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 .
DETAILED ACTION
This communication is in response to Applicant’s amendment filed 26 May 2026. Claims 1, 8 and 15 have been amended. Claims 1, 3-8, 10-15 and 17-23 are pending. The rejection of claims 1, 3-8, 10-15 and 17-23 under 35 USC § 101 directed to non-statutory subject matter is maintained. The rejections are as stated below.
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a non-statutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
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Claims 1, 3-8, 10-15 and 17-23 are rejected on the grounds of non-statutory obviousness-type double patenting as being unpatentable over claims 1-20 of US Patent 11366884 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other because all sets of claims are directed to method and system for issuing authentication challenges based on fraud initiation requests. All limitations of the instant claims are substantially covered in claims 1-20 of US Patent 11366884 B2. The instant claims are obvious combination of these same elements present in the ‘884 patent. However, certain language has been removed from the above issued Patents. Therefore, the omission of an element with a corresponding loss of function is an obvious expedient. See In re Karlson, 136 USPQ 184 and Ex parte Rainu, 168 USPQ 375.
For these reasons, claims 1, 3-8, 10-15 and 17-23 of the instant application are not identical to claims 1-20 of US Patent 11366884 B2, but they are not patently distinct.
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, 3-8, 10-15 and 17-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims are directed to a judicial exception (abstract idea) without significantly more.
Claim 1 (exemplary) recites a series of steps for issuing authentication challenges based on fraud initiation requests.
The claim is directed to a process, which is a statutory category of invention.
The claim is then analyzed to determine whether it is directed to a judicial exception. The claim recites the limitations of receiving a provisioning request for adding a payment instrument to a wallet; initiating an authorization process for adding the payment instrument to the wallet by generating a fraud initiating request in response to receiving the provisioning request, the fraud initiating request being generated to comprise a plurality of data fields with a data label for indicating a data type for the plurality of data fields; calculating a fraud risk level for the fraud initiating request based at least in part on the data label for the plurality of data fields a velocity of receiving a plurality of additional fraud initiating requests having at least one common data attribute with the provisioning request the data label being used to identify a rule that provides an instruction for processing the plurality of data fields for calculating the fraud risk level; determining an authentication challenge type in response to the fraud risk level meeting a threshold; causing a display of an authentication challenge based at least in part on the authentication challenge type; determining to change from the first authentication challenge to a second authentication challenge based at least in part on a fraud authentication outcome failing or an error received for processing the fraud initiating request; causing a display the second authentication challenge; verifying an authentication challenge response received based at least in part on comparing the authentication challenge response to identity-based data associated with the fraud initiating request; and authorizing the provisioning request of the payment instrument based at least in part on verifying the authentication challenge response.
The claimed system simply describes series of steps for issuing authentication challenges based on fraud initiation requests. These limitations, as drafted, are processes that, under its broadest reasonable interpretation, covers performances and concepts relating to fundamental economic principles or practices that enhance customer experience with managing a financial account (see Priceplay.com, Inc. v. AOL Advert., Inc., 83 F. Supp. 3d 577, 580 (D. Del. 2015), aff'd, 627 F. App’x 925 (Fed. Cir. 2016) (Rule 36)), and, therefore, fall within the certain methods of organizing human activity category of the USPTO’s Guidance. See 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14. These limitations are directed to an abstract idea because they are managing transactions and/or activities (commercial interactions/sales transactions, financial services and/or mitigating risk) that fall within the enumerated group of “certain methods of organizing human activity” in the 2019 PEG.
Next, the claim is analyzed to determine if it is integrated into a practical application. The recited judicial exception may be integrated into a practical application by identifying whether there are any additional elements recited in the claim beyond the judicial exception and evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. The claim recites additional limitations of a computing device, a digital wallet and a client device to perform the steps. The device in the steps is recited at a high level of generality, i.e., as a generic processor performing a generic computer function of processing data. This generic processor limitation is no more than mere instructions to apply the exception using generic computer component. Merely adding generic computer components to perform abstract ideas does not integrate those ideas into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 55 (identifying “merely includ[ing] instructions to implement an abstract idea on a computer” as an example of when an abstract idea has not been integrated into a practical application). Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. 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. The claim is directed to the abstract idea.
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer (using the computer as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the computer at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application or provide an inventive concept. The step of calculating, by the computing device, a fraud risk level for the fraud initiating request based at least in part on an internet protocol address of the client device is re-evaluated here to determine if they are more than what is well-understood, routine and conventional in the field. The disclosure does not provide any indication that the use of the IP address is anything but conventional process and Burger (US 9633322 B1) at column 5, lines 9-28, Ziberberg et al. (US 9438626 B1) at column 4, line 66 thru column 5, line 15, indicate that the step of calculating, by the computing device, a fraud risk level for the fraud initiating request based at least in part on an internet protocol address of the client device is well-understood, routine and conventional in the field (as they are here). Accordingly, a conclusion that the step of calculating, by the computing device, a fraud risk level for the fraud initiating request based at least in part on an internet protocol address of the client device is well-understood, routine and conventional activity is supported under Berkheimer option 3.
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually or as an ordered combination, the additional limitations do not amount to significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea. Therefore, the claim is not patent eligible.
The analysis above applies to the statutory category of invention of claims 1, 8 and 15. Furthermore, the dependent claims 3-7, 10-14 and 17-23 do not resolve the issues raised in the independent claims.
The dependent claims do not add limitations that meaningfully limit the abstract idea. Dependent claims 3-7, 10-14 and 17-23, recite additional limitations and steps. However, as mentioned above with respect to the independent claims, the claimed limitations are no more than mere instructions to apply the exception using generic computer component. Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, the 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. The claim is directed to the abstract idea.
These claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer. The claim merely amounts to the application or instructions to apply the abstract idea on a device and is considered to amount to nothing more than requiring a generic device to merely carry out the abstract idea itself.
The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as integrating the abstract idea into a practical application or amounts to significantly more than the abstract idea itself.
Accordingly, claims 1, 3-8, 10-15 and 17-23 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Response to Arguments
Applicant’s amendments/arguments with respect to the 35 USC § 101 directed to non-statutory subject matter have been fully considered but they are not persuasive. The non-statutory double patenting rejection is maintained, since Applicant requested that the double patenting rejection be held in abeyance until the claimed invention is deemed allowable.
The proposed amendments do not overcome the 35 U.S.C. 101 rejection. Applicant amended the claims to include the above-mentioned steps. The same updated analysis based on the new 2019 Patent Eligibility Guidance (2019 PEG) applies to the newly added claimed limitations as discussed above and in the previous office action rejections.
Examiner incorporates herein the response to arguments from the previous office actions.
Applicant argues in substance that the claims integrate the abstract idea into a practical application and are directed to a technical solution to a technical problem and would amount to significantly more
The additional elements are generic recitation of one or more processors/conventional data processing (generating a labeled fraud initiating request, calculating fraud risk with IP address, velocity, rules and comparing responses to identity data). The concept is directed to the abstract idea of issuing authentication challenges based on fraud initiation requests. Conventional authentication techniques (challenge/response and switching based on failure/error). The newly added additional elements, even when limited to a particular context, do not change their character as information or data and therefore, remain within the realm of the abstract idea.
The claims here do not recite an improvement in computers. The claims do not improve the functioning of the computer or solve any technological problem. Rather, the claim simply “includes instructions to implement an abstract idea on a computer” and “does no more than generally link the use of a judicial exception to a particular technological environment or field of use.” 2019 Revised Guidance, 84 Fed. Reg. at 55. The claim uses generic computer components and generic computer functionality (the amendments to the claims further defines the challenge selection code in a conventional authentication manner). The claims merely use instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea. Here, the additional limitations do not integrate the judicial exception into a practical application.
The claims here are not directed to a specific improvement to computer functionality, nor an inventive solution to any computer specific problem/internet-centric problem. Limiting the use of an abstract idea “‘to a particular technological environment’ does not confer patent eligibility as this cannot be considered an improvement to computer or technology and so cannot be “significantly more.”
Examiner respectfully disagrees that the claims are directed to an improvement computer technology. As found by the courts “In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly . . ..” SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010); see also Content Extraction, 2013 WL 3964909, at *12 (“the mere use of a computer to more quickly and efficiently . . . accomplish a given task does not create meaningful limitation on an otherwise abstract and wide-ranging concept”).
As mentioned previously, a claim may be found to be eligible if it integrates a judicial exception into a practical application as cited by Applicant. However, examiner notes that "claiming the improved efficiency inherent with applying the abstract idea on a computer" does not provide an inventive concept (see MPEP §2106.05(f)(2).) Claiming improved data processing efficiency is inherent with applying any improvement to the judicial exception itself on a computer does not provide an inventive concept. The claims do not integrate the judicial exception into a practical application.
Applicant submits that the pending claims are similar to Example 40.
Examiner respectfully disagrees. Example 40 varies the amount of network data collected. Instead of collecting all network data, rules are set in place, so the system knows when to begin monitoring. This is because too much traffic to the network can hinder the network performance. Example 40 explains why the claim is found eligible: The claim recites the combination of additional elements of collecting at least one of network delay, packet loss, or jitter relating to the network traffic passing through the network appliance, and collecting additional NetFlow protocol data relating to the network traffic when the collected network delay, packet loss, or jitter is greater than the predefined threshold. Although each of the collecting steps analyzed individually may be viewed as mere pre- or post-solution activity, the claim as a whole is directed to a particular improvement in collecting traffic data. Specifically, the method limits collection of additional NetFlow protocol data to when the initially collected data reflects an abnormal condition, which avoids excess traffic volume on the network and hindrance of network performance. The collected data can then be used to analyze the cause of the abnormal condition. This provides a specific improvement over prior systems, resulting in improved network monitoring. The claim as a whole integrates the mental process into a practical application. Thus, the claim is eligible because it is not directed to the recited judicial exception.
In the instant case, the claims’ invocation of processors, networks, and databases does not transform the claimed subject matter into patent-eligible applications. The claims at issue do not require any nonconventional computer, network, or database components, or even a “non-conventional and non-generic arrangement of known, conventional pieces,” but merely call for performance of the claimed method “on a set of generic computer components”. Bascom, 2016 WL 3514158, at *6–7. Therefore, the arguments are not persuasive and the rejection is maintained. The claims are not patent eligible.
The claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem.
As mentioned in the previous office action, in the instant case, the amended limitations of the claims do not result in computer functionality improvement or technical/technology improvement when the underlying abstract idea is implemented using technology. The amendments to the claims only further define the data being used however, a specific abstract idea is still an abstract idea. All the features in the Applicant’s claims can at best be considered an improvement in the abstract idea. The advantages over conventional systems are directed towards improving the abstract idea. Hence, the additional elements in the claims are all generic components suitably programmed to perform their respective functions. The additional elements are recited at a high level of generality and under their broadest reasonable interpretation comprises a generic computer arrangement. The presence of a generic computer arrangement is nothing more than mere instructions to implement the abstract idea on a computer (MPEP 2106.05(f)). Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Hence, the claims as a whole are not integrated into a practical application.
The ordered combination of risk calculation, switching a first challenge to a second challenge based on failure/error, verifying and authenticating remains well-understood routine and conventional in the fraud authentication field. The claims as a whole do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are generic computer components claimed to perform their basic functions. The processor is a general-purpose processor that performs general-purpose functions. The recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer (using the processor as a tool to implement the abstract idea). Taking the additional elements individually and in combination, each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The claim does not amount to significantly more than the abstract idea itself. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply a generic recitation of a computer processor performing its generic computer functions. Accordingly, claims are ineligible.
For these reasons the rejection under 35 USC § 101 directed to non-statutory subject matter set forth in this office action is maintained.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hani Kazimi whose telephone number is (571) 272-6745. The examiner can normally be reached Monday-Friday from 8:30 AM to 5:00 PM.
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Respectfully Submitted
/HANI M KAZIMI/
Primary Examiner, Art Unit 3691
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