DETAILED ACTION
Status of the Claims
1. This action is in reply to the Request for Reconsideration dated January 29, 2026.
2. Claims 1-14 are currently pending and have been examined.
3. Claims 1-14 are currently amended.
4. Claims 15-20 have been withdrawn from consideration and Claims 1-14 were elected for prosecution.
Notice of Pre-AIA or AIA Status
5. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
6. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Provisional Application No. 63/008,734, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
The provisional application 63/008,734 was filed on April 11, 2020. The provisional application provided a total of seven pages, inclusive of the claims, two largely illegible drawings, a detailed description and a summary.
A PCT was filed on April 21, 2021 and this filing provided a 34 page specification and 17 drawings, along with 20 claims. The instant application was filed on September 10, 2022 with the specification, drawings and claims originally presented with the PCT.
The provisional application filed on April 11, 2020 does not contain all of the details that were presented with the PCT. The specification and drawings were both expanded significantly. Further, the features that have been claimed in instant claim set are not properly supported by the provisional application and thus cannot successfully claim priority therefrom.
The instant independent claim 1 recites determining financial outcome parameters, accessing the user’s financial statements from one or more of user’s financial institutions where the financial statements comprise a plurality of transactions; receiving merchant information; determining financial outcome parameters during a future time period and forming a user financial statement and a virtual financial statement utilizing at least seven devices and one or more computer devices to make computations comprising software applications for testing consumer behavior and making recommendations to users regarding credit cards, debit cards and other financial products; wherein information about the credit card comprises information about a credit card offer comprises one or more of a rewards rate, a rewards limit, a credit card fee, an interest rate, and a credit limit and wherein the user financial statement comprises user transaction records corresponding to transactions of one or more of the financial statements.
The provisional application does not mention financial outcome parameters as broadly claimed, rather, the disclosure discusses backtesting consumer behavior. The provisional application does not disclose accessing the user’s financial statements from one or more of the user’s financial institutions, rather the disclosure indicates that “…the user makes an account and submits his or her transaction data, most likely using an API…” (See provisional application summary, page 2, second full paragraph). While there is disclosure of utilizing the user’s previous transaction data, there is no mention of financial institutions or financial statements from those financial institutions in the provisional application.
The provisional application broadly discloses that the techniques can be used with “…any computing device on which a consumer can access the platform…”, however does not disclose devices for each of the activities that Applicant is currently claiming in the independent claim. (See provisional application, page 6, fourth full paragraph). The claims purport to receive information from one or more computers of the computer network, yet no network is disclosed, rather there is just a mention of network-connected devices may be used. (Id.)
The claim recites “merchant information”, however this is broader than the provisional disclosure of a merchant name as seen in previous transactions and merchant cash back reward matched with what a total cash back reward would have been during backtesting prior transactions. (See provisional application summary, page 2, last paragraph)
Applicant also recites a device for determining financial outcome parameters corresponding to the user using a credit card during a future time period. There is no reference to future time periods in the provisional application. The independent claim recites a corresponding virtual financial statement and forming a user financial statement. Neither of these concepts appear in the provisional application.
There is no disclosure of computer devices comprising software applications per se, only an implication of possibly using an API and an app with no real detail. There is similarly no disclosure of a rewards rate or rewards limit or a credit limit or an interest rate, though there is one sentence regarding a user being presented with a table of cards with relevant information such as cash back reward, introductory offer, annual fee, etc. (See provisional application summary, page 2, last paragraph)
For at least the reasons noted above, the independent claim, from which all the dependent claims depend, does not have proper support from which to claim priority on April 11, 2020. The dependent claims further contain concepts that have not been properly supported by the provisional application including but not limited to additional devices, adjustment features, expected financial circumstances, etc.
Accordingly, the claimed invention has been accorded the priority date of April 21, 2021.
Claim Objections
7. Claims 1-2 and 11 are objected to because of the following informalities:
Regarding Claims 1-2, Claim 1 features designations of numerals 1-2 and 4-8, while Claim 2 (which is dependent on Claim 1) features claim designations of numerals 2-5. The numbers designated do not appear to correspond to each other and are confusing as numbered.
The numbers in Claim 1 designated are also not synced with device numbers that are noted in the specification. Further, the numerals are also followed by a period, which is improper within a claim. Examiner would suggest that if Applicant wishes to use numerals to designate features, that they number the items in consecutive order and to the extent the devices coincide with devices described in the specification, match the relevant numbers and present them without a period following each numeral.
Regarding Claim 11, Applicant has indicated that this is the original claim recitation with the identifier, however has completed amended the claim. Examiner will proceed in examining the claim as amended, however appropriate correction of the status identifier is required.
Appropriate correction is required.
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.
8. Claims 1-14 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
ANALYSIS:
STEP 1:
Does the claimed invention fall within one of the four statutory categories of invention (process, machine, manufacture or composition matter?
Claim 1 recites a system claim.
STEP 2A:
Prong One: Does the Claim Recite A Judicial Exception (An Abstract Idea, Law of Nature or Natural Phenomenon)? (If Yes, Proceed to Prong Two, If No, the claim is not directed to a judicial exception and qualifies as subject matter patent eligible material)
Claim 1 recites the abstract idea of utilizing consumer financial behavior to make credit card, debit card and other financial product recommendations. This idea is described by the following limitations:
enable a user to open a user account;
accessing the user’s financial statements from one or more user’s financial institutions, the financial statements comprising a plurality of transactions;
to receive information about a credit card;
to receive merchant information
for determining one or more financial outcome parameters corresponding to the user using a credit card during a future time period;
forming a user financial statement and a corresponding virtual financial statement;
to make computations, for testing consumer behavior data and for making recommendations to users regarding credit cards, debit cards, and other financial products;
wherein the information about credit card comprises information about a credit card offer; and
wherein the information about the credit card offer comprises one or more of a rewards rate, a rewards limit, credit card fee, an interest rate, and a credit limit;
wherein the user financial statement comprises user transaction records corresponding to transactions of one or more of the financial statements.
Under a BRI, the claim may reflect no more than the existing approach to assessing credit, debit or other financial products by receiving historical information regarding a user’s previous transactions, receiving credit card information, receiving merchant information and estimating future usage of a credit card, debit card, and other financial product including details of credit card fees, interest rates, credit limit, rewards rates and limits and making computations of potential costs and rewards based on estimated future use.
As a result, the abstract ideas describe mental processes and certain methods of organizing human activity.
As to mental processes, the steps describe concepts performed in the human mind including an observation, evaluation, judgment, and/or opinion as seen above. These steps are performing a mental process in a computer environment that recites device(s) that recite limitations accessing, receiving, and evaluating information and with the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being practically performed by a human mentally.
As to certain methods of organizing human activity, the steps involve fundamental economic principles or practices (i.e., credit card use), commercial interactions (i.e., marketing or sales activities; business relations), and/or managing personal behavior or relationships (i.e., following rules or instructions) as seen above.
In the case of the instant claim, for example, the claims recite no more than receiving and gathering information of a subject user and using generic computer technology to process, analyze and present the received information and to develop an output to make recommendations to the user. (Step 2A, Prong 1: Yes, the claims are abstract)
Prong Two: Does the Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application of the Exception? (If Yes, the claim is not directed to a judicial exception and qualifies as subject matter patent eligible material. If No, Proceed to Step 2B)
The claims do not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, are not applying the judicial exception with, or by use of a particular machine, are not effecting a transformation or reduction of a particular article to a different state or thing, and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
In particular, the claims only recite devices, a computer on a network and one or more computer devices which comprise software applications which are recited at a high level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. 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. Therefore, Claim 1 is directed to an abstract idea without a practical application. (Step 2A – Prong 2: No, the additional claimed elements are not integrated into a practical application)
STEP 2B: If there is an exception, determine if the claim as a whole recites significantly more than the judicial exception itself.
The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: i) receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added)); ii) performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims."); iii) electronic recordkeeping, Alice Corp., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log); iv) storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93; v) electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) (optical character recognition); and vi) a web browser’s back and forward button functionality, Internet Patent Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015). (MPEP §2106.05(d)(II))
This listing is not meant to imply that all computer functions are well‐understood, routine, conventional activities, or that a claim reciting a generic computer component performing a generic computer function is necessarily ineligible. Courts have held computer‐implemented processes not to be significantly more than an abstract idea (and thus ineligible) where the claim as a whole amounts to nothing more than generic computer functions merely used to implement an abstract idea, such as an idea that could be done by a human analog (i.e., by hand or by merely thinking). On the other hand, courts have held computer-implemented processes to be significantly more than an abstract idea (and thus eligible), where generic computer components are able in combination to perform functions that are not merely generic. (MPEP §2106.05(d)(II) – emphasis added)
Below are examples of other types of activity that the courts have found to be well-understood, routine, conventional activity when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: recording a customer’s order, Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1244, 120 USPQ2d 1844, 1856 (Fed. Cir. 2016); shuffling and dealing a standard deck of cards, In re Smith, 815 F.3d 816, 819, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016); restricting public access to media by requiring a consumer to view an advertisement, Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014); identifying undeliverable mail items, decoding data on those mail items, and creating output data, Return Mail, Inc. v. U.S. Postal Service, -- F.3d --, -- USPQ2d --, slip op. at 32 (Fed. Cir. August 28, 2017); presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; determining an estimated outcome and setting a price, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; and arranging a hierarchy of groups, sorting information, eliminating less restrictive pricing information and determining the price, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1331, 115 USPQ2d 1681, 1699 (Fed. Cir. 2015) (MPEP 2106.05(d))
Here, the steps are receiving or transmitting data over a network; performing repetitive calculations; and storing and retrieving information – all of which have been recognized by the courts as well-understood, routine and conventional functions.
The claims are directed to an abstract idea with additional generic computer elements that do not add meaningful limitations to the abstract idea because they require no more than a generic computer to perform generic computer functions that are well-understood, routine, and conventional activities previously known in the industry.
For the next step of the analysis, it must be determined whether the limitations present in the claims represent a patent-eligible application of the abstract idea. A claim directed to a judicial exception must be analyzed to determine whether the elements of the claim, considered both individually and as an ordered combination are sufficient to ensure that the claim as a whole amounts to significantly more than the exception itself.
For the role of a computer in a computer implemented invention to be deemed meaningful in the context of this analysis, it must involve more than performance of “well-understood, routine, [and] conventional activities previously known to the industry.” Further, “the mere recitation of a generic computer cannot transform a patent ineligible abstract idea into a patent-eligible invention.”
Applicant’s specification discloses the following:
“The prediction-system-100 may include one or more computer devices 200, one or more servers 104, one or more processors 105, one or more memories 102, one or more databases 106. The prediction-system-100 is configured to exchange information via a network-140, such as the internet, with a plurality of user-devices-120, a plurality of financial institutions systems-130, a plurality of merchant-systems 150, and other auxiliary systems-160, such as: advertiser systems, financial products rating services, market study systems, financial services system, and others.” (See Applicant Spec page 8, lines 224-229)
“With reference to Figure 2, the computer devices 200 and the servers may include one or more processors 201, one or more RAM memories 202, one or more ROM memories 203, one or more Input/Output devices 204, one or more memory modules 205. The memory modules 205 may include or host an operating system 206, databases 207, and software applications 208. The computer devices and the servers are configured to make computation via the processors; to store information via the RAM and ROM memories and to exchange information with other systems via the network-140. The applications 208 may include one or more applications for testing consumer behavior data for making recommendations to users regarding credit cards, debit cards, and other financial products.” (See Applicant Spec page 8, line 230 to page 9, line 238)
Additionally, the specification discloses a number of devices that are described at a high level as one or more processors for performing operations, memories for storing information, and input/output devices for transferring information to and from other devices or services. (See Applicant Spec page 12, line 349-351; page 15, lines 424-427; page 17, lines 494-497; page 20, lines 581-585; page 21, lines 599-603, 610-614; page 22, lines 640-643; and page 33, lines 949-952)
Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system.
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. The collective functions appear to be implemented using conventional computer systemization.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to no more than mere instructions to apply the exception using generic computer components. The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
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.
The independent claim 1 is not patent eligible. (Step 2B: NO. The claim does not provide significantly more)
Dependent Claims 2-14 further define the abstract idea that is presented in the respective independent Claim 1 and are further grouped as mental processes and certain methods of organizing human activity and are abstract for the same reasons and basis as presented above.
Dependent Claim 4 further discloses a device 8. Dependent Claims 8-9 further discloses a device 9. Dependent Claim 10 further discloses a device 10. Dependent Claim 12 further discloses a device 11. In each case, the additional elements are recited at a high level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts to mere instructions to apply the exception using a generic computer component.
No further additional hardware components other than those found in the respective independent claim is recited, thus it is presumed that the claim is further utilizing the same generic systemization as presented above. The dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination.
Therefore, the dependent claims are also directed to an abstract idea.
Thus, Claims 1-14 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
9. Claim(s) 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Yucra Rodriguez et al. (US20230008937A1) (“Yucra”) in view of Bonfigli et al. (WO 2019/195263) (“Bonfigli”)
Regarding Claim 1, Yucra discloses the following:
A system for determining financial-outcome parameters of using a credit card, the system comprising:
(1) a device 1 configured to enable a user to open a user account; (See Yucra paras 30, 44, 60 – system can facilitate initiating an application for a new credit card)
(2) a device 2 for accessing the user’s financial statements from one or more of user’s financial institutions, the financial statements comprising a plurality of transactions; (See Yucra paras 22-24, 28 – receive transaction history from a user)
(4) a device 4 configured to receive, from a computer on a network, information about a credit card; (See Yucra paras 42-44 – database of relevant information for multiple credit cards, the system, method and computer-accessible medium can scrape the relevant information from each credit card directly from the credit card issuer’s website)
(5) a device 5 configured to receive, from one or more computers of the computer network, merchant information; (See Yucra paras 29-30 – once the transaction history is generated, the system, method and computer accessible medium can analyze each transaction to determine the particular category associated with the transaction and can be based on merchant name and merchant type [merchant information])
(6) a device 6 for determining one or more financial outcome parameters corresponding to the user using a credit card during a future time period; (See Yucra paras 54-55, 67 – determine potential future spend based on total spent by the user for a previous tie period can be used to estimate the user’s future spend)
(7) a device 7 for forming a user financial statement and a corresponding virtual financial statement; (See Yucra paras 25 – spending report analysis can show a detailed list of transactions as well as where most value was achieved (based on rewards points, value of rewards) and compared with a list comparing a current credit card to one or more other credit cards and the average value per point comparison)
(8) one or more computer devices configured to make computations, wherein the computer devices comprise software applications for testing consumer behavior data and for making recommendations to users regarding credit cards, debit cards, and other financial products; (See Yucra paras 5, 10-11, 30, 43, 58-59 – computations of free shipping costs)
wherein the information about the credit card comprises information about a credit card offer; and (See Yucra paras 42-44)
wherein the information about the credit card offer comprises one or more of a rewards rate, a rewards limit, a credit card fee, an interest rate, and a credit limit; (See Yucra paras 42-44)
wherein the user financial statement comprises user transaction records corresponding to transactions of one or more of the financial statements. (See Yucra paras 25 – spending report analysis can include detailed list of transactions)
While Yucra discloses the invention as disclosed above and discloses exemplary system, method and a computer-accessible medium for providing a financial account recommendation by determining first rewards information based on the transaction history, determining a second transaction history by applying a machine learning procedure to the first transaction history where the second transaction history includes transactions likely to be made by the person(s) in a future time period, determining second rewards information based on the second transaction history and providing a financial account recommendation, it does not further disclose testing consumer behavior data.
Bonfiglio discloses his invention as to systems and methods for credit card selection based on personal spending. (See Bonfiglio Abstract) One or more transaction histories can be accessed and a plurality of transactions can be retrieved or obtained therefrom. (See Bonfiglio Abstract)
The system implements a transaction aggregator and a credit card recommendation engine where the transaction aggregator can be configured to retrieve or otherwise access a transaction history [consumer behavior data] The system can include a plurality of layers or components operable for credit card selection/recommendation, for example, by aggregating information about past historical expenditures from previous credit card, bank, or shopping statements or other financial transaction information, and using categories relating to merchant category codes (MCCs) from point of sale and/or other rewards provided by credit card companies for comparing with existing cash value rewards returned. (See Bonfiglio para 54)
Bonfiglio further discloses training of and prediction with a credit card recommendation engine that uses machine learning for developing predictions/recommendations for rewards valuation. (See Bonfiglio para 92) A machine learning model for the recommendation engine can be trained using labeled data including user transaction data and best matching card(s) as well as other information. (See Bonfiglio para 93 – consumer behavior data is labeled) In addition, labeled data (e.g., including cards matched to other user transaction data or other suitable testing data) can be used to test the accuracy/performance of the machine learning model. (See Bonfiglio para 95 – testing consumer behavior data) Furthermore, the trained machine learning model can be (at least periodically) tested or checked, and if it is determined that the results/recommendations of the machine learning falls below a prescribed accuracy threshold or level of confidence, or users are otherwise not taking the recommendations provided by the model, the process flow can return to executing steps 702, 704, 705, and 707 to generate recommendations or updated training data to improve accuracy, confidence level, etc. of the results. (See Bonfiglio para 105)
It would have been obvious to one of ordinary skill in the art before the effective date of the instant invention to have modified the system, method and computer-accessible medium for providing a financial account recommendation to keep, switch and/or add credit cards for various spending that may use machine learning disclosed by Yucra with the systems and methods for credit card selection including using labeled user transaction data to test the accuracy and performance of the machine learning model periodically as taught by Bonfiglio in order to ensure enhanced accuracy and confidence in the model.
Regarding Claim 2, this claim recites the limitations of Claim 1 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Yucra discloses the following:
(2) wherein the user financial statement comprises a user statement start date; (See Yucra para 23 – transaction history for a particular time period)
(3) wherein the virtual financial statement comprises a set of transaction records, and each of the transaction records in the set corresponds to a user transaction record in the user financial statement; (See Yucra paras 54-55, 67)
(4) wherein the virtual financial statement comprises a start date equal to the first day of the future time period; and (See Yucra paras 54-55, 67)
(5) wherein each transaction record comprises a transaction date obtained by adding to the start date a number of days equal to the difference between the user transaction date of the corresponding transaction and the user statement start date. (See Yucra paras 54-55, 67)
Regarding Claim 3, this claim recites the limitations of Claim 2 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Yucra discloses the following:
wherein a financial outcome parameter is a rewards parameter configured to estimate one or more rewards the user would receive if using the credit card during the future time period and if user would perform the transactions in the virtual transaction records. (See Yucra paras 54-55, 67 – estimate the user’s future spend including the rewards value)
Regarding Claim 4, this claim recites the limitations of Claim 3 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Yucra discloses the following:
further comprising a device 8 for extracting card information from the received credit card, for using said card information to form one or more rewards functions, and for calculating the rewards parameter by applying the rewards functions to the virtual card statement. (See Yucra paras 54-55, 67)
Regarding Claim 5, this claim recites the limitations of Claim 4 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Yucra discloses the following:
wherein the rewards parameter is configured to estimate the rewards a user would receive from a certain merchant, and wherein the rewards functions are configured to select, out of transactions in the virtual statement, the transactions with the merchant. (See Yucra paras 44, 54-55 – travel merchants, future spend per category)
Regarding Claim 6, this claim recites the limitations of Claim 4 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Yucra discloses the following:
wherein the reward parameter is configured to estimate the rewards a user would receive from purchases in a certain category of goods and services, and wherein the rewards functions are configured to select, out of transactions in the virtual card statement, the transactions in the certain category of goods and services. (See Yucra paras 44, 54-55)
Regarding Claim 7, this claim recites the limitations of Claim 2 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Yucra discloses the following:
wherein a financial outcome parameter is an overall card value configured to estimate the total overall value the user would receive if using the credit card during the future time period, wherein the overall card value is determined by adding and subtracting monetary values of reward parameters, monetary values of fee parameters and monetary values other benefits associated with the credit card. (See Yucra paras 6, 44-45, 54-55 – overall value achieved)
Regarding Claim 8, this claim recites the limitations of Claim 2 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Yucra discloses the following:
further including a device 9 configured to receive user input information from the user and to determine expected user financial circumstances during the future time period wherein transaction values corresponding to transaction records of the virtual transactions statement are adjusted via one or more adjustment functions such as to incorporate expected user financial circumstances. (See Yucra para 55 – exemplary features can be used as relevant characteristics to the model to generate a likely future spend)
Regarding Claim 9, this claim recites the limitations of Claim 8 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Yucra discloses the following:
wherein the expected user financial circumstances during the future time period comprise one or more of the following: changes in expected spending on certain category of goods and services, changes in expected user income, expected use of other credit cards and payment methods, expected family circumstances. (See Yucra para 55 – exemplary features can be used as relevant characteristics to the model to generate a likely future spend, including number of kids, married or single, etc.)
Regarding Claim 10, this claim recites the limitations of Claim 2 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further Yucra in view of Bonfiglio discloses the following:
further including a device 10 configured to receive, from one or more computers on the network, market information about expected market conditions during the future time period wherein transaction values corresponding to transaction records of the virtual transactions statement are adjusted via one or more adjustment functions such as to incorporate market information, wherein the market information comprises one or more of the following: expected inflation, expected changes in the price of goods and services, expected changes in interest rates.
While Yucra, as described above, discloses virtual financial statements [future spend based on transaction history], it does not further disclose adjustments that may incorporate market data that includes expected changes in interest rates.
Bonfiglio further discloses that reward calculations may include promotional interest rates and interest rates, thus accounting for an expected change in interest rates. (See Bonfiglio paras 19, 60, 81)
It would have been obvious to one of ordinary skill in the art before the effective date of the instant invention to have modified the system, method and computer-accessible medium for providing a financial account recommendation to keep, switch and/or add credit cards for various spending that may use machine learning disclosed by Yucra with the systems and methods for credit card selection including using labeled user transaction data to test the accuracy and performance of the machine learning model periodically as taught by Bonfiglio in order to ensure enhanced accuracy and confidence in the model.
Regarding Claim 11, this claim recites the limitations of Claim 10 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Yucra in view of Bonfiglio as disclosed above with respect to Claim 10 as if recited herein in full discloses the following:
further including a device configured to receive user input information from the user and to determine expected user financial circumstances during the future time period, wherein transaction values corresponding to transaction records of the virtual transactions statement are adjusted via one or more adjustment functions such as to incorporate expected user financial circumstances. (See Yucra para 55 – exemplary features can be used as relevant characteristics to the model to generate a likely future spend)
Regarding Claim 12, this claim recites the limitations of Claim 11 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Yucra in view of Bonfiglio as disclosed above with respect to Claim 10 as if recited herein in full discloses the following:
further comprising a device 11 for extracting card information from the received credit card, for using said card information to form one or more rewards functions, and for calculating the rewards parameter by applying the rewards functions to the virtual card statement. (See Yucra paras 54-55)
Regarding Claim 13, this claim recites the limitations of Claim 12 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Yucra in view of Bonfiglio as disclosed above with respect to Claim 10 as if recited herein in full discloses the following:
wherein the reward parameter is configured to estimate the rewards a user would receive from purchases in a certain category of goods and services if using the credit card during the future time period, and wherein the rewards functions are configured to select, out of transactions in the virtual card statement, the transactions in the certain category of goods and services. (See Yucra paras 44, 54-55)
Regarding Claim 14, this claim recites the limitations of Claim 11 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Yucra in view of Bonfiglio as disclosed above with respect to Claim 10 as if recited herein in full discloses the following:
wherein a financial outcome parameter is an overall card value configured to estimate the total overall value the user would receive if using the credit card during the future time period, wherein the overall card value is determined by adding and subtracting a monetary value of reward parameters, fee parameters and other benefits associated with the credit card. (See Yucra paras 6, 44-45, 54-55 – overall value achieved)
Response to Arguments
Applicant's arguments filed January 29, 2026 have been fully considered as further detailed below.
Regarding the Claim Objections:
Applicant is thanked for addressing the dashes and removing them from the claims. (See Applicant Arguments dated 01/29/2026, page 1) The claim objections are not completely resolved as Applicant did not remove the periods after the numerals in the claims as noted in the previous objections and still presented above.
Regarding the 112 Rejections:
Applicant is thanked for addressing the 112 issue and Examiner agrees that the issue has been mooted. (Id. at page 2) The rejection has been accordingly withdrawn.
Regarding the 101 Rejections:
Applicant argues that the recitation of one or more computing devices that comprise software applications for testing consumer behavior data and for making recommendations to users regarding credit cards, debit cards and other financial products discloses that testing consumer behavior data and making recommendations to users regarding credit cards, debit cards and other financial products is performed via specialized software applications. (Id. at page 2)
Applicant further argues that the preamble clearly specifies a system and comprises several devices which are tangible in nature and not abstract and refers to the Cambridge English dictionary as defining a system as a “set of things or devices that operate together”, asserting that the system as recited in this application does not qualify as an abstract idea. (Id.) Applicant then attempts to argue that other patents have been granted to banking and financial companies and accuses the USPTO examiners of applying the law unevenly for big banking institutions represented by big law firms than for small startup companies represented by solo practitioners, arguing that this alleged practice is illegal, contradicts the spirit of the law and is deeply un-American. (Id. at page 3) Applicant concludes that the 101 rejections should be withdrawn based on their arguments. (Id.)
Examiner strongly protests the unfounded accusations made by Applicant.
First, regarding Applicant’s substantive arguments, the software applications are recited at a high level of generality and presented in the claims without technological details. Secondly, the claims and the specification make clear that the purpose of the systems and methods is to “help consumers make optimal decisions regarding choosing credit cards, debit cards, loans, and other financial products” (See Applicant Spec page 8, lines 215-219) Critically, the provisional application provides for systems and methods for backtesting consumer behavior data to help consumers make optimal decisions and discloses “[u]tilizing the user’s transaction data and publicly available credit card information, such as cashback percent, the application is able to create a seamless discovery and analysis experience where the app will automatically generate accurate and relevant information for the user all in one place.” (See Applicant’s provisional specification, in the detailed description, page 5, para 1) The application’s current specification notes a similar sentiment on page 19 of the instant specification. This is a business solution to a business problem, not a technological advance.
Third, there is no indication as to how this is a “specialized software application”. Fourth, while the preamble does indicate a system, the devices are recited at a high level of generality. The devices and the software application are additional elements in the 101 analysis, however do not result in there being no abstract idea recited. The underlying process is still one of processing information to assess credit, debit or other financial products by receiving historical user transaction data, receiving credit card information (publicly available information as noted by Applicant’s specification) and using generic computer technology to process, analyze and present the received information to develop an recommendation output. The current claims are not subject matter eligible under 101.
As to allegation that the law is being applied unevenly and the pointing to other patents issued to other entities, Examiner disagrees with Applicant’s accusations and notes that each application turns on its own facts, disclosures, claims and subject matter. The law applied is applied based on the Office’s guidance in every instance. There is no bias by Examiner in examining applications dependent on the Applicant, Applicant’s counsel or the size of Applicant’s counsel. This is simply not accurate. This is not a practice of the Office or of this Examiner. Applicant has further not provided any evidence that Examiners are applying the law unevenly or that the practice is “illegal”. These unfounded arguments are not persuasive.
The 101 Rejection is maintained.
Regarding the 103 Rejections:
Applicant points out the earliest priority date of the current application, utilizing the provisional application 63/008,734 as the basis for this statement, is April 11, 2020. (See Applicant Arguments dated 01/29/2026, pages 3-4) Applicant further alleges that all of the features claimed are mentioned explicitly and/or implicitly in the provisional application filed before the priority date of Yucra. (Id.) Applicant then concludes that the rejection is improper and should be withdrawn. Applicant also notes that the previous examiner also utilized this prior art and Applicant does not believe it can be properly used as prior art in this case. (Id. at page 4) Applicant concludes that Bonfigli nor any other prior art of record recite all the features of Claim 1 as amended. (id.at page 4)
Examiner is of another opinion. The provisional application does not provide adequate disclosure for the claims in order to be accorded the priority date of the provisional application for purposes of application of prior art. The provisional application and the subsequently filed PCT have vastly different disclosures with the provisional application only providing a two page summary; two mostly illegible drawings, a roughly two and a half page detailed description and six claims. The subsequently filed PCT of April 11, 2021 presents a 34 page specification, 17 drawings and an additional abstract. The disclosure of the PCT appears to be the same as the disclosure of the instant application.
The scope of the provisional application versus the subsequently filed PCT are vastly different and the provisional application does not provide sufficient support for the limitations as currently presented. As further detailed in the rejection in chief, the priority date being accorded to the claimed invention is April 11, 2021 – which would make Yucra valid prior art to be applied. Applicant also argues that claims 2-14 are further allowable based on the argument that claim 1 is allowable. Examiner similarly disagrees as the independent claim 1 is taught by the prior art of record. The 103 rejection is maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMBREEN A. ALLADIN whose telephone number is (571)270-3533. The examiner can normally be reached Monday - Friday 9-5.
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/AMBREEN A. ALLADIN/Primary Examiner, Art Unit 3691 May 29, 2026
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