2A Prong I, being integrated into a practical application under step 2A Prong II, and providing an inventive concept under step 2B. The examiner respectfully disagrees (analysis continues below).
Examiner’s Response Drawn to Step 2A Prong I
Examiner respectfully disagrees with Applicant’s arguments drawn to step 2A Prong I and respectfully maintains the claims recite an abstract idea for the following reasons:
The PTAB decision received 3/18/2025 already concluded the claims do recite an abstract idea under Alice/Mayo analysis, and the instant claims still include substantially the same steps identified as being recitation of an abstract idea by the PTAB – see pages 2-3 reproducing the previous claims and pages 5-7 of the aforementioned PTAB decision explaining why it is reasonable to conclude the claims recite an abstract idea.
Examiner respectfully submits that the claim limitations do not merely involve an exception, but rather include positively recited steps of credit decisioning, as previously explained in the previous non-final rejection. See MPEP § 2106.04(a)(1), emphasis added: “Examiners should accordingly be careful to distinguish claims that recite an exception (which require further eligibility analysis) and claims that merely involve an exception (which are eligible and do not require further eligibility analysis”. In other words, Examiner respectfully maintains that the claims clearly recite fundamental economic practices of credit decisioning, not just mere involvement – this stance is supported by the following:
The pre-amble of method claim 1 and apparatus claim 24 characterize the method and apparatus (respectively) as “…for employing user-level credit decisions…”. Similarly, the title of the instant application is “System, Method, and Apparatus for Making Credit Decisions at a User-Level”. The “Technical Field” section of Applicant’s specification also characterizes the embodiments as that which “generally relate to financial industry … and, in particular, relate to … methods for enabling credit decisions to be made at a user-level instead of at a transaction level” (¶1, emphasis added). Furthermore, the claims limitations include “employing …a first credit extension model … to execute … a first credit decision with respect to the user and the corresponding user account based on the prequalification information, the first credit extension decision being associated with a first credit limit”. Accordingly, it is abundantly clear that the claimed invention goes beyond mere involvement of the abstract credit decisioning recited – it is the explicit purpose of the claimed invention, to enable credit decisions for users.
Regardless of Applicant’s asserted basis for eligibility drawn to the additional elements, examiner fails to see how positively recited limitations such as “employing …a first credit extension model … to execute … a first credit decision with respect to the user and the corresponding user account based on the prequalification information, the first credit extension decision being associated with a first credit limit” are not recitations of fundamental economic practice, and more specifically, credit decisioning. The Examiner respectfully fails to see how this is merely involving an exception, as the claims clearly recite claim limitations including those steps.
The Examiner does not contend that the computer components identified as additional elements are abstract. However, the mere inclusion of claim limitations drawn to computer components does not necessarily preclude the same aforementioned claims from being considered to recite an abstract idea under step 2A prong I of Alice/Mayo analysis – see Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792 F.3d 1363, 1366, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015), emphasis added: ("An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer"). This fact is evident in light of the sequence of steps performed during the revised Alice/Mayo test – see MPEP §2106.04(II)(A) showing a visual summary of revised step 2A of the Alice/Mayo test.
Examiner notes that Applicant Remarks drawn to Enfish, LLC v. Microsoft Corp are possibly implying that the claims indicate a clear improvement to technology or some computer functionality even at step 2A Prong I, and thus do not need to undergo the full eligibility analysis (See MPEP § 2106.06(b)). The examiner respectfully submits streamlined analysis is not applicable to the instant claims, because there is no underlying basis or rationale by which the eligibility of the claim is clearly made self-evident. The claims do not clearly improve a technology or computer functionality on their face. See § 2106.06 of the MPEP showing the streamlined analysis as optional. This stance is supported by the previous PTAB decision agreeing the claims do not provide any clear improvement to computer technology or any other technological environment or technical field. Accordingly, the Examiner respectfully submits that a full eligibility analysis should be performed, consistent with MPEP § 2106.06(b).
The 35 U.S.C. § 101 rejections did not and do not take the position that the abstract idea identified was a mental process1, as implied by applicant’s argument stating “these features provide a concrete … application rather than a mental process …”. Instead, what was identified at step 2A I of the examiner’s analysis was the claims reciting certain methods of organizing human activity2 (MPEP § 2106.04(a)(2) II), and more specifically fundamental economic principles or practices3 of credit decisioning.
Applicant’s contentions drawn to the physicality / concreteness of the claimed invention are not relevant, because, again, as noted in Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792 F.3d 1363, 1366, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015): ("An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer")”. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception does not guarantee eligibility – see Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1983-84 (2014) ("The fact that a computer ‘necessarily exist[s] in the physical, rather than purely conceptual, realm,’ is beside the point")”. Accordingly, Examiner respectfully notes that the fact that the elements of the claims aren’t “purely conceptual” is an irrelevant/incorrect consideration to apply to the ‘Certain Methods of Organizing Human Activity’ grouping.
Examiner respectfully disagrees with Applicant’s position that the instant claims do not include business rules. The credit decisioning steps can reasonably be construed as business rules for a loan provider (e.g., Affirm).
Accordingly, for the reasons provided above, as well as the reasons provided in the 101 rejections further below, Applicant’s arguments drawn to step 2A Prong I are not persuasive (Step 2A Prong I: Yes – the claims recite an abstract idea).
Examiner’s Response Drawn to Step 2A Prong II
Examiner respectfully disagrees with Applicant’s arguments drawn to step 2A Prong II and respectfully maintains the claims are directed to an abstract idea for the following reasons:
The Applicant’s various characterizations of the method / functional steps as being done concurrently, automatically, in real-time, in parallel, or, generally, dynamic, etc., are not persuasive in indicating there is a technological solution to a technological problem, because generic general-purpose computers conventional to computer technology are generally known by one of ordinary skill in the art to be able to process data concurrently, automatically, in real-time, in parallel, dynamically, etc. – see MPEP § 2106.05(a): “Examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality: iii. Mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017)”. Without sufficient detail drawn to the additional elements achieving this purported automation (i.e., a particular form of automation necessarily rooted in the additional elements), the use of the additional elements amounts to being merely used as a tool to implement the abstract idea (MPEP § 2106.05(f)(1)), and does no more than merely limiting the use of the abstract idea to a particular technological environment (MPEP § 2106.05(h)) – see Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014): "… Stating an abstract idea "while adding the words ‘apply it’ " is not enough for patent eligibility. … Nor is limiting the use of an abstract idea " ‘to a particular technological environment.’ … Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result”. I.e., absent of any particular technological details underpinning the purportedly inventive automation, the only thing these characterizations of expeditious processing do from the perspective of Alice/Mayo analysis is reaffirm that computers perform the recited steps – this is not in dispute. However, as per Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015): “… our precedent is clear that merely adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea…”; see also § 2106.05 of MPEP: “As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception is not in itself an inventive concept and does not guarantee eligibility”. Lastly, see MPEP § 2106.05, emphasis added: “…eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself. … For a claim reciting a judicial exception to be eligible, the additional elements (if any) in the claim must "transform the nature of the claim" into a patent-eligible application of the judicial exception, Alice Corp., 573 U.S. at 217, 110 USPQ2d at 1981, either at Prong Two or in Step 2B”. Accordingly, it is apparent from the MPEP and aforementioned case law that sufficient details drawn to the additional elements themselves must be present within the claims to indicate any purported improvements to the functioning of a computer, or to any other technology or technical field for Alice/Mayo analysis, as noted in MPEP §§ 2106.05 (a) and 2106.04(d)(1), and not just merely adding words effectively equivalent to “apply it” that merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05 (f) & (h)).
Keeping in mind the above rationales pertinent to Step 2A Prong II of Alice/Mayo analysis, the examiner respectfully maintains that the additional elements amount to no more than mere instructions to implement the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05 (f), (h)), even when considering each claim’s additional elements both separately and as an ordered combination.
Examiner notes that a judicial exception (e.g., the abstract credit decisioning) itself having practical utility is not enough for the claims to be patent eligible - See In Re Comiskey: “The Court rejected the notion that mere recitation of a practical application of an abstract idea makes it patentable”, and MPEP § 2106 I: “… eligibility should not be evaluated based on whether the claimed invention has utility, because "[u]tility is not the test for patent-eligible subject matter." Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1380, 118 USPQ2d 1541, 1548 (Fed. Cir. 2016)”.
Applicant’s arguments drawn to “low-latency”, “redundant computation”, “adaptive retraining”, “system responsiveness”, and “improved performance” are cursory and do not provide any underlying reasoning or rationale rooted in the additional elements claimed. When a claim directed to an abstract idea contains no restriction on how an asserted improvement is accomplished and the asserted improvement is not described in the claim, then the claim does not become patent eligible. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 131.
Again, with respect to the above arguments drawn to “low-latency”, “improved performance”, “redundant computation”, “adaptive retraining”, and “system responsiveness”, etc., the Examiner respectfully notes that, per MPEP § 2106.04(d)(1): “…the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. That is, the claim includes the components or steps of the invention that provide the improvement …”4. The Examiner respectfully disagrees any of the claim limitations, either individually or as an ordered combination, reasonably reflects any of those purported improvements from a technological perspective. The claims do not provide any technological components or steps rooted in technology, that, when viewed either individually or as an ordered combination, provide those purported improvements. I.e., Examiner respectfully submits Applicant arguments are not commensurate with claim scope.
Applicant’s arguments drawn to analogizing the instant claims to those of Enfish are cursory and do not provide any substantive underlying reasoning or rationale rooted in any specific identifiable nexus between the claim limitations of Enfish and the instant claims, beyond merely stating “As in those cases, the present claims provide a specific technical solution to a technological problem, namely improving real-time decisioning performance in multi-model credit systems”. The Examiner respectfully disagrees any specific technological solution to a technological problem is realized by the claim limitations, either individually or as an ordered combination, as there is no specific technological solution rooted in the additional elements themselves – the additional elements themselves are generic and merely applied at a high degree of generality. Further, the automation described within the claims still amounts to apply it, as will be evidenced later in this response’s supporting rationales. Again, when a claim directed to an abstract idea contains no restriction on how an asserted improvement is accomplished and the asserted improvement is not described in the claim, then the claim does not become patent eligible. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 131. Lastly, examiner respectfully disagrees that the portion of argument stating “…multi-model credit…” corresponds to a technological environment of technical field; it instead corresponds to abstract business practices. The computer components themselves are not improved.
The purported “improv[ed] user transparency” and “improved performance” argued by applicant does not appear to correspond to any particular technological solution to a technological problem, beyond utilizing the server, API, processing circuitry, etc., that are conventional to computer technology, and merely automating the decisioning and notice of changes in credit. This purported improvement, at best, amounts to a technological solution to an abstract business problem, i.e., an improvement in the abstract business process; not any improvements to the functioning of a computer or to any other technology or technical field (MPEP § 2106.05(a)). MPEP 2106.05(a) II: “… it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology … Merely adding generic computer components to perform the method is not sufficient”. This stance is supported by the PTAB decision also taking the stance that the claims amount to an improvement in the abstract idea recited, not a technological improvement (See page 11 of the PTAB decision: “We also agree with the Examiner that the alleged improvement is not a technical improvement, but merely improves the abstract idea”). Accordingly, these particular arguments are not persuasive.
Accordingly, for the reasons provided above, as well as in the 101 rejections further below, the Examiner respectfully maintains that the claims do not integrate the judicial exception into a practical application (Step 2A Prong II of Alice/Mayo Test: NO, the additional elements do not integrate the judicial exception into a practical application) and, accordingly, are directed to an abstract idea under step 2A (Step 2A: The claims are directed to an abstract idea of credit decisioning).
In order to further support examiner’s stance that the additional elements are merely applied, are generic to their respective technological environment(s), merely limit the use of the abstract idea to a particular technological environment, and do not integrate the judicial exception into a practical application, examiner notes the following5:
With respect to the claimed server / processing circuitry:
Applicant’s claims generally provide little to no details of the server itself, beyond it merely receiving data, updating data, executing models (e.g., software programs), making determinations based on comparisons of data values (e.g., Boolean logic), and providing instructions for generation / sending of a message to a user interface of a user device (e.g., data transmission between server and user / client device), via a relatively non-descript and generic processing circuitry and non-descript API. All of these functionalities of receiving, updating, executing programs, and making determinations based on comparisons of data values performed by the server are conventional to computer technology, of which servers are generally a part of; this is not indicative of a technological solution to a technological problem (MPEP § 2106.05(a)), applying the judicial exception with, or by use of, a particular machine (MPEP § 2106.05(b)), or applying or using the judicial exception in some other meaningful way (MPEP §2106.05(e)), when described at such a high degree of generality, as the case is here. Instead, it is indicative of the additional elements being merely applied (MPEP § 2106.05(f)) and the abstract idea being merely limited to a particular technological environment (MPEP § 2106.05(h)).
PNG
media_image1.png
112
149
media_image1.png
Greyscale
The above stance is further evidenced by the fact Applicant’s specification drawings merely includes the server as a simple box, without any further details as to its constituent elements, of which are generally known to include at least a processor, memory, and network interface to communicate over a network. That bare minimum set of components appears to be all the structure described in Applicant specification (see ¶¶28, 32 referencing application server 42):
Keeping in mind the above aspects of Applicant Specification, it is apparent to one of ordinary skill in the art that even the Applicant understands that the claimed server is so well-known in the art that the server does not require any additional delineation, as the drawing does not even include the most basic of elements that one of ordinary skill in the art understands as constituting a server (e.g., memory, processor, network interface), and the specification only discloses the most basic of components necessary for computer-implemented servers communicating over a network (save for the abstract idea recited), of which only a portion are actually even claimed. I.e., it is evident that the claimed server is so widely prevalent or in common use in the industry that it need not be described with any substantive level of detail, as implicitly acknowledged by Applicant’s drafting of the specification and claims. Accordingly, in light of Applicant’s disclosure, it is apparent that the claimed server is nothing more than a generic (application) server conventional to computer technology.
Given the degree of generality of the disclosure of the server, Applicants do not appear to claim to have invented a new form of server technology, nor have they. At best, the Applicants are claiming a new form of credit decisioning using a generic server, its associated components, and non-descript API, of which communicate / interface with a user device.
The reasons previously provided within pages 5-13 of the Examiner’s Answer to Appeal Brief are still applicable and serve as evidence that the additional elements drawn to the server, user interface, and user device amount to functionality conventional to client-server architectures.
With respect to the claim limitations drawn to the API:
Applicant’s claims generally provide little to no details of the API itself, beyond it merely being generated “for display at the user interface”. The API itself is only limited to being generated, and does not even require any additional technological details, beyond that it is generally intended to be used for display at the user interface.
The above stance is further evidenced by the fact Applicant’s specification merely includes describes the API at a high degree of generality, as previously explained on pages 11-12 of the Examiner’s Answer to Appeal Brief - see ¶¶27, 30, 31 of Applicant specification.
The API is claimed at a high degree of generality and is merely used to obtain information drawn to the abstract idea at a high degree of generality, and in the ordinary capacity of APIs, so as to achieve a result rooted in the abstract idea recited (i.e., for a user to select to make a down payment to reduce an amount to be financed below a predefined credit limit)) – see MPEP §§ 2106.05(f)(1) – 2106.05(f)(3).
Applicants do not appear to claim to have invented a new particular form of API technique necessarily rooted in API technology, nor have they. At best, the Applicants are claiming a new form of credit decisioning using a generic server and non-descript API.
With respect to the claim limitations drawn to the user device and user interface of the user device:
Merely gathering and analyzing information using conventional techniques and displaying the result is not indicative of a technological solution to a technological problem, as noted by MPEP § 2106.05(a), citing TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48;
As evidenced by Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016), merely displaying information on a computer interface without any inventive technology for performing the display function is not indicative of the claims integrating the judicial exception into a practical application:
“Here, the claims are clearly focused on the combination of those abstract-idea processes. The advance they purport to make is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions. They are therefore directed to an abstract idea”.
While not exactly the same as the Instant Application of Appellant’s claims, Federal Circuit Court Case cxLoyalty Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1380 (Fed. Cir. 2021). discloses a claim (claim 16), with similar limitations drawn to an API and interface, including6
“an application programming interface (API) for interfacing with the … system; … a … GUI for providing an interface between participants and the API and for communicating … wherein the GUI is configured so that the participants can connect to the GUI using an internet connection; wherein said GUI includes instructions for receiving … information from each participant via the internet connection and providing the received … information to the API … wherein said GUI includes instructions for receiving information … and for providing the received … information to the API … wherein said API is adapted to receive … [two sets of information, including the aforementioned information] from the GUI and adapted to provide the [two sets of information, including the aforementioned information] to the …system; … wherein said GUI includes instructions for receiving …[data] from the API, for converting the received … [data] … into a format of the GUI …; ”7
which was deemed patent-ineligible by the Court8 because (per relevant sections of Pages 15-23 – underline emphasis added):
“The claims amount to nothing more than applying the above-identified abstract idea using techniques that are, whether considered individually or as an ordered combination, well-understood, routine, and conventional. … The claims do not survive step two. … [quoting CellSpin Soft Inc. v. Fitbit, Inc. 927 F.3d 1306, 1316 (Fed. Cir. 2019] (“An inventive concept reflects something more than the application of an abstract idea using well-understood, routine, and conventional activities previously known to the industry.” … For the reasons provided above, the claims are directed to an abstract idea, and they implement the abstract idea using conventional techniques; the claims are not directed to a technological solution to a technological problem. … the claims solve this purported problem by applying an abstract idea using conventional techniques specified in functional terms and at a high degree of generality. …”.
United States Patent Application Publication No. US 20160364774 A1 (Wittisiepe) discloses that one of ordinary skill in the art generally understands internet-connected network systems connect computers via various services for enabling the transmission and display of data (e.g., webpages), where it is generally understood to one of ordinary skill in the art that the display necessarily corresponds to some form of computer interface.
United States Patent Application Publication No. US 20100203926 A1 (Ikeda) discloses one of ordinary skill in the art understands computer components including a display for displaying information is “well-known in a person having ordinary skill in the art”, and therefore, “detailed descriptions of these units are omitted.”
As noted in the PTAB decision (page 11), citing Intellectual Ventures I LLC v. Capital One Fin. Corp, 850 F.3D 1332, 1342, (Fed. Cir. 2017), a user interface that provides little more than an unspecified set of rules for displaying and organizing elements does not recite eligible subject matter.
As also noted in the PTAB decision, referencing buySAFE, Inc., 765 F.3d at 1355 (page 12 of PTAB decision) and TLI Communications, 823 F.3d at 612-13, receiving, generating, updating, adjusting and displaying data at a high degree of generality (as the case here) constitutes mere insignificant extra-solution activity.
The following rationale of Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016) is relevant and Applicable to the instant claims: “Here, the claims are clearly focused on the combination of those abstract-idea processes. The advance they purport to make is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions. They are therefore directed to an abstract idea”.
Given the specification and claims describe the additional elements (e.g., server, user device, API) at a high degree of generality (as evidenced above), it cannot be reasonably asserted that the claimed system qualifies as a particular machine (MPEP § 2106.05(b)), as the additional elements are indistinguishable from server implementations carried out by a general-purpose computer communicating with general purpose user/client devices via a relatively non-descript API. The user device, user interface of user device, server, processing circuitry, and API are all generic when viewed in light of the technological environment of computers and client-server architectures.
Given the above rationales identified above, it is clear that the Applicant’s claims fail to provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement to the functioning of a computer or to any other technology or technical field (MPEP §§ 2106.04(d)(1) & 2106.05(a)).
In light of the above supporting rationales provided for the step 2A Prong II analysis, the Examiner respectfully maintains the focus of the claims is not on an improvement in computers as tools, but rather on an abstract idea that uses computers as tools. Considered both separately and as an ordered combination, the additional elements of the independent claims do not integrate the abstract idea into a practical application, as they do no more than represent computers performing functions that correspond to (,i.e., implement,) the acts of the abstract credit decisioning within a particular technological environment, and do not provide details such that one of ordinary skill in the art would recognize the claims as reflecting an improvement to the functioning of a computer or any other technology or technical field.
Examiner’s Remarks Drawn to Step 2B
Examiner respectfully disagrees with Applicant’s arguments drawn to step 2B and respectfully maintains the claims do not provide an inventive concept for the following reasons:
The same reasons identified in the examiner’s step 2A Prong II analysis and subsequent supporting rationales (in the section immediately above) are generally applicable to step 2B of Alice/Mayo analysis, and still indicate the additional elements as being merely applied and generally limiting the use of the abstract idea to a particular technological environment – see MPEP § 2106.05: “Although the conclusion of whether a claim is eligible at Step 2B requires that all relevant considerations be evaluated, most of these considerations were already evaluated in Step 2A Prong Two.”
Examiner notes the previous PTAB decision agreed with Examiner’s rationale that the details drawn to the API, server, and user (e.g., client) device amounted to conventional functionality and/or “apply it” – see at least pages 10 – 11 of the PTAB decision affirming examiner.
With respect to the argument drawn to “user interface synchronization”, the Examiner respectfully notes that, per MPEP § 2106.04(d)(1): “…the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. That is, the claim includes the components or steps of the invention that provide the improvement …”9. The Examiner respectfully disagrees any of the claim limitations, either individually or as an ordered combination, reasonably reflects any of the purported improvements argued by Applicant. The claims do not provide any technological components or steps rooted in technology that, when viewed either individually or as an ordered combination, provide the purported improvement of “user interface synchronization”. I.e., Examiner respectfully submits Applicant arguments are not commensurate with claim scope. Arguendo, even if the user interface synchronization asserted by Applicant is successfully argued to be necessarily occurring given the claim limitations, the underlying basis of this feature is realizing by merely using a to server send a message to a user device, which is indicative of the server being merely applied, as merely using computer functionalities to send/receive messages is well-understood, routine and conventional to computer technology – see MPEP §2106.05(d)(II) disclosing that sending and receiving data over a network between devices is well-understood, routine and conventional (underline emphasis added): “The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. […] i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) […] (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014)”.
While not exactly the same as the Instant Application of Appellant’s claims, aforementioned Federal Circuit Court Case cxLoyalty Inc. discloses a claim (“claim 16” of cxLoyalty Inc), with similar limitations drawn to an API and interface, including10
“an application programming interface (API) for interfacing with the … system; … a … GUI for providing an interface between participants and the API and for communicating … wherein the GUI is configured so that the participants can connect to the GUI using an internet connection; wherein said GUI includes instructions for receiving … information from each participant via the internet connection and providing the received … information to the API … wherein said GUI includes instructions for receiving information … and for providing the received … information to the API … wherein said API is adapted to receive … [two sets of information, including the aforementioned information] from the GUI and adapted to provide the [two sets of information, including the aforementioned information] to the …system; … wherein said GUI includes instructions for receiving …[data] from the API, for converting the received … [data] … into a format of the GUI …; ”11
which was deemed patent-ineligible by the Court12 because (per relevant sections of Pages 15-23 – underline Emphasis added):
“The claims amount to nothing more than applying the above-identified abstract idea using techniques that are, whether considered individually or as an ordered combination, well-understood, routine, and conventional. […] The claims do not survive step two. […] [quoting CellSpin Soft Inc. v. Fitbit, Inc. 927 F.3d 1306, 1316 (Fed. Cir. 2019] (“An inventive concept reflects something more than the application of an abstract idea using well-understood, routine, and conventional activities previously known to the industry.” […] For the reasons provided above, the claims are directed to an abstract idea, and they implement the abstract idea using conventional techniques; the claims are not directed to a technological solution to a technological problem. […] the claims solve this purported problem by applying an abstract idea using conventional techniques specified in functional terms and at a high degree of generality. […]”.
In view of the two items immediately above relying upon cxLoyalty and the MPEP, examiner respectfully disagrees with Applicant’s position that “…the record lacks factual support for the conclusion that the claimed features are routine or conventional…”, as these explanations were already provided to Applicant in the Examiner’s Reply to Appeal Brief (see pages 5-13 of the Examiner’s Answer to Appeal Brief providing support for Examiner’s position). The case law and MPEP makes clear the technological features of Applicant’s claims analogous to cxLoyalty and the MPEP are well-understood, routine and conventional to computer technology (i.e., not an inventive concept indicative of an improvement to computer technology or any other technological environment or technical field).
The well-understood, routine, and conventional rationale applies to the components, and not the abstract idea itself – see TLI Communications LLC v. AV Automotive L.L.C. 823 F.3d 607, 613, 118 USPQ2d 1744, 1748, underline emphasis added: “It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. Rather, the components must involve more than performance of “wellunderstood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294).”. The details of the abstract idea are insufficient basis for the well-understood, routine, and conventional rationale – see also BSG Tech LLC vs. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018): “It has been clear since Alice that a Claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept”, Synopsys, 839 F.3d at 1151: “a claim for a new abstract idea is still an abstract idea.” (emphasis omitted), and MPEP § 2106.05, emphasis added: “…eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself. … For a claim reciting a judicial exception to be eligible, the additional elements (if any) in the claim must "transform the nature of the claim" into a patent-eligible application of the judicial exception, Alice Corp., 573 U.S. at 217, 110 USPQ2d at 1981, … in Step 2B”. See also SAP America, Inc. v. Investpic, LLC, No. 17-2081 (Fed. Cir. 2018): “No matter how much of an advance in the finance field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm. An advance of that nature is ineligible for patenting…Under the principles developed in interpreting §101, patent law does not protect such claims, without more, no matter how groundbreaking the advance.”
The 35 U.S.C. § 101 rejections applied relied upon the “apply it” and “generally linking the use of the judicial exception to a particular technological environment” rationales (MPEP §§ 2106.05(f) & (h)). This consideration is different than the Well Understood, Routine, and Conventional consideration –See MPEP 2106.05(d) and MPEP § 2106.04(d) II: “… Not all considerations will be relevant to every element, or every claim”. Furthermore, the well-understood, routine and conventional considerations supplied by the Examiner were supplied to make it prima facie that the additional elements are generic to one of ordinary skill in the art with a basic understanding of computer technology, as evidenced by the rationales previously provided above and in the Examiner’s Answer to Appeal Brief. In light of the aforementioned, the examiner again disagrees that “…the record lacks factual support for the conclusion that the claimed features are routine or conventional…” as asserted by Applicant, and instead notes the Examiner has provided ample fact-based rationales explaining their stance.
Even though the claims utilize a server, processing circuitry, API, and incorporate a user interface of a user device, the manner by which these claimed additional elements are used is indistinguishable from mere addition of general-purpose computers added post-hoc to the abstract idea recited, as evidenced by the various reasons throughout this response to Applicant arguments and prosecution history. Nothing in the claims indicate specific steps undertaken by the computer elements that are beyond conventional functionality of generic client-server cloud architectures being used at a high degree of generality, excepting the abstract idea it is merely used as a tool for – the claimed computer implementation itself is wholly generic when viewed in light of the technological environment of client-server cloud networks and computer technology.
Accordingly, when considered both separately and as an ordered combination, none of the elements of the independent claims add significantly more to the abstract idea itself (i.e., an inventive concept), as the manner by which the claims’ additional elements are used is indistinguishable from mere addition of general-purpose computers added post-hoc to the abstract idea recited, and merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05 (f), (h)). The claims are merely employing computers as tools to automate and/or implement the abstract idea, which cannot provide significantly more than the judicial exception itself (Step 2B: No, the claims do not provide significantly more than the abstract idea).
Hence, for the reasons listed above, as well as the reasons provided in 101 rejections further below, the Examiner respectfully maintains the claims do not recite an inventive concept (i.e., amount to significantly more) under step 2B and maintains the 35 U.S.C. §101 rejections. The claims are not patent eligible under 35 U.S.C. §101, when analyzed under the Alice/Mayo test.
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, 3-6, 8, 13-16, 18, 21, 22, and 24-26 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
As an initial matter, the relevant test is the Alice/Mayo test13. The following analysis provided in this section results from the instant application’s claims being examined within the scope of the Alice/Mayo test framework.
With respect Step 1 of Alice/Mayo analysis, the claims are either directed to an apparatus or method, which are statutory categories of invention (Step 1 of Alice/Mayo Test: YES).
In light of step 2A Alice/Mayo analysis performed on the instant claims14, claims 1, 3-6, 8, 13-16, 18, 21, 22, and 24-26 have been determined to be directed to an abstract idea of credit decisioning. The rationales for the aforementioned determination are explained further below.
Prior to step 2A Prong I Alice/Mayo analysis, examiner notes they have identified method claim 1 as the claim that represents the claimed invention for analysis under step 2A Prong I, as method claim 1 is analogous to system claim 24 under step 2A Prong I analysis. I.e., the step 2A Prong I Alice/Mayo rationales applied to claim 1 (below) are similarly applied to claim 24, mutatis mutandis.
When analyzed under prong I of revised step 2A, claims 1, 3-6, 8, 13-16, 18, 21, 22, and 24-26 each recite a method of organizing human activity,15 because independent claims 1 and 24 each recite claim limitations drawn to:
“…A method for employing user-level credit decisions in relation to extension of a loan to a user, the method comprising:
receiving, …[by] a lending entity, prequalification information associated with a user and a corresponding user account of the user with the lending entity;
employing … a first credit extension model to execute … a first credit extension decision with respect to the user and the corresponding user account based on the prequalification information, the first credit extension decision being associated with a first credit limit;
… employing, … a second credit extension model, different from the first credit extension model, to execute a second credit extension decision with respect to the user and the corresponding user account based on the prequalification information and relationship information associated with current and prior interactions between the user and the lending entity making the first credit extension decision and the second credit extension decision, the second credit extension decision being associated with a second credit limit;
determining … based on comparing the first and second credit limits of the first and second credit extension decisions made with respect to the user and the corresponding user account, whether to extend a predefined credit limit to the user;
updating … the relationship information … responsive to an indication of receipt of a payment toward the loan from the user, and
… adjusting the second credit limit … responsive to and based on the receipt of the payment; and
providing instructions, … for generation of a message to display … [to a] user … in response to the adjusting the second credit limit, the message indicating to the user both that the second credit limit has been adjusted, and an indication of a reason for adjusting the second credit limit;
wherein the first credit extension model is a transactional credit model, and the second credit extension model is a user-level credit model,
wherein … updating the second credit limit comprises increasing the second credit limit when the payment is part of a sequence of on time payments, and a number of the on time payments in the sequence exceeds a threshold, and
wherein, responsive to a transaction amount being higher than the predefined credit limit, the method further includes … display … [to a] … user … [a] selectable displayed option for the user to select to make a down payment to reduce an amount to be financed to a value below the predefined credit limit.”
Under broadest reasonable interpretation consistent with the specification16, the above claim limitations recite commercial and/or legal interactions of credit decisioning, the credit decisioning including steps of (A) receiving by a lending entity, prequalification information associated with a user and a corresponding user account of the user with the lending entity, (B), employing a first credit extension model to execute a first credit extension decision while employing a second credit extension model different from the first credit extension model, to execute a second credit extension decision with respect to the user, (C) determining … based on comparing the first and second credit limits of the first and second credit extension decisions made with respect to the user and the corresponding user account, whether to extend a predefined credit limit to the user, (D) updating relationship information responsive to an indication of receipt of a payment toward the loan from the user, (E) adjusting the second credit limit responsive to and based on the receipt of the payment, and (F) providing instructions for generation of a message to display to a user in response to adjusting the second credit limit, the message indicating to the user both that the second credit limit has been adjusted, and an indication of a reason for the adjusting the second credit limit, wherein the first credit extension model is a transactional credit model, and the second credit extension model is a user-level credit model, wherein responsive to a transaction amount being higher than the predefined credit limit, the method further includes displaying to a borrower, a displayed option for the user to select to make a down payment to reduce an amount to be financed to a value below the predefined credit limit. (Step 2A Prong I of Alice/Mayo Test: Yes, the claims recite an abstract idea).
This judicial exception recited in independent claims 1 and 24 is not integrated into a practical application because, when analyzed under prong II of revised step 2A of the Alice/Mayo test17:
The additional elements “…at a server associated with…”, “…by the server…”, “…in real time by processing circuitry”, “…concurrently and automatically…”, “…immediately…”, “…[display] at a user interface of a user device … immediately”, “…dynamically…”, and “…generating instructions for executing an application programming interface (API) for display at a user interface of a user device of…” of claim 1 and the additional elements “…An apparatus for…”, “…the apparatus comprising processing circuitry configured to …”, “…at a server associated with”, “…by the server…”, “…[display] at a user interface of a user device of the [user] immediately”, “…in real time by processing circuitry”, “…immediately…”, “…dynamically…”, “…generating instructions for executing an application programming interface (API) for display at a user interface of a user device … immediately” “…wherein the processing circuitry is configured to dynamically…”, “…the processing circuitry is further configured for generating instructions for executing an application programming interface (API) for display at a user interface of a user device of…” of claim 24 amount to no more than mere instructions to implement the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05 (f), (h)), even when considering each claim’s additional elements both separately and as an ordered combination. Stating an abstract idea while adding the words "apply it" (or an equivalent) is insufficient to impart patent eligibility under Alice. See Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014): "… Stating an abstract idea "while adding the words ‘apply it’ " is not enough for patent eligibility. … Nor is limiting the use of an abstract idea " ‘to a particular technological environment.’ … Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result”.
The claims merely invoke computers as tools to perform an abstract business process (e.g., the recited credit decisioning – see MPEP §2106.05(f)(2)).
With respect to the “immediately”, “dynamically”, “simultaneous with” claim limitations, an improvement in the abstract idea itself is not a technological solution to a technological problem (MPEP §§ 2106.05 (a), (a) II). See the following:
MPEP 2106.05(a) II: “… it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology … Merely adding generic computer components to perform the method is not sufficient.”
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015): “... our precedent is clear that merely adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea.”
Customedia Techs. V. Dish Network Corp., 951 F.3d 1359, (Fed. Cir. 2020): “We have held that ‘claiming the improved speed or efficiency inherent with applying the abstract idea on a computer’ was insufficient to render the claims patent eligible as an improvement to computer functionality”.
In light of the above rationales provided for step 2A Prong II analysis, the Examiner respectfully submits the focus of the claims is not on an improvement in computers as tools, but rather on an abstract idea that uses computers as tools. Considered both separately and as an ordered combination, the additional elements of the independent claims do not integrate the abstract idea into a practical application, as they do no more than represent computers performing functions that correspond to (,i.e., implement,) the acts of the abstract credit decisioning and do not provide details such that one of ordinary skill in the art would recognize the claims as reflecting an improvement to the functioning of a computer or any other technology or technical field. (Step 2A Prong II of Alice/Mayo Test: NO, the additional elements do not integrate the judicial exception into a practical application). Accordingly, claims 1 and 24 are determined to be directed to an abstract idea.
When analyzed under step 2B18, claims 1 and 24 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Claims 1 and 24, each when viewed as a whole, do not include additional elements amounting to significantly more, as their additional elements, each viewed both individually and as an ordered combination, amount to no more than mere instructions to implement the abstract credit decisioning concept within a particular technological environment – see MPEP §§ 2106.05 (f), (h) and Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014). Accordingly, when considered both separately and as an ordered combination, none of the elements of the independent claims add significantly more to the abstract idea itself (i.e., an inventive concept), as merely employing computers as tools to automate and/or implement the abstract idea cannot provide significantly more than the judicial exception itself – see BSG Tech LLC vs. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018): “It has been clear since Alice that a Claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept”.
Hence, independent claims 1 and 24 are not patent eligible.
With respect to the dependent claims, they have each been given the full Alice/Mayo analysis, including analyzing the additional elements both individually and as an ordered combination (if any). The dependent claims are also held patent ineligible under 35 U.S.C. § 101 because of the same reasoning as above, and because the claim limitations of the dependent claims fail to establish that the claims are integrated into a practical application or amount to significantly more. The rationales for the aforementioned determinations are explained further below.
With respect to dependent claims 3, 4, 5, 6, 8, 8, 21, 22, 25, 26, their limitations each fail to provide any further additional elements outside the abstract idea, and only further specify the abstract credit decisioning concept. Furthermore, their limitations do not indicate that the previously mentioned additional elements of their respective parent claims successfully integrate the judicial exception into a practical application or amount to significantly more than the judicial exception itself, either individually or as an ordered combination. Accordingly, claims 3, 4, 5, 6, 8, 8, 21, 22, 25, 26, do not integrate the judicial exception into a practical application or amount to significantly more than the judicial exception. Therefore, dependent claims 3, 4, 5, 6, 8, 8, 21, 22, 25, 26, are also not patent eligible.
With respect to dependent claims 13, 14, 15, 16, and 18, their limitations each fail to provide any further additional elements outside the abstract idea, save for the additional element “…wherein the processing circuitry is configured to…” and otherwise specify the abstract credit decisioning concept. The aforementioned additional element “…wherein the processing circuitry is configured to…” does no more than represent the use of computers as tools to perform the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment for each of the claims (MPEP §§ 2106.05(f) & 2106.05(h)). Accordingly, when considered as a whole, these claims do not improve the functioning of a computer, or to any other technology or technical field, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Therefore, dependent claims 13, 14, 15, 16, and 18 are also not patent eligible.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK A MALKOWSKI whose telephone number is (313)446-6624. The examiner can normally be reached Monday - Friday, 9:00AM - 5:00PM ET.
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, Matthew Gart can be reached at (571) 272-3955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/M.A.M./Examiner, Art Unit 3696
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696
1 See MPEP § 2106.04(a)(2) III.
2 See MPEP § 2106.04(a)(2) II.
3 See MPEP § 2106.04(a)(2) II (a).
4 Underline emphasis added.
5 See MPEP §2106.05(f), emphasis added: “For example, because this [Mere Instructions To Apply An Exception] consideration often overlaps with the improvement consideration (see MPEP § 2106.05(a)), the particular machine and particular transformation considerations (see MPEP § 2106.05(b) and (c), respectively), and the well-understood, routine, conventional consideration (see MPEP § 2106.05(d)), evaluation of those other considerations may assist examiners in making a determination of whether an element (or combination of elements) is more than mere instructions to apply an exception”.
6 Underline emphasis added.
7 See Pages 7-9 of cxLoyalty, Inc. v. MARITZ HOLDINGS INC. showing claim limitations of claim 16.
8 Page 20 of cxLoyalty, INC. v. MARITZ HOLDINGS INC: “Claim 16 is ineligible under § 101 for the same reasons as claim 1.”.
9 Underline emphasis added.
10 Underline emphasis added.
11 See Pages 7-9 of cxLoyalty, INC. v. MARITZ HOLDINGS INC. showing claim limitations of claim 16.
12 Page 20 of cxLoyalty Inc. v. MARITZ HOLDINGS INC: “Claim 16 is ineligible under § 101 for the same reasons as claim 1.”.
13 See MPEP § 2106 I.
14 See MPEP §§ 2106.04 I, II, (d) I.
15 See MPEP § 2106.04(a)(2) II
16 See MPEP § 2111.
18 See MPEP § 2106.05.