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 .
In view of the Appeal Brief filed on 06/28/26, prosecution is hereby reopened. Prosecution on the merits of this application is reopened after the Panel Decision in the Appeal Conference held on 09/17/26. These claims are considered unpatentable for the reasons indicated below: updated 101 rejections.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/CHRISTINE M Tran/Supervisory Patent Examiner, Art Unit 3695
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 1-2, 4-8, 10-12, 14-17, 19-22, and 24-28 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 11 as the representative claim, it is determined that apart from generic hardware and extra-solution activity discussed in Step 2A, Prong 2 below, the claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language “computer-implemented method, comprising: receiving…a message associated with an exchange of data initiated between devices operable by a first counterparty and a second counterparty, the message comprising elements of message data disposed within corresponding message fields, and the elements of message data comprising a value of at least one parameter…; generating …an input dataset… that includes the at least one parameter value and the at least one element of textual content; … generating… intent data characterizing an intent associated with the initiation of the data exchange” is a fundamental economic practice and commercial and legal interactions. Fundamental economic practices and commercial and legal interactions fall into the category of certain methods of organizing human activity. In view of the specification, the digital content obtained and displayed include “targeted offers of incentives” (Spec. [017], see also [027], [028] and [029] “a notification that includes elements of digital content characterizing one or more additional, or alternate targeted offers or incentives associated with user 101”, [035] “when presented to user 101 by client device 102 within a digital interface, the elements of digital content identify corresponding ones of the merchant, customer-, and/or loyalty-based offers or incentives and prompt user 101 to provide additional input to client device 102 that accepts, or alternatively, declines, the corresponding ones of the merchant, customer-, and/or loyalty-based offers or incentives. For instance, merchant, customer-, and/or loyalty-based offers or incentives may include, but are not limited to, a discount on an additional purchase of a product or service at merchant 111 or another merchant or retailer having a relationship with the financial institution, an incentive to enroll in a loyalty or rewards program (e.g., one or the loyalty or rewards programs identified characterized by the data records of product database 136A) associated with merchant 111 (e.g., an additional discount on the initiated purchase transaction, a provisioning of a predetermined number of bonus points, etc.), or an offer to fund the initiated purchase transaction using a particular one of the financial products identified and characterized by the data records of product database 136A, such as an unsecured personal loan.”). Similarly, the limitations “receiving…a message associated with an exchange of data initiated between devices operable by a first counterparty and a second counterparty, the message comprising elements of message data disposed within corresponding message fields, and the elements of message data comprising a value of at least one parameter…; generating …an input dataset… that includes the at least one parameter value and the at least one element of textual content; … generating… intent data characterizing an intent associated with the initiation of the data exchange” can be performed in the human mind, or by a human using a pen and paper, as generating the input dataset is merely generating a collection of values, and receiving a message associated with an exchange of data…; and generating intent data are merely collecting information and analyzing it. Any actions that can be performed in the human mind fall into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Under Step 2A (Prong 2), the examiner contends that the claim recites a combination of additional elements including “performing operations, using the at least one processor, that apply the trained machine-learning or artificial-intelligence process to the input dataset; based on the intent data, obtaining digital content associated with the data exchange from data repository, the digital content being associated with at least one of product or service available to the second counterparty, and transmitting, across the communications network, using the at least one processor, notification data that includes the digital content to the device operable by the second counterparty, the notification data causing an application program executed at the device operable by the second counterparty….” These additional elements, considered in the context of claim 11 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of inputting data, processing data, and outputting data using a generic computer system. The communication network, processor, and trained machine-learning or artificial-intelligence process, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Further, the additional limitations of receiving/obtaining data, performing operations and transmitting data can be reasonably characterized as reciting patent-ineligible insignificant extra-solution and post-solution activities. For instance, the step of “performing operations…that apply the trained machine-learning or artificial-intelligence process to the input dataset” merely recites the application of trained machine-learning or artificial-intelligence process, using a processor, to perform the abstract operations. Further, the limitation “based on the intent data, obtaining…digital content associated with the data exchange from data repository, the digital content being associated with at least one of product or service available to the second counterparty,” 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 still, the limitation “transmitting… notification data that includes the digital content to the device operable by the second counterparty, the notification data causing an application program executed at the device” 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). In all, these recited steps merely describe an intangible property of the data that does not affect the examiner’s characterization of the additional limitations as insignificant extra-solution activities and the automation of mental tasks. The limitations of “the message comprising elements of message disposed within corresponding message fields, and the elements of message data comprising a value of at least one parameter of the data exchange and at least one element of textual content characterizing the data exchange” are recited to further narrow the scope of the abstract idea. Also, structuring of the message in accordance with a standardized data-exchange protocol” is merely describing the application of a generic data-exchange protocol to the data being transmitted. Thus, it is determined that claim 11 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Under Step 2B, it is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 11 are the generically recited “communication network,” “processor” and “machine-learning or artificial-intelligence process.” The specification 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. The specification substantiates this, for instance at paras 073, 0139, 0141-0142. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
The examiner contends that the ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188— 89 (1981).” A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.” Specifically, an improvement to an abstract idea cannot be a basis for determining that the claim recites significantly more than an abstract idea. Furthermore, relying on a “processor” to “perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OJP Techs., Inc. v. Amazon.com, Inc., 7788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, the examiner concludes that the claim does not recite additional elements that amount to significantly more than the judicial exception within the meaning of the 2019 Guidance. Note: The analysis above applies to all statutory categories of invention. As such, the independent claims otherwise styled as a computer-readable medium encoded to perform specific tasks, machine or manufacture, for example, would be subject to the same analysis. Furthermore, the limitations in the dependent claims are thus subject to the same analysis as in claim 11 and are rejected using the same rationale as in claim 11 above. More specifically, dependent claims 21, 22 and 25-28 recite additional elements, but these additional elements comprise the analyses of data, which is 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”). Lastly, claims 2, 4-8, 10, 12, 14-17, and 19 are mere data 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).
Response to Arguments
Applicant's arguments filed in the Appeal Brief have been fully considered but they are not persuasive.
In response to applicant’s arguments that the office fails to establish that applicant’s independent claims recite an abstract idea (a patent-ineligible mental process and a method of organizing human activity), the examiner disagrees. The examiner contends that the claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language “computer-implemented method, comprising: receiving…a message associated with an exchange of data initiated between devices operable by a first counterparty and a second counterparty, the message comprising elements of message data disposed within corresponding message fields, and the elements of message data comprising a value of at least one parameter of the data exchange and at least one element of textual content characterizing the data exchange” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. Similarly, the limitations “generating…an input dataset for a trained machine-learning or artificial-intelligence process that includes the at least one parameter value and the at least one element of textual content; generating…intent data characterizing an intent associated with the initiation of the data exchange” can be performed in the human mind. Any actions that can be performed in the human mind fall into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Applicant's citation of Ex Parte Desjardins is unpersuasive because the claims at issue in Ex Parte Desjardins are readily distinguishable over the instant claims. The claims in Ex Parte Desjardins are directed to a method of training a machine learning algorithm on a series of tasks. The pending claims, however, are not directed to a specific improvement to machine learning technology. Rather the machine learning module is simply being applied, using a conventional processor, to the claimed abstract steps.
In response to applicant’s argument that the independent claims provide a specific, technological improvement to an existing technology or technical field, and as such, integrate the recited abstract idea into a patent-eligible, practical application, the examiner disagrees. the examiner contends that the claim recites a combination of additional elements including “performing operations…that apply the trained machine-learning or artificial-intelligence process to the input dataset; based on the intent data, obtaining…digital content associated with the data exchange from data repository, the digital content being associated with at least one of product or service available to the second counterparty, and transmitting…notification data that includes the digital content to the device operable by the second counterparty, the notification data causing an application program executed at the device.” These additional elements, considered in the context of claim 11 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of inputting data, processing data, and outputting data using a generic computer system. The communication network, processor, and trained machine-learning or artificial-intelligence process, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Further, the additional limitations can be reasonably characterized as reciting patent-ineligible insignificant extra-solution and post-solution activities. For instance, the step of “performing operations…that apply the trained machine-learning or artificial-intelligence process to the input dataset” is an insignificant extra-solution activity because the step merely recites the application of trained machine-learning or artificial-intelligence process, using a processor, to abstract operations. Further, the limitation “based on the intent data, obtaining…digital content associated with the data exchange from data repository, the digital content being associated with at least one of product or service available to the second counterparty,” 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 still, the limitation “transmitting… notification data that includes the digital content to the device operable by the second counterparty, the notification data causing an application program executed at the device” 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). In all, these recited steps merely describe an intangible property of the data that does not affect the examiner’s characterization of the additional limitations as insignificant extra-solution activities and the automation of mental tasks. Thus, it is determined that claim 11 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.
The examiner further contends that there is a clear difference between the improvements in computer functionality, on one hand, and the use of existing computer as tools to perform a particular task, on the other; the solution addressed by the applicant’s claims is a business problem and not a technical problem. Rather than addressing a problem unique to the technology in which the solution is implemented, applicant’s claim merely automates, using generic computer technology, a business process in which profitability is increased by processing data transaction. Thus, it is determined that the claim 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.
The alleged advantages that applicant touts do not concern an improvement to computer capabilities but instead relate to an alleged improvement in computer-based process; a process in which a computer is used as a tool in its ordinary capacity which is to process data.
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.
In response to applicant’s argument that the claims amount to significantly more than any alleged 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 processor to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 11 are the generically recited “communication network,” “processor” and “machine-learning or artificial-intelligence process.” The specification 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. The specification substantiates this, for instance at paras 073, 0139, 0141-0142. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
In response to applicant’s argument that the dependent claims recite patent-eligible subject matter, the examiner disagrees. The examiner contends that dependent claims 21, 22 and 25-28 recite additional elements, but these additional elements comprise the analyses of data, which is 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”). Lastly, claims 2, 4-8, 10, 12, 14-17, and 19 are mere data 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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OJO O OYEBISI whose telephone number is (571)272-8298. The examiner can normally be reached on Monday-Friday, 9am-7pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Behncke can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OJO O OYEBISI/Primary Examiner, Art Unit 3695
Prosecution Insights