DETAILED ACTION
The present application, filed on 6/28/2022 is being examined under the AIA first inventor to file provisions.
The following is a FINAL Office Action in response to Applicant’s amendments filed on 1/2/2026.
The following is a non-final Office Action on the Merits in response to Applicant’s submission.
Claims 1, 9, 16 are amended
Claims 2, 5, 10-11, 17, 19, 21, 24 are cancelled
Claims 27-28 are new
Overall, Claims 1, 3-4, 6-9, 12-16, 18, 20, 22-23, 25-28 are pending and have been considered below.
Claim Rejections - 35 USC § 101
35 USC 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, 3-4, 6-9, 12-16, 18, 20, 22-23, 25-28 are rejected under 35 USC 101 because the claimed invention is not directed to patent eligible subject matter. The claimed matter is directed to a judicial exception (i.e. an abstract idea not integrated into a practical application) without significantly more.
Per Step 1 and Step 2A of the multi-step eligibility analysis, independent Claim 1, Claim 9 and Claim 16 and the therefrom dependent claims are directed respectively to a system. Thus, on its face, each such independent claim and the therefrom dependent claims are directed to a statutory category of invention.
However, independent Claim 1, is rejected under 35 U.S.C. 101 because the claim is directed to an abstract idea, a judicial exception, without reciting additional elements that integrate the judicial exception into a practical application. The claim recites: continuously monitor in real time the data associated with the transaction to determine whether the data has been updated to include a second post-transaction amount; responsive to determining the data has been updated to include the second post-transaction amount, determine whether the first and second post-transaction amounts match; responsive to determining the first and second post-transaction amounts match; confirm the transaction by transmitting a payment authorization to a merchant associated with the transaction to authorize payment of the second post-transaction amount; modify the GUI to generate a first modified GUI comprising a confirmation indication; and cause the user device to display the confirmation indication; and responsive to determining the first and second post-transaction amounts do not match, initiate in real time one or more fraud prevention actions; transmit a second notification to the merchant requesting the merchant to correct the second post-transaction amount; withhold authorization of payment of the second post-transaction amount until the second post-transaction amount is corrected by the merchant; responsive to receiving a response from the merchant indicating that the merchant has adjusted the second post-transaction amount, modify the GUI to generate a second modified GUI providing an indication that the merchant has adjusted the second post transaction-amount; and cause the user device to display the second modified GUI comprising the indication that the merchant has adjusted the second post-transaction amount.
The limitations, as drafted, constitute a process that, under its broadest reasonable interpretation, covers commercial activity, but for the recitation of generic computer components. That is, the drafted process is comparable to an advertising, marketing, sales activities or behaviors, business relationships process, i.e. a process aimed at monitoring and evaluating post-transaction adjustments (e.g. the billing operation), as well as taking action if they are fraudulent. If a claim limitation, under its broadest reasonable interpretation, covers performance of limitations of agreements in form of sales activities or behaviors, business relationships, but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity – Commercial or Legal Interactions (e.g. marketing, sales activities or behaviors, business relationships-ecommerce)” grouping of abstract ideas.
Accordingly, the claim recites an abstract idea.
Alternatively, or in addition, the limitations, as drafted, constitute a process that, under its broadest reasonable interpretation, covers performance of the limitations mentally or manually, but for the recitation of generic computer components. That is, other than reciting some computing elements, nothing in the claim element precludes the steps from practically being performed mentally or manually by a human.
For example, “continuously monitor, in real time, the data associated with the transaction to determine whether the data has been updated to include a second post-transaction amount;”, as drafted, in the context of this claim, encompasses the user manually or mentally monitoring collected data.
Further, “determine whether the first and second post-transaction amounts match”, as drafted, in the context of this claim, encompasses the user manually or mentally assessing, evaluating the collected data.
Further, “confirm the transaction by transmitting a payment authorization to the merchant to authorize payment of the second post-transaction amount”, as drafted, in the context of this claim, encompasses the user manually or mentally confirming something (e.g. a transaction took place).
Further, “modify, in real-time, the GUI to generate a first modified GUI comprising a confirmation indication that comprises a display of a visual indication that the transaction was approved proximate to a record of the transaction based on the determination that the first and second post-transaction amounts match;”, as drafted, in the context of this claim, encompasses the user manually or mentally modifying the way the confirmation is provided to others (is displayed).
Further, “cause the user device to display the first modified GUI comprising the confirmation indication”, as drafted, in the context of this claim, encompasses the user manually or mentally providing the confirmation to the others.
Further, “initiate, in real time, one or more fraud prevention actions”, as drafted, in the context of this claim, encompasses the user manually or mentally preventing the fraud (e.g., by sounding an alarm).
Further, “transmit a second notification to the merchant requesting the merchant to correct the second post-transaction amount”, as drafted, in the context of this claim, encompasses the user manually or mentally transmitting a notification.
Further, “transmit a third notification to the merchant requesting the merchant to correct the second post-transaction amount”, as drafted, in the context of this claim, encompasses the user manually or mentally transmitting a notification.
Further, “withhold authorization of payment of the second post-transaction amount until the second post-transaction amount is corrected by the merchant”, as drafted, in the context of this claim, encompasses the user manually or mentally not granting payment authorization.
Further, “responsive to receiving a response from the merchant indicating that the merchant has adjusted the second post-transaction amount, modify the GUI to generate a second modified GUI providing an indication that the merchant has adjusted the second post-transaction amount”, as drafted, in the context of this claim, encompasses the user manually or mentally making the required modification.
Finally, “cause the user device to display the second modified GUI comprising the indication that the merchant has adjusted the second post-transaction amount”, as drafted, in the context of this claim, encompasses the user manually or mentally providing the merchant with the transaction amount.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, but for the recitation of generic computer components, then it falls within the “Mental Processes – Concepts Performed in the Human Mind (e.g. observation, evaluation, judgement, opinion)” grouping of abstract ideas.
Accordingly, the claim recites an abstract idea.
This abstract idea is not integrated into a practical application. In particular, stripped of those claim elements that are directed to an abstract idea, (A) remaining elements of the independent claims are directed to: receive data associated with a transaction conducted by a user; determine, using a first machine learning model (MLM) and based on one or more factors, whether the transaction is indicative of a post-transaction event by determining that the transaction is of a type that typically includes some form of post-transaction adjustment; responsive to determining the transaction is indicative of the post-transaction event, cause a user device associated with the user to display a first notification, via a graphical user interface (GUI), to prompt the user to confirm that the post-transaction event occurred and to enter a first post-transaction amount associated with the post-transaction event; receive, from the user via the GUI, a confirmation that the post-transaction event occurred and the first post-transaction amount.
When considered individually, these additional claim elements represent receipt, transmission and general computation claim elements that serve merely to implement the abstract idea using computing components performing computer functions (adding the words “apply it” or an equivalent), or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)) It is readily apparent that the claim elements are not directed to any specific improvements of the claims.
(B) Additional remaining claim elements are: the type of transaction. While these descriptive elements may provide further helpful context for the claimed invention, they do not serve to integrate the abstract idea into a practical application.
(C) Finally, recited computing elements, i.e. processor; memory are recited at a high-level of generality, i.e. as generic computing elements performing generic computer functions, like obtaining data, interpreting the obtained data and providing results, such that they amount to no more than mere instructions to apply the exception using generic computer components.
Accordingly, these additional claim elements do not integrate the abstract idea into a practical application, because: (1) they do not effect improvements to the functioning of a computer, or to any other technology or technical field (see MPEP 2106.05 (a)); (2) they do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or a medical condition (see the Vanda memo); (3) they do not apply the abstract idea with, or by use of, a particular machine (see MPEP 2106.05 (b)); (4) they do not effect a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05 (c)); (5) they do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the identified abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designated to monopolize the exception (see MPEP 2106.05 (e) and the Vanda memo). Therefore, per Step 2A, Prong Two, the claim is directed to an abstract idea not integrated into a practical application.
(A) Step 2B of the eligibility analysis for the independent claims concludes that the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Stripped of those claim elements that are directed to an abstract idea, not integrated into a practical application, remaining elements of the independent claims are directed to: receive data associated with a transaction conducted by a user; determine, using a first machine learning model (MLM) and based on one or more factors, whether the transaction is indicative of a post-transaction event by determining that the transaction is of a type that typically includes some form of post-transaction adjustment; responsive to determining the transaction is indicative of the post-transaction event, cause a user device associated with the user to display a first notification, via a graphical user interface (GUI), to prompt the user to confirm that the post-transaction event occurred and to enter a first post-transaction amount associated with the post-transaction event; receive, from the user via the GUI, a confirmation that the post-transaction event occurred and the first post-transaction amount.
When considered individually, these additional claim elements represent receipt, transmission and general computation claim elements that serve merely to implement the abstract idea using computing components performing computer functions (adding the words “apply it” or an equivalent), or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)) It is readily apparent that the claim elements are not directed to any specific improvements of the claims.
(B) Furthermore, additional remaining elements of the independent claims contain descriptive limitations explaining the nature, structure and/or content of: the type of transaction. However, these claim elements do not require any steps or functions to be performed and thus do not involve the use of any computing functions. While these descriptive elements may provide further helpful context for the claimed invention, these elements do not serve to confer subject matter eligibility to the claimed invention since their individual and combined significance is still not heavier than the abstract concepts at the core of the claimed invention.
(C) Finally, the recited computing elements of the independent claims are: processor; memory. When considered individually, these additional claim elements serve merely to implement the abstract idea using computer components performing computer functions. They do not constitute “Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field”. (MPEP 2106.05(a)) It is readily apparent that the claim elements are not directed to any specific improvements of any of these areas.
Independent Claim 9, is rejected under 35 U.S.C. 101 because the claim is directed to an abstract idea, a judicial exception, without reciting additional elements that integrate the judicial exception into a practical application. The claim recites: continuously monitor in real time the data associated with the transaction to determine whether the data has been updated to include a second post-transaction amount; responsive to determining the data has been updated to include the second post- transaction amount, determine whether the second post-transaction amount matches the first post-transaction amount within a predetermined threshold; responsive to determining the second post-transaction amount matches the first post-transaction amount within the predetermined threshold: confirm the transaction by transmitting a payment authorization to a merchant associated with the transaction to authorize payment of the second post-transaction amount; modify the GUI to generate a first modified GUI comprising a confirmation indication; cause the user device to display the confirmation indication; responsive to determining the second post-transaction amount does not match the first post-transaction amount within the predetermined threshold, cause the user device associated with the user to display a second notification, via the GUI, to prompt the user to confirm the second post-transaction amount; responsive to receiving, from the user via the GU, a second indication that the second post-transaction amount is incorrect, initiate in real time one or more fraud prevention actions comprising at least: transmit a third notification to the merchant requesting the merchant to correct the second post-transaction amount; and withhold authorization of payment of the second post-transaction amount until the second post-transaction amount is corrected by the merchant; responsive to receiving a response from the merchant indicating that the merchant has adjusted the second post-transaction amount, modify the GUI to generate a second modified GUI providing an indication that the merchant has adjusted the second post transaction-amount; and cause the user device to display the second modified GUI comprising the indication that the merchant has adjusted the second post-transaction amount.
Therefore, the limitations, as drafted, constitute a process that, under its broadest reasonable interpretation, covers commercial activity, but for the recitation of generic computer components. That is, the drafted process is comparable to an advertising, marketing, sales activities or behaviors, business relationships process, i.e. a process aimed at monitoring and evaluating post-transaction adjustments (e.g. the billing operation), as well as taking action if they are fraudulent. If a claim limitation, under its broadest reasonable interpretation, covers performance of limitations of agreements in form of contracts, legal obligations, advertising, marketing, sales activities or behaviors, business relationships, but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity – Commercial or Legal Interactions (e.g. marketing, sales activities or behaviors, business relationships-ecommerce)” grouping of abstract ideas.
Accordingly, the claim recites an abstract idea.
Alternatively, or in addition, the limitations, as drafted, constitute a process that, under its broadest reasonable interpretation, covers performance of the limitations mentally or manually, but for the recitation of generic computer components. That is, other than reciting some computing elements, nothing in the claim element precludes the steps from practically being performed mentally or manually by a human.
For example, “monitor in real time the data associated with the transaction to determine whether the data has been updated to include a second post-transaction amount”, as drafted, in the context of this claim, encompasses the user manually or mentally monitoring collected data.
Further, “determine whether the second post-transaction amount matches the first post-transaction amount within a predetermined threshold”, as drafted, in the context of this claim, encompasses the user manually or mentally assessing, evaluating the collected data.
Further, “confirm the transaction by transmitting a payment authorization to the merchant to authorize payment of the second post-transaction amount”, as drafted, in the context of this claim, encompasses the user manually or mentally confirming something (e.g. a transaction took place).
Further, “modify, in real-time, the GUI to generate a first modified GUI comprising a confirmation indication that comprises a display of a visual indication that the transaction was approved proximate to a record of the transaction based on the determination that the first and second post-transaction amounts match within the predetermined threshold”, as drafted, in the context of this claim, encompasses the user manually or mentally modifying the way the confirmation is provided to others (is displayed).
Further, “cause the user device to display the first modified GUI comprising the confirmation indication”, as drafted, in the context of this claim, encompasses the user manually or mentally providing the confirmation to the others.
Further, “cause the user device associated with the user to display a second notification”, as drafted, in the context of this claim, encompasses the user manually or mentally providing a notification to the others.
Further, “responsive to receiving, from the user via the GU, a second indication that the second post-transaction amount is incorrect, initiate in real time one or more fraud prevention actions comprising at least: transmit a third notification to the merchant requesting the merchant to correct the second post-transaction amount”, as drafted, in the context of this claim, encompasses the user manually or mentally preventing the fraud (e.g., by sounding an alarm).
Further, “withhold authorization of payment of the second post-transaction amount until the second post-transaction amount is corrected by the merchant.”, as drafted, in the context of this claim, encompasses the user manually or mentally not granting payment authorization.
Further, “responsive to receiving a response from the merchant indicating that the merchant has adjusted the second post-transaction amount, modify the GUI to generate a second modified GUI providing an indication that the merchant has adjusted the second post-transaction amount”, as drafted, in the context of this claim, encompasses the user manually or mentally making the required modification.
Finally, “cause the user device to display the second modified GUI comprising the indication that the merchant has adjusted the second post-transaction amount”, as drafted, in the context of this claim, encompasses the user manually or mentally providing the merchant with the transaction amount.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, but for the recitation of generic computer components, then it falls within the “Mental Processes – Concepts Performed in the Human Mind (e.g., observation, evaluation, judgement, opinion)” grouping of abstract ideas.
Accordingly, the claim recites an abstract idea.
This abstract idea is not integrated into a practical application. In particular, stripped of those claim elements that are directed to an abstract idea, (A) remaining elements of the independent claims are directed to: receive data associated with a transaction conducted by a user; determine, using a first machine learning model (MLM) and based on one or more factors, whether the transaction is indicative of a post-transaction event by determining that the transaction is of a type that typically includes some form of post-transaction adjustment; responsive to determining the transaction is indicative of the post-transaction event, cause a user device associated with the user to display a first notification, via a graphical user interface (GUI), to prompt the user to confirm the post-transaction event occurred; receive, from the user via the GUI, a confirmation that the post-transaction event occurred.
When considered individually, these additional claim elements represent receipt, transmission and general computation claim elements that serve merely to implement the abstract idea using computing components performing computer functions (adding the words “apply it” or an equivalent), or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)) It is readily apparent that the claim elements are not directed to any specific improvements of the claims.
(B) Additional remaining claim elements are: the type of transaction. While these descriptive elements may provide further helpful context for the claimed invention, they do not serve to integrate the abstract idea into a practical application.
(C) Finally, recited computing elements, i.e. processor; memory are recited at a high-level of generality, i.e. as generic computing elements performing generic computer functions, like obtaining data, interpreting the obtained data and providing results, such that they amount to no more than mere instructions to apply the exception using generic computer components.
Accordingly, these additional claim elements do not integrate the abstract idea into a practical application, because: (1) they do not effect improvements to the functioning of a computer, or to any other technology or technical field (see MPEP 2106.05 (a)); (2) they do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or a medical condition (see the Vanda memo); (3) they do not apply the abstract idea with, or by use of, a particular machine (see MPEP 2106.05 (b)); (4) they do not effect a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05 (c)); (5) they do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the identified abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designated to monopolize the exception (see MPEP 2106.05 (e) and the Vanda memo). Therefore, per Step 2A, Prong Two, the claim is directed to an abstract idea not integrated into a practical application.
(A) Step 2B of the eligibility analysis for the independent claims concludes that the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Stripped of those claim elements that are directed to an abstract idea, not integrated into a practical application, remaining elements of the independent claims are directed to: receive data associated with a transaction conducted by a user; determine, using a first machine learning model (MLM) and based on one or more factors, whether the transaction is indicative of a post-transaction event by determining that the transaction is of a type that typically includes some form of post-transaction adjustment; responsive to determining the transaction is indicative of the post-transaction event, cause a user device associated with the user to display a first notification, via a graphical user interface (GUI), to prompt the user to confirm the post-transaction event occurred; receive, from the user via the GUI, a confirmation that the post-transaction event occurred; responsive to receiving the confirmation that the post-transaction event occurred.
When considered individually, these additional claim elements represent receipt, transmission and general computation claim elements that serve merely to implement the abstract idea using computing components performing computer functions (adding the words “apply it” or an equivalent), or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)) It is readily apparent that the claim elements are not directed to any specific improvements of the claims.
(B) Furthermore, additional remaining elements of the independent claims contain descriptive limitations explaining the nature, structure and/or content of: the type of transaction. However, these claim elements do not require any steps or functions to be performed and thus do not involve the use of any computing functions. While these descriptive elements may provide further helpful context for the claimed invention, these elements do not serve to confer subject matter eligibility to the claimed invention since their individual and combined significance is still not heavier than the abstract concepts at the core of the claimed invention.
(C) Finally, the recited computing elements of the independent claims are: processor; memory. When considered individually, these additional claim elements serve merely to implement the abstract idea using computer components performing computer functions. They do not constitute “Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field”. (MPEP 2106.05(a)) It is readily apparent that the claim elements are not directed to any specific improvements of any of these areas.
Independent Claim 16, is rejected under 35 U.S.C. 101 because the claim is directed to an abstract idea, a judicial exception, without reciting additional elements that integrate the judicial exception into a practical application. The claim recites: responsive to receiving the confirmation that the post-transaction event occurred, determine, using a second MLM and based on the one or more factors, a first post-transaction amount associated with the post-transaction event; monitor in real time the data associated with the transaction to determine whether the data has been updated to include a second post-transaction amount; responsive to determining the data has been updated to include the second post-transaction amount, cause the user device associated with the user to display a second notification, via the GUI, to prompt the user to confirm the second post-transaction amount; receive, from the user via the GUI, a first indication that the second post- transaction amount is correct; responsive to receiving the first indication: confirm the transaction by transmitting a payment authorization to the merchant to authorize payment of the second post-transaction amount; modify the GUI to generate a first modified GUI comprising a confirmation indication; and cause the user device to display the confirmation indication; receive, from the user via the GUI, a second indication that the second post- transaction amount is incorrect; and responsive to receiving the second indication, initiate in real time one or more fraud prevention actions; transmit a third notification to the merchant requesting the merchant to correct the second post-transaction amount; withhold authorization of payment of the second post-transaction amount until the second post-transaction amount is corrected by the merchant; responsive to receiving a response from the merchant indicating that the merchant has adjusted the second post-transaction amount, modify the GUI to generate a second modified GUI providing an indication that the merchant has adjusted the second post transaction-amount; and cause the user device to display the second modified GUI comprising the indication that the merchant has adjusted the second post-transaction amount.
Alternatively, or in addition, the limitations, as drafted, constitute a process that, under its broadest reasonable interpretation, covers commercial activity, but for the recitation of generic computer components. That is, the drafted process is comparable to an advertising, marketing, sales activities or behaviors, business relationships process, i.e. a process aimed at monitoring and evaluating post-transaction adjustments (e.g. the billing operation), as well as taking action if they are fraudulent. If a claim limitation, under its broadest reasonable interpretation, covers performance of limitations of agreements in form of contracts, legal obligations, advertising, marketing, sales activities or behaviors, business relationships, but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity – Commercial or Legal Interactions (e.g. marketing, sales activities or behaviors, business relationships-ecommerce)” grouping of abstract ideas.
Accordingly, the claim recites an abstract idea.
Alternatively, or in addition, the limitations, as drafted, constitute a process that, under its broadest reasonable interpretation, covers performance of the limitations mentally or manually, but for the recitation of generic computer components. That is, other than reciting some computing elements, nothing in the claim element precludes the steps from practically being performed mentally or manually by a human.
The limitations, as drafted, constitute a process that, under its broadest reasonable interpretation, covers performance of the limitations mentally or manually, but for the recitation of generic computer components. That is, other than reciting some computing elements, nothing in the claim element precludes the steps from practically being performed mentally or manually by a human.
For example, “responsive to receiving the confirmation that the post-transaction event occurred, determine, using a second MLM and based on the one or more factors, a first post- transaction amount associated with the post-transaction event”, as drafted, in the context of this claim, encompasses the user manually or mentally making a determination.
Further, “monitor in real time the data associated with the transaction to determine whether the data has been updated to include a second post-transaction amount”, as drafted, in the context of this claim, encompasses the user manually or mentally monitoring collected data.
Further, “cause the user device associated with the user to display a second notification”, as drafted, in the context of this claim, encompasses the user manually or mentally providing a notification (be it the second notification).
Further, “receive, from the user via the GUI, a first indication that the second post- transaction amount is correct”, as drafted, in the context of this claim, encompasses the user manually or mentally receiving verbally or in writing a notification.
Further, “confirm the transaction by transmitting a payment authorization to the merchant to authorize payment of the second post-transaction amount”, as drafted, in the context of this claim, encompasses the user manually or mentally confirming something (e.g. a transaction took place).
Further, “modify, in real time, the GUI to generate a first modified GUI comprising a confirmation indication that comprises a display of a visual indication that the transaction was approved proximate to a record of the transaction”, as drafted, in the context of this claim, encompasses the user manually or mentally modifying the way the confirmation is provided to others (is displayed).
Further, “cause the user device to display the first modified GUI comprising the confirmation indication”, as drafted, in the context of this claim, encompasses the user manually or mentally providing the confirmation to the others.
Further, “receive, from the user via the GUI, a second indication that the second post- transaction amount is incorrect”, as drafted, in the context of this claim, encompasses the user manually or mentally receiving verbally or in writing a notification.
Further, “initiate in real time one or more fraud prevention actions”, as drafted, in the context of this claim, encompasses the user manually or mentally preventing the fraud (e.g. by sounding an alarm).
Further, “transmit a third notification to the merchant requesting the merchant to correct the second post-transaction amount”, as drafted, in the context of this claim, encompasses the user manually or mentally transmitting a note.
Further, “withhold authorization of payment of the second post-transaction amount until the second post-transaction amount is corrected by the merchant”, as drafted, in the context of this claim, encompasses the user manually or mentally not granting payment authorization.
Further, “responsive to receiving a response from the merchant indicating that the merchant has adjusted the second post-transaction amount, modify the GUI to generate a second modified GUI providing an indication that the merchant has adjusted the second post-transaction amount”, as drafted, in the context of this claim, encompasses the user manually or mentally making the required modification.
Finally, “cause the user device to display the second modified GUI comprising the indication that the merchant has adjusted the second post-transaction amount”, as drafted, in the context of this claim, encompasses the user manually or mentally providing the merchant with the transaction amount.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, but for the recitation of generic computer components, then it falls within the “Mental Processes – Concepts Performed in the Human Mind (e.g. observation, evaluation, judgement, opinion)” grouping of abstract ideas.
Accordingly, the claim recites an abstract idea.
This abstract idea is not integrated into a practical application. In particular, stripped of those claim elements that are directed to an abstract idea, (A) remaining elements of the independent claims are directed to: receive data associated with a transaction conducted by a user; determine, using a first machine learning model (MLM) and based on one or more factors, that the transaction is indicative of a post-transaction event by determining that the transaction is of a type that typically includes some form of post-transaction adjustment; responsive to determining the transaction is indicative of the post-transaction event, cause a user device associated with the user to display a first notification, via a graphical user interface (GUI), to prompt the user to confirm the post-transaction event occurred; receive, from the user via the GUI, a confirmation that the post-transaction event occurred.
When considered individually, these additional claim elements represent receipt, transmission and general computation claim elements that serve merely to implement the abstract idea using computing components performing computer functions (adding the words “apply it” or an equivalent), or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)) It is readily apparent that the claim elements are not directed to any specific improvements of the claims.
(B) Additional remaining claim elements are: the type of transaction; the type of data. While these descriptive elements may provide further helpful context for the claimed invention, they do not serve to integrate the abstract idea into a practical application.
(C) Finally, recited computing elements, i.e. processor; memory are recited at a high-level of generality, i.e. as generic computing elements performing generic computer functions, like obtaining data, interpreting the obtained data and providing results, such that they amount to no more than mere instructions to apply the exception using generic computer components.
Accordingly, these additional claim elements do not integrate the abstract idea into a practical application, because: (1) they do not effect improvements to the functioning of a computer, or to any other technology or technical field (see MPEP 2106.05 (a)); (2) they do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or a medical condition (see the Vanda memo); (3) they do not apply the abstract idea with, or by use of, a particular machine (see MPEP 2106.05 (b)); (4) they do not effect a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05 (c)); (5) they do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the identified abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designated to monopolize the exception (see MPEP 2106.05 (e) and the Vanda memo). Therefore, per Step 2A, Prong Two, the claim is directed to an abstract idea not integrated into a practical application.
(A) Step 2B of the eligibility analysis for the independent claims concludes that the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Stripped of those claim elements that are directed to an abstract idea, not integrated into a practical application, remaining elements of the independent claims are directed to: receive data associated with a transaction conducted by a user; determine, using a first machine learning model (MLM) and based on one or more factors, that the transaction is indicative of a post-transaction event by determining that the transaction is of a type that typically includes some form of post-transaction adjustment; responsive to determining the transaction is indicative of the post-transaction event, cause a user device associated with the user to display a first notification, via a graphical user interface (GUI), to prompt the user to confirm the post-transaction event occurred; receive, from the user via the GUI, a confirmation that the post-transaction event occurred.
When considered individually, these additional claim elements represent receipt, transmission and general computation claim elements that serve merely to implement the abstract idea using computing components performing computer functions (adding the words “apply it” or an equivalent), or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)) It is readily apparent that the claim elements are not directed to any specific improvements of the claims.
(B) Furthermore, additional remaining elements of the independent claims contain descriptive limitations explaining the nature, structure and/or content of: the type of transaction; the type of data. However, these claim elements do not require any steps or functions to be performed and thus do not involve the use of any computing functions. While these descriptive elements may provide further helpful context for the claimed invention, these elements do not serve to confer subject matter eligibility to the claimed invention since their individual and combined significance is still not heavier than the abstract concepts at the core of the claimed invention.
(C) Finally, the recited computing elements of the independent claims are: processor; memory. When considered individually, these additional claim elements serve merely to implement the abstract idea using computer components performing computer functions. They do not constitute “Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field”. (MPEP 2106.05(a)) It is readily apparent that the claim elements are not directed to any specific improvements of any of these areas.
When the independent claims are considered as a whole, as a combination, the claim elements noted above do not amount to significantly more, to any more than they amount to individually. The operations appear to merely apply the abstract concept to a technical environment in a very general sense – i.e. a computer receives information from another computer, processes that information and then sends a response based on processing results. The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified as an abstract idea. Therefore, it is concluded that the elements of the independent claims are directed to one or more abstract ideas and do not amount to significantly more. (MPEP 2106.05)
Further, Step 2B of the analysis takes into consideration all dependent claims as well, both individually and as a whole, as a combination.
Dependent Claim 3 (which is repeated in Claims 12) is not directed to any additional abstract ideas, but is directed to additional claim elements such as to: cause the user device associated with the user to display a second notification, via the GUI, to request the user confirm the second post-transaction amount; receive, from the user via the GUI, an indication that the second post-transaction amount is incorrect; modify the GUI to generate a second modified GUI comprising an incorrect confirmation indication; and cause the user device to display the incorrect confirmation indication associated with the first and second post-transaction amounts.
The limitations have been analyzed as part of the claim 16 Step 2A Prong One analysis and found to be part of the imitations directed to an abstract idea.
Dependent Claim 4 (which is repeated in Claims 13, 18) is not directed to any additional abstract ideas, but is directed to additional claim elements such as to: transmitting a second notification to an entity associated with the transaction; and causing the user device associated with the user to display a third notification, via the GUI, to request whether the user would like to dispute the transaction.
When considered individually, these additional claim elements are comparable to “receiving or transmitting data over a network, e.g., using the Internet to gather data”, which has been recognized by a controlling court as "well-understood, routine and conventional computing functions" when claimed generically as they are in these dependent claims. (MPEP 2106.05(d) II) It is readily apparent that the claim elements are not directed to any specific improvements of the claims.
Dependent Claim 14 is not directed to any additional abstract ideas, but is directed to additional claim elements such as to: enable the entity to adjust the second post-transaction amount.
When considered individually, these additional claim elements represent “Insignificant Extra-Solution (Pre-Solution and/or Post-Solution) Activity”, i.e. activities incidental to the primary process or product that are merely a nominal or tangential addition to the claims. Specifically, the limitations are considered pre-solution activity because they are mere gathering or pre-processing data/information in conjunction with the abstract idea. (MPEP 2106.05(g)) It is readily apparent that the claim elements are not directed to any specific improvements of the claims.
When considered individually, these additional claim elements are comparable to “receiving or transmitting data over a network, e.g., using the Internet to gather data”, which has been recognized by a controlling court as "well-understood, routine and conventional computing functions" when claimed generically as they are in these dependent claims. (MPEP 2106.05(d) II) It is readily apparent that the claim elements are not directed to any specific improvements of the claims.
Dependent Claim 6 (which is repeated in Claims 15, 20) is not directed to any additional abstract ideas, but is directed to additional claim elements such as to: receive a response to the third notification, the response indicating the user would like to dispute the transaction; and modify the GUI to generate a second modified GUI comprising a disputed indication; and cause the user device to display the disputed indication.
When considered individually, these additional claim elements represent receipt, transmission and general computation claim elements that serve merely to implement the abstract idea using computing components performing computer functions (adding the words “apply it” or an equivalent), or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)) It is readily apparent that the claim elements are not directed to any specific improvements of the claims.
Dependent Claim 7 is not directed to any additional abstract ideas, but is directed to additional claim elements such as to: determine, using a second MLM and based on the one or more factors, whether the first post-transaction amount exceeds a predetermined threshold; and cause the user device associated with the user to display a second notification, via the GUI, indicating the first post-transaction amount may be higher than the user desires.
When considered individually, these additional claim elements represent receipt, transmission and general computation claim elements that serve merely to implement the abstract idea using computing components performing computer functions (adding the words “apply it” or an equivalent), or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)) It is readily apparent that the claim elements are not directed to any specific improvements of the claims.
Dependent Claim 8 is not directed to any additional abstract ideas, but is directed to additional claim elements such as to: receive, from the user via the GUI, a request to monitor the transaction.
When considered individually, the additional claim elements “receive, from the user via the GUI, a request to monitor the transaction” are comparable to “receiving or transmitting data over a network, e.g., using the Internet to gather data”, which has been recognized by a controlling court as "well-understood, routine and conventional computing functions" when claimed generically as they are in these dependent claims. (MPEP 2106.05(d) II) It is readily apparent that the claim elements are not directed to any specific improvements of the claims.
Dependent Claim 22 is not directed to any additional abstract ideas, but is directed to additional claim elements such as to: changing a first amount associated with the second post-transaction amount to be equal to a second amount associated with the first post-transaction amount.
When considered individually, these additional claim elements represent receipt, transmission and general computation claim elements that serve merely to implement the abstract idea using computing components performing computer functions (adding the words “apply it” or an equivalent), or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)) It is readily apparent that the claim elements are not directed to any specific improvements of the claims.
Dependent Claim 23 is not directed to any additional abstract ideas, but is directed to additional claim elements such as to: make a prediction based on the user's transaction history at a particular merchant at which the transaction was conducted and the user's geographic location.
When considered individually, these additional claim elements represent receipt, transmission and general computation claim elements that serve merely to implement the abstract idea using computing components performing computer functions (adding the words “apply it” or an equivalent), or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)) It is readily apparent that the claim elements are not directed to any specific improvements of the claims.
Dependent Claim 26 is not directed to any additional abstract ideas, but is directed to additional claim elements such as to: determine, based on the one or more factors, whether the transaction was likely for a purchase at a restaurant.
When considered individually, these additional claim elements represent receipt, transmission and general computation claim elements that serve merely to implement the abstract idea using computing components performing computer functions (adding the words “apply it” or an equivalent), or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)) It is readily apparent that the claim elements are not directed to any specific improvements of the claims.
Dependent Claims 25, 27-28 are not directed to any abstract ideas and are not directed to any additional non-abstract claim elements. Rather, these recited claims provide further descriptive limitations of elements, such as describing the nature, structure and/or content of: the visual indication of the approval; a, adjustment for the visual indication; the adjustment for the visual indication. However, these elements do not require any steps or functions to be performed and thus do not involve the use of any computing functions. While these descriptive elements may provide further helpful context for the claimed invention, these elements do not serve to confer subject matter eligibility to the invention since their individual and combined significance is still not heavier than the abstract concepts at the core of the claimed invention.
Moreover, the claims in the instant application do not constitute significantly more also because the claims or claim elements only serve to implement the abstract idea using computer components to perform computing functions (Enfish, see MPEP 2106.05(a)). Specifically, the computing system encompasses general purpose hardware and software modules, as disclosed in the application specification in fig3 and [0044]-[0055], including among others: processor; i/o; memory.
When the dependent claims are considered as a whole, as a combination, the claim elements noted above appear to merely apply the abstract concept to a technical environment in a very general sense – i.e. a computer receives information from another computer, processes that information and then sends a response based on processing results. The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified in the independent claims as an abstract idea. The fact that the computing devices are facilitating the abstract concept is not enough to confer statutory subject matter eligibility. In sum, the additional elements do not serve to confer subject matter eligibility to the invention since their individual and combined significance is still not heavier than the abstract concepts at the core of the claimed invention. Therefore, it is concluded that the dependent claims of the instant application do not amount to significantly more either. (see MPEP 2106.05)
In sum, Claims 1, 3-4, 6-9, 12-16, 18, 20, 22-23, 25-28 are rejected under 35 USC 101 as being directed to non-statutory subject matter.
The prior art made of record and not relied upon which, however, is considered pertinent to applicant's disclosure:
US 20220188790 A1 2022-06-16 21 Gordon; Benjamin et al. POINT-OF-SALE TERMINAL FOR TRANSACTION HANDOFF AND COMPLETION EMPLOYING EPHEMERAL TOKEN A method for handoff includes: scanning an ephemeral token displayed on a guest device, where a guest has previously registered a payment instrument with a server, and associated the payment instrument with a plurality of ephemeral tokens, and the server has stored a payment token that associates the plurality of ephemeral tokens with the payment instrument in a database record along with a notification identifier, and where the guest device has received the ephemeral token; transmitting the ephemeral token to the server; simultaneously displaying details for a transaction, where the server has accessed the notification identifier to transmit a push notification to the guest device, and where the guest device is executing a proprietary application that allows for simultaneously displaying details for the transaction; and receiving notification from the server that the transaction is complete, where transaction completion data was entered via the guest device and transmitted to the server.
US 20200334649 A1 2020-10-22 28 Veznedaroglu; Erol SYSTEM AND METHOD FOR PAYING AND RECEIVING GRATUITIES A method, system and apparatus provide customizable management for processing electronic payment between parties including gratuities. In particular, the method, system and apparatus provide for communicating financial transaction data across diverse entities without requiring geographical limitations quickly and efficiently using electronic devices while maintaining unique identifiers at each entity for protecting the identity of any particular person. The present invention enables multiple parties to share gratuities and other payments in a non-cash, non-contact, manner in which a user can allocate according to settings or provide payments through payroll systems to distribute gratuity proceeds.
US 20220188791 A1 2022-06-16 20 Gordon; Benjamin et al. SERVER FOR TRANSACTION HANDOFF AND COMPLETION EMPLOYING EPHEMERAL TOKEN A server includes: a database that registers a payment instrument, associates the instrument with ephemeral tokens, and stores a payment token that associates the ephemeral tokens with the instrument in a record along with an identifier for a device; a communication circuit, that receives transaction details from a POS terminal, transmits one of the ephemeral tokens to the device, and receives the one of the ephemeral tokens from the POS terminal; and a code segment, that employs the payment token to access the identifier in the record, directs the communication circuit to send a push notification, and, upon execution of the proprietary application on the device, directs the communication circuit to transmit transaction details to the POS terminal and the device, receives transaction data from the device, completes the transaction, and directs the communication circuit to notify the POS terminal that the transaction is complete.
US 20230259948 A1 2023-08-17 33 Paulson; Catherine et al. GENERATING A MULTI-TRANSACTION DISPUTE PACKAGE The present disclosure relates to systems, non-transitory computer-readable media, and methods for generating a multi-transaction dispute package. For example, in one or more embodiments, the disclosed system receives a dispute request with an initial disputed transaction and identifies other potential transactions based on dispute classifications. In one or more embodiments, the disclosed system provides the identified potential transactions that are potentially related to the initial disputed transaction for selection. In response to receiving a selection from the user, the disclosed system generates and processes a multi-transaction dispute package.
US 20150356547 A1 2015-12-10 18 Abed; Lutfi SYSTEM AND METHOD FOR PROVIDING TIPPING AND REVIEW SERVICES VIA A MOBILE DEVICE - Embodiments of the present invention are generally directed towards the provision of tipping and reviews via mobile computing devices. Specifically, embodiments of the present invention are directed to providing systems and methods for the provision of tips to service providers through an instant and easy process whereby a tipper can utilize their mobile computing device to quickly identify the individual to be tipped and process a tip transaction via the same mobile computing device. Further embodiments of the present invention allow for the tipper to provide reviews and/or ratings of the tipped individual which may be utilized by other components of the system for a variety of purposes.
US 11030535 B1 2021-06-08 23 Arora; Siddharth et al. Machine learned merchant ratings - Merchant quality may be inferred through machine learning techniques. A customer satisfaction classifier may receive data associated with a customer's engagement with a merchant, and may apply a machine learning model to the received data in order to infer a satisfaction of the customer with the merchant. The inferred satisfaction may be used to determine a rating of the merchant that is imputed to the customer.
Response to Amendments/Arguments
Applicant’s submitted remarks and arguments have been fully considered.
Applicant disagrees with the Office Action conclusions and asserts that the presented claims fully comply with the requirements of 35 U.S.C. § 101 regrading judicial exceptions.
Examiner respectfully disagrees.
With respect to Applicant’s Remarks as to the claims being rejected under 35 USC § 101.
Applicant submits:
a. The pending claims are not directed to an abstract idea.
b. The identified abstract idea is integrated into a practical application.
c. The pending claims amount to significantly more.
Furthermore, Applicant asserts that the Office has failed to meet its burden to identify the abstract idea and to establish that the identified abstract idea is not integrated into a practical application and that the pending claims do not amount to significantly more.
Examiner responds – The arguments have been considered in light of Applicants’ amendments to the claims. The arguments ARE NOT PERSUASIVE. Therefore, the rejection is maintained.
The pending claims, as a whole, are directed to an abstract idea not integrated into a practical application. This is because (1) they do not effect improvements to the functioning of a computer, or to any other technology or technical field (see MPEP 2106.05 (a)); (2) they do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or a medical condition (see the Vanda memo); (3) they do not apply the abstract idea with, or by use of, a particular machine (see MPEP 2106.05 (b)); (4) they do not effect a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05 (c)); (5) they do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the identified abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designated to monopolize the exception (see MPEP 2106.05 (e) and the Vanda memo).
In addition, the pending claims do not amount to significantly more than the abstract idea itself.
As such, the pending claims, when considered as a whole, are directed to an abstract idea not integrated into a practical application and not amounting to significantly more.
More specific:
Applicant submits “This is an example of a practical application.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
First, MPEP 2106.05(a) discloses that the additional claim elements bring about “improvements to the functioning of a computer, or any other technology or technical field.” Monitoring commercial post-transaction adjustments is a pure BUSINESS problem, rather than a technology or technical field problem. As such, the limitations which have not been deemed as being part of the identified abstract idea, i.e., the “additional limitations,” do not integrate the identified abstract idea into a practical application, as disclosed by MPEP 2106.05(a).
Second, MPEP 2106.04(d)(1) discloses:
An important consideration to evaluate when determining whether the claim as a whole integrates a judicial exception into a practical application is whether the claimed invention improves the functioning of a computer or other technology .... In short, first the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art .... Second, if the specification sets forth an improvement in technology. the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. (Emphasis added)
That is, the claimed invention may integrate the judicial exception into a practical application by demonstrating that it improves the relevant existing technology although it may not be an improvement over well-understood, routine, conventional activity. (Emphasis added)
Thus, the rejection is proper and has been maintained.
Applicant submits “The present disclosure solves this problem by providing real-time monitoring and notification regarding users' transactions."”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
See response immediately above.
Thus, the rejection is proper and has been maintained.
Applicant submits “Furthermore, the recited dynamic changing of a GUI "may allow the system to provide results of real-time post-transaction adjustment data monitoring to users via mobile devices ... [which] is a clear advantage and improvement over prior technologies that require users to manually track these types of adjustments because these prior technologies are prone to user error.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
See responses here above.
Thus, the rejection is proper and has been maintained.
Applicant submits “By contrast, the Office Action's analysis is not only solely considering claim features "individually," but is also explicitly eliminating various features from consideration at all.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
This is a board statement, which cannot be answered specifically. Applicant is herewith requested to make specific remarks in order to receive specific answers. For instance, Applicant may want to provide concrete examples of non-considered features.
Thus, the rejection is proper and has been maintained.
Applicant submits “Thus, despite the Office Action's conclusory statement that when "[t]he pending claims, as a whole, are directed to an abstract idea not integrated into a practical application," it is not supported by any analysis of the claims as a whole but rather relies on an incomplete analysis of some individual claim features.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
The eligibility analysis in the instant Office Action concludes at Step 2B:
When the independent and dependent claims are considered as a whole, as a combination, the claim elements noted above appear to merely apply the abstract concept to a technical environment in a very general sense – i.e. a computer receives information from another computer, processes that information and then sends a response based on processing results. The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified in the independent claims as an abstract idea. The fact that the computing devices are facilitating the abstract concept is not enough to confer statutory subject matter eligibility. In sum, the additional elements do not serve to confer subject matter eligibility to the invention since their individual and combined significance is still not heavier than the abstract concepts at the core of the claimed invention. Therefore, it is concluded that the dependent claims of the instant application do not amount to significantly more either. (see MPEP 2106.05)
Thus, the rejection is proper and has been maintained.
Applicant submits “Thus, Applicant respectfully submits that the Office Action has failed to consider the claims "as a whole" when analyzing whether any alleged abstract idea is integrated into a practical application under Step 2A Prong Two, and therefore the rejection is defective. As described above, Applicant submits that when considered as a whole, the alleged abstract ideas are integrated into a practical application.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
See response immediately above.
Thus, the rejection is proper and has been maintained.
Applicant submits “Applicant respectfully submits that the present claims recite an improvement to computer technology, and in particular an improvement to computer-based fraud detection and prevention.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
MPEP 2106.05(a) discloses that the additional claim elements bring about “improvements to the functioning of a computer, or any other technology or technical field.” Monitoring commercial post-transaction adjustments is a pure BUSINESS problem, rather than a technology or technical field problem. As such, the limitations which have not been deemed as being part of the identified abstract idea, i.e., the “additional limitations,” do not integrate the identified abstract idea into a practical application, as disclosed by MPEP 2106.05(a).
Thus, the rejection is proper and has been maintained.
Applicant submits “Similar to Finjan, which involved generating a security profile that can protect users against previously unknown viruses, thereby providing an improvement over traditional virus scanning, the present claims recite a system that can identify transactions with post-transaction amounts that do not match an expected amount and automatically initiate fraud prevention actions in real-time, which is an improvement over traditional computer-based fraud detection and prevention methods. Thus, Applicant respectfully submits the claims also represent an improvement to technology.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
It is not proper practice to go and find a single Court decision and use the general arguments from that decision to determine eligibility of a particular claimed invention, unless the particular claimed invention uniquely matches (i.e. a case that involves identical or similar facts or similar legal issues) the subject matter of the claimed invention in the Court decision, which in the instant situation it does not. Each application has to be considered on its own merits.
Thus, the rejection is proper and has been maintained.
Applicant submits “Applicant respectfully submits that, similar to Finjan, the present claims also "show an improvement in computer-functionality," because just as the claims in Finjan provide "an improvement over traditional virus scanning," the present claims analogously provide "automatic fraud prevention measures" by providing "real-time monitoring and notification regarding users' transaction."”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
First, MPEP 2106.05(a) discloses that the additional claim elements bring about “improvements to the functioning of a computer, or any other technology or technical field.” Monitoring commercial post-transaction adjustments is a pure BUSINESS problem, rather than a technology or technical field problem. As such, the limitations which have not been deemed as being part of the identified abstract idea, i.e., the “additional limitations,” do not integrate the identified abstract idea into a practical application, as disclosed by MPEP 2106.05(a).
Second, MPEP 2106.04(d)(1) discloses:
An important consideration to evaluate when determining whether the claim as a whole integrates a judicial exception into a practical application is whether the claimed invention improves the functioning of a computer or other technology .... In short, first the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art .... Second, if the specification sets forth an improvement in technology. the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. (Emphasis added)
That is, the claimed invention may integrate the judicial exception into a practical application by demonstrating that it improves the relevant existing technology although it may not be an improvement over well-understood, routine, conventional activity. (Emphasis added)
Thus, the rejection is proper and has been maintained.
Applicant submits “In addition, the USPTO has issued examples of claims examined under 35 U.S.C. § 101. Subject Matter Eligibility Examples: Abstract Ideas (issued Jan. 7, 2019). Example 37 - Relocation of Icons on a Graphical User Interface ("US PTO Guidance, Example 37"), specifically provides an example of a claim that successfully recites a practical application. The example claim recites "[a] method of rearranging icons on a graphical user interface (GUI) of a computer system, the method comprising … Similar to Example 37, independent Claim 1 recites"”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
It is not proper practice to go and find a particular Example from the Office published material and use the specific arguments from that Example to determine eligibility of a particular claimed invention, unless the particular claimed invention uniquely matches (i.e. a case that involves identical or similar facts or similar legal issues) the subject matter claimed in that particular Example, which in the instant situation it does not. The Office periodically publishes Examples with detailed analyses only to serve as rational and argumentation models to determine eligibility. Each application has to be considered on its own merits. Examples provided by the Office are nothing more than the name suggests: EXAMPLES, that are to be considered or not, as they are neither laws, nor rules, nor regulations.
Thus, the rejection is proper and has been maintained.
Applicant submits “Claims 1, 3-4, 6-9, 12-16, 18, 20, 22-23, and 25-28 Are Patent Eligible Under USPTO Step 2B Because They Recite a Combination of Elements that Is Significantly More than an Abstract Idea”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
Per Step 2B. Independent claim 1 (which is representative of claims independent 9, 16) does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when the independent claim is reevaluated as a whole, as an ordered combination under the considerations of Step 2B, the outcome is the same like under Step 2A.2.
Overall, it is concluded that independent claims 1, 9, 16 are deemed ineligible.
Thus, the rejection is proper and has been maintained.
Applicant submits “Applicant respectfully submits that the instant claims do involve more than performance of well-understood, routine, and conventional activities previously known to the industry.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
The eligibility analysis in the instant Office Action does not make such an allegation.
Thus, the rejection is proper and has been maintained.
Examiner has reviewed and considered all of Applicant’s remarks. The rejection is maintained, necessitated by the fact that the rejection of the claims under 35 USC § 101 has not been overcome.
Conclusion
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 mailing date of this final action.
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/Radu Andrei/
Primary Examiner, AU 3698