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 .
Response to Amendment
Applicant's arguments filed 6/19/26 have been fully considered but they are not persuasive.
The applicant argues “Such operations are not practically performable in the human mind because they require the generation and recursive expansion of a graph network based on geospatial database queries and similarity-score calculations. See MPEP 2106.04(a)(1). Accordingly, the claims do not recite a mental process.
In response, the applicant essentially took rejected dependent claims and added them to the rejected independent claims.
It is well-settled that collecting and analyzing information by steps people go through in their minds or by mathematical algorithms, without more, are mental processes in the abstract-idea category. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016); see SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) ("[S]electing certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis" is abstract); Intellectual Ventures I LLC v. Cap. One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) ("Organizing, displaying, and manipulating data of particular documents" is abstract.); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096-97 (Fed. Cir. 2016) (compiling and combining disparate data sources to generate a full picture of a user's activity, identity, frequency of activity, and the like in a computer environment to detect potential fraud does not differentiate a process from ordinary mental processes); In re Killian, 45 F.4th 1373, 1379 (Fed. Cir. 2022) ("These steps can be performed by a human, using 'observation, evaluation, judgment, [and] opinion,' because they involve making determinations and identifications, which are mental tasks humans routinely do").
Using AI to predict amounts to a mental process in the same way that a human can predict the weather with or without a computer.
Furthermore querying a geospatial database is only recited in the preamble, and the preamble is not given any patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. Kropa v. Robie, 88 USPQ 478 (CCPA 1951). An intended use clause found in the preamble is not afforded the effect of a distinguishing limitation unless the body of the claim sets forth structure which refers back to, is defined by, or otherwise draws life and breath from the preamble. In re Casey, 152 USPQ 235 (CCPA 1967).
If the limitation was part of the body of the claims the steps are recited in high levels of generality and amount to mere instructions for data transfer which is a form of insignificant extra-solution activity. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Adding insignificant extra solution activity to the judicial exception – see MPEP 2106.05(g).
In re pg. 9, B. the applicant argues the claims are integrated into a practical application.
In response, claims do not specify a clear practical application. It is true that making physical changes to at least a portion of hardware is not a mental process but if applicant merely states e.g., “making physical changes” without any more description it would be so broad that it would be directed to insignificant extra-solution activity. If the physical changes were more specifically laid out, examiner may agree that the physical changes make a claim eligible but if the examiner cannot easily identify what physical changes are positively made the claimed physical changes amount to mere extra-solution activity.
In order for an abstract idea to be integrated into a practical application, the improvement in a given technical field must be a byproduct of the additional elements. An inventive concept "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself”, as stated in MPEP 2106.5 (1). Applicant should state where within the claim limitations such an improvement is made.
Practical applications must be additional elements, not abstract ideas. Prong Two: evaluate whether the claim recites additional elements that integrate the exception into a practical application of the exception.
"It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception." paragraph is on 2106.05(a) Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field [R-07.2022].
Limitations that are indicative of integration into a practical application:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo.
The claims amount to, data analysis and e.g.,
The system gets person's application and address.
It searches for other applications from addresses near 123 Main Street within the past few months.
It finds several applications from nearby addresses, all submitted within a short time frame, with similar or slightly changed names.
The system builds a network showing these connections and calculates how closely the person is linked to these other applicants.
It determines a high “synthetic identity score” for the person, suggesting he might be part of a group using fake identities.
The system decides to flag the person's application for review.
It sends a notification to the bank’s fraud prevention team, explaining the risk and the connections found.
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, 9-13, 19-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: claims 1-3, 9-13, 19-20 are directed to either a process, machine, manufacture or composition of matter.
With respect to claims 1, 11:
2A Prong 1:
generate a graph network of linked users (mental process – a user can manually generate graphs/trees/networks of linked users);
derive collective connectivity indicators from the graph network (mental process – user can manually perform raw thinking in their head as a first stage and then using paper and pen to derive indicators/parameters/metrics);
determine a synthetic identity score for the given user (encompasses mental observations or evaluations, e.g., a computer programmer’s mental identification of data – user can manually determine a score/metric)
determine an action, based on the synthetic identity score (Abstract idea of analyzing data. Mental process. A human- mind with pen and paper can determine data);
generate a notification configured to indicate the action including indicating the likelihood that the given user is using a synthetic identity to conduct activities (Abstract idea of analyzing data. Mental process. A human- mind with pen and paper can generate/determine data).
the generating comprising querying a geospatial database to identify addresses within a specified radius of an address associated with the given user and generating a similarity score (mental process – user can manually perform raw thinking in their head as a first stage and then using paper and pen to perform mathematical operation) for each soft-linked user candidate based on a geospatial proximity and a temporal proximity of the identified addresses(further expand mental process user can generate queries, and identify data).
2A Prong 2: This judicial exception is not integrated into a practical application.
Additional elements:
Processor, memory, (computer component is recited at a high level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component);
in response to receiving, from a database management system accessed via the internet, an application from a given user, the application including user data associated with the given user(mere data gathering and output recited at a high level of generality - insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)).
2B: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Additional elements:
Processor, memory, (computer component is recited at a high level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component)
in response to receiving, from a database management system accessed via the internet, an application from a given user, the application including user data associated with the given user(mere data gathering and output recited at a high level of generality - insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)). Further, the receiving/storing steps were considered to be extra-solution activity in Step 2A Prong 2, and thus it is re-evaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field. The court decisions cited in MPEP 2106.05(d)(II) indicate that merely 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). Thereby, a conclusion that the claimed storing step is well-understood, routine, conventional activity is supported under Berkheimer. The claim is not patent eligible.
Claims 4-8 and 14-18 are added to claims 1 and 11
2, 12. The system of claim 1, wherein the processor is further configured to: generate the graph network of linked users by applying a fuzzy clustering technique (mental process – user can manually perform raw thinking in their head as a first stage and then using paper and pen to perform mathematical operation) to soft-link users and a hard clustering technique to hard-link users.
3, 13. The system of claim 1, wherein the processor is further configured to: apply rules to the collective connectivity indicators (mental process user can apply rules/criteria in making determinations); and determine the synthetic identity score for the given user in response to the applied rules (encompasses mental observations or evaluations, e.g., a computer programmer’s mental identification of data – user can manually determine a score/metric).
Limitations of old 4, 14. The system of claim 1, wherein generating the graph network of linked users includes: soft-linking users to the given user in response to a given soft user attribute to form a layer of associated soft-linked users; and hard-linking users to each soft-linked user in the layer of associated soft-linked users to form a secondary layer of associated hard-linked users (further expand mental process user can create graphs/networks or model data as they see fit based on scores, confidence levels or probabilities).
Limitations of old 5, 15. The system of claim 4, wherein: each soft-linked user in the layer of associated soft-linked users has one degree of separation from the given user; each hard-linked user in the secondary layer of associated hard-linked users has two degrees of separation from the given user; and generating the graph network of linked users includes linking users to the given user in response to a given user attribute to form a layer of associated linked users, wherein each linked user in the layer of associated linked users has one degree of separation from the given user (further expand mental process user can create graphs/networks or model data as they see fit based on scores, confidence levels or probabilities).
Limitations of old 6, 16. The system of claim 5, wherein generating the graph network of linked users by: hard-linking users to the given user in response to a given hard user attribute to form a layer of associated hard-linked users, wherein each hard-linked user in the layer of associated hard-linked users has one degree of separation from the given user; and for each linked user in a given layer having two or more degrees of separation from the given user, linking additional users to each linked user in the given layer to form a subsequent layer of subsequently associated linked users to the linked users in the given layer (further expand mental process user can create graphs/networks or model data as they see fit based on scores, confidence levels or probabilities).
Limitations of old 7, 17. The system of claim 6, wherein the graph network comprises a plurality of subsequent layers generated by recursively hard-linking additional users to linked users in the graph network in response to a set of shared hard attributes (further expand mental process user can create graphs/networks or model data as they see fit based on scores, confidence levels or probabilities).
Limitations of old 8, 18. The system of claim 1, wherein generating the graph network of linked users includes: generating a similarity score for a soft-linked user candidate as compared with the given user, wherein a layer of associated soft-linked users is formed by selecting soft-linked user candidates to be soft-linked users in response to similarity scores of the soft-linked user candidates; hard-linking users to the given user in response to a given hard user attribute to form a layer of associated hard-linked users, wherein each hard-linked user in the layer of associated hard-linked users has one degree of separation from the given user; hard-linking users to each soft-linked user in the layer of associated soft-linked users to form a secondary layer of associated hard-linked users, wherein each hard-linked user in the secondary layer of associated hard-linked users has two degrees of separation from the given user; and for each linked user in a given layer having two or more degrees of separation from the given user, hard-linking additional users to each linked user in the given layer to form a subsequent layer of subsequently associated hard-linked users to the linked users in the given layer, wherein the graph network comprises a plurality of subsequent layers generated by recursively hard-linking additional users to linked users in the graph network in response to a set of shared hard attributes (further expand mental process user can create graphs/networks or model data as they see fit based on scores, confidence levels or probabilities).
9, 19. The system of claim 8, wherein the processor is further configured to determine a set of soft-linked users to be soft-linked to the given user by setting a threshold score value and selecting soft-linked user candidates having a similarity score above the threshold score value to be soft-linked users (further expand mental process user can create graphs/networks or model data as they see fit based on scores, confidence levels or probabilities).
10, 20. The system of claim 8, wherein the processor is further configured to determine a set of soft-linked users to be soft-linked to the given user by selecting a specific number of soft-linked user candidates having a highest value of similarity scores to be soft-linked users. (further expand mental process user can create graphs/networks or model data as they see fit based on scores, confidence levels or probabilities).
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
BALASUBRAMANIAN; Kavitha et al. (US 2019/0303796) teaches using rules (“ “rules” are decision-making factors or other decision-making criteria. Rules do not necessarily have the form {IF condition THEN action}. For example, rules may be embodied in a conditional probability model”, 0090), scoring (generating probabilities, 0321, 0355) and graphs (“algorithm was influenced by how LinkedIn Corporation detects spam names in their social networks”, 0344).
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 DAVID R VINCENT whose telephone number is (571)272-3080. The examiner can normally be reached ~Mon-Fri 12-8:30.
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, Alexey Shmatov can be reached on 5712703428. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID R VINCENT/Primary Examiner, Art Unit 2123
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