DETAILED ACTIONStatus of the Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The following is in response to a Request for Continued Examination dated January 2, 2026. Claims 1-7 are pending. All pending claims are examined.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.
Response to Arguments
101 Analysis
In line with the "2019 Revised Patent Subject Matter Eligibility Guidance," which explains how we must analyze patent-eligibility questions under the judicial exception to 35 U.S.C. § 101. 84 Fed. Reg. 50-57 ("Revised Guidance"), the first step of Alice (i.e., Office Step 2A) consists of two prongs. In Prong One, we must determine whether the claim recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural phenomenon. 84 Fed. Reg. at 54 (Section III.A. I.). If it does not, the claim is patent eligible. Id.
An abstract idea must fall within one of the enumerated groupings of abstract ideas in the Revised Guidance or be a "tentative abstract idea, "with the latter situation predicted to be rare. Id. at 51-52 (Section I, enumerating three groupings of abstract ideas), 54 (Section III.A. I., describing Step 2A Prong One), 56-57 (Section III.D., explaining the identification of claims directed to a tentative abstract idea).
If a claim does recite a judicial exception, the next is Step 2A Prong Two, in which we must determine if the "claim as a whole integrates the recited judicial exception into a practical application of the exception." Id. at 54 (Section II.A.2.) If it does, the claim is patent eligible. Id.
If a claim recites a judicial exception but fails to integrate it into a practical application, we move to the second step of Alice (i.e., Office Step 2B). to evaluate the additional limitations of the claim, both individually and as an ordered combination, to determine whether they provide an inventive concept. Id. at 56 (Section III.B.). In particular, we look to whether the claim:
• Adds a specific limitation or combination of limitations that are not well-understood, routine, conventional in the field, which is indicative that an inventive concept may be present; or
• simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
The analysis in line with current 101 guidelines. Even if the abstract idea is deemed to be novel, the abstract idea is no less abstract (see Flook- new mathematical formula was an abstract idea).
Taking the broadest reasonable interpretation, the invention is directed to a method of organizing human activity in which there is account opening.
“In accordance with judicial precedent and in an effort to improve consistency and predictability, the 2019 Revised Patent Subject Matter Eligibility Guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes the following groupings of subject matter, when recited as such in a claim limitation(s) (that is, when recited on their own or per se):
(b) Certain methods of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)1 – See Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019 / p.52.
Claim 1 which is illustrative of the independent claim recites:
A computer-implemented method, the method comprising:
electronically interact with a capturable code via a mobile device of a user,
wherein said capturable code is selected from a group consisting of:
a 1D code, a 2D code, a 3D code, a sound code, and a picture code;
automatically generating a text message on said mobile device based on instructions provided in said capturable code and in response to said electronically interacting with said capturable code, the automatically generated text message comprising:
an address, automatic formatting; and at least one of a device identifier (ID) for the mobile device and a user identifier (ID) automatically inserted into said text message;
sending, via the mobile device, the text message to the address;
receiving, at the mobile device, a prepopulated form, the prepopulated form prefilled with a user specific information;
verifying, at the mobile device, the user specific information; and
receiving, at the mobile device and upon a credit approval, a new credit account in a ready-to-use format.
The claims are directed to a certain method of organizing human activity that is commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
The invention is directed to
…obtaining a new credit account, for performing an account lookup, a rewards lookup, determining a store attribution, or the like. Moreover, after obtaining information about the customer, that information can be used to pre-populate an application form that is accessible via a customer’s mobile device. In other words, many fields in an application will be pre-populated, which will reduce the amount of information that a customer must manually input.
[0024] In addition, because the scanning of the capturable code causes the text message to be addressed, any typo’s that might occur during the user inputting the short code are removed. For example, if the offer requires a text to 74747, and the user types in a wrong number as the text address, e.g., 47474, 77447, etc., the user never actually responded to the offer and the opportunity would be missed. Similar mistakes could be made if an associate is providing the short code. They could provide a wrong short code, are misheard, etc. By having the capturable code cause the text message (or email message, the opening of an app, the downloading of an app, etc.) to be generated and addressed, any typographical mistake with respect to the short code is completely removed from the procedure.
[0025] Instead, the present embodiments, as will be described and explained below in detail, provide a previously unknown procedure for interacting with a capturable code (e.g., a 1D code, 2D code, 3D code, sound code, picture code, video code, etc.) with a camera, microphone, via near field communication (NFC), or other capture capability on the user’s mobile device. The result of the user’s mobile device interacting with a capturable code is the generation of a text message that is formatted and addressed (e.g., a text number or other short code) to deliver the text message to the credit account offeror. By having the capturable code automatically generate and format a text message, the user is saved the time required to open and address the text message.
[0026] Moreover, since the text message (or other electronic message) is formatted from instructions provided in the capturable code, the initial generated text message will include the information the capturable code requested. Such information could include a request for user ID information, a request for device ID information, a generation of metadata associated with the text message that includes device ID information, location information, user ID information, etc. As discussed below, the automatic generation of the text message from the scanning of the capturable code could include automatic insertion of one or more pieces of information, a request for authorization to send the email with the automatically inserted information, a request for manual input of one or more of the pieces of information, a combination of automatic and manually input information, etc.
[0027] Thus, the disclosed embodiments reduce clerical errors that could cause a non-response to an offer and further reduce the amount of data a customer has to key into their mobile device by formatting and addressing the text message, locating the customer’s name, address and other personal information via automated searches, and prepopulating the application with the information found during the search. Thus, embodiments of the present invention provide a streamlined method for mobile credit acquisition which extends well beyond what was previously done by hand.(see App. Spec. paras. 0022, 0024-0027).
This suggests a process of opening a credit account by evaluating the information provided against predefined criteria (see App. Spec. paras. 0024-0030).
Beyond the abstract idea, the additional elements recite hardware components such as a mobile device (see App. Spec. paras. 0037-0044), there does not appear to be any technology being improved.
They are described at a high level of generality where each step does no more than require a generic computer to perform generic computer functions. Absent is any support in the specification that the claims as recited require specialized computer hardware or other inventive computer components.
Unlike, McRO, the present claims contain improvements to the context in which transactions are executed and not one of a technology or technological field.
Although the claims recite:
A computer-implemented method, the method comprising:
electronically interact with a capturable code via a mobile device of a user,
wherein said capturable code is selected from a group consisting of:
a 1D code, a 2D code, a 3D code, a sound code, and a picture code;
automatically generating a text message on said mobile device based on instructions provided in said capturable code and in response to said electronically interacting with said capturable code, the automatically generated text message comprising:
an address, automatic formatting; and at least one of a device identifier (ID) for the mobile device and a user identifier (ID) automatically inserted into said text message;”
these suggest the variety of formats available for selection and the additional description of the conditions for the output and displayed, absent is any support for the claims as recited for how it is an improvement to the computer or technical field beyond automating the account opening process.
In particular, there is a lack of improvement to a computer or technical field of accessing the user’s data because the data processing performed merely uses a system as a tool to perform an abstract idea- see MPEP 2106.05(f). Therefore, the claims are directed to an abstract idea. The invention as claimed recites a generic computer component and the claim does not pass step 2A, Prong Two.
Step 2B; The next step is to identify any additional limitations beyond the judicial exception. The additional elements are computer device which is disclosed in the specification at a high degree of generality. Absent is any genuine issue of material fact that this component requires any specialized hardware or inventive computer component.
Likewise, the dependent claims 2-7 are rejected under 35 U.S.C. § 101. For example, claims 2-5 provide descriptive details of what types of information are used in processing the request and describes conditions for executing the request. These claim limitations recite steps at a high level of generality and performed in a traditional manner and therefore do not integrate the abstract idea into a practical application or provide an inventive concept.
Independent claim 1 is rejected under 35 U.S.C. § 101 including dependent claims 2-7 which fall with claim 1. Therefore, claims 1-7 are not patent eligible under 35 USC 101.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 1: Ineligible
Claims 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. The claim recites an abstract idea of organizing human activities. This judicial exception is not integrated into a practical application and the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Analysis
The claims are directed to one or more of the following statutory categories: a process, a machine, a manufacture, and a composition of matter. The Independent claim is claim 1.
For this analysis and illustration purposes; claim 1, which recites
A computer-implemented method, the method comprising:
electronically interact with a capturable code via a mobile device of a user,
wherein said capturable code is selected from a group consisting of:
a 1D code, a 2D code, a 3D code, a sound code, and a picture code;
automatically generating a text message on said mobile device based on instructions provided in said capturable code and in response to said electronically interacting with said capturable code, the automatically generated text message comprising:
an address, automatic formatting; and at least one of a device identifier (ID) for the mobile device and a user identifier (ID) automatically inserted into said text message;
sending, via the mobile device, the text message to the address;
receiving, at the mobile device, a prepopulated form, the prepopulated form prefilled with a user specific information;
verifying, at the mobile device, the user specific information; and
receiving, at the mobile device and upon a credit approval, a new credit account in a ready-to-use format.
The invention is directed to a certain method of organizing human activity that is commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). It entails the abstract idea of credit account opening. The process optimizes the customer experience of filling a credit applications by using mobile-based, pre-populated forms initiated via scanned codes, (See App. Spec. paras. 0024-0025).
The next step is to determine whether the claims recite additional elements that integrate the judicial exceptions into a practical application. The additional elements recited in claim 1 include mobile device (see App Spec. paras. 0034-0040; Fig. 1). This suggests generic computer components to receive information entered.
The nature of the claim as a whole does not define a specific technological improvement but merely recites the steps necessary to perform the abstract idea in which the computers are invoked merely as a tool. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, the claim is directed to an abstract idea.
Having determined under step one of the Alice framework that claim 1 is directed to an abstract idea, the next step under Step 2B is to determine, whether claims as recited include additional elements or a combination of elements that provides an “inventive concept,” i.e., whether the additional elements amount to “significantly more” than the judicial exception itself. 2019 Revised Guidance, 84 Fed. Reg. at 56.
Dependent claims 2-7, for example, recite additional details about the opening an account, however the recited abstract idea is not integrated into a practical application. In particular, the claims only recite generic computer components (e.g. general purpose computer systems based on the processors) to evaluate the submitted request to determine if the predefined conditions have been met for opening an account.
These additional elements are recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception using generic computer components. For example, see dependent claims 2-5
2. (New) The computer-implemented method of Claim 1, wherein obtaining said user specific information comprises:
utilizing the device ID to perform a proprietary database search for the user specific information;
utilizing the user ID to perform a proprietary database search for the user specific information; or
utilizing the device ID and the user ID to perform a proprietary database search for the user specific information.
3. (New) The computer-implemented method of Claim 2, wherein if no user specific information is found during said proprietary database search, said obtaining the user specific information further comprises:
performing a secondary source database search for the user specific information.
4. (New) The computer-implemented method of Claim 1, further comprising:
utilizing a confidence factor threshold to validate said user specific information, such that only user specific information above said confidence factor threshold is utilized to populate the prepopulated form.
5. (New) The computer-implemented method of Claim 1, further comprising:
obtaining authorization for the generated text message to access location information for the mobile device.”
Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, the claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply the abstract idea using generic computer components.
In conclusion, merely “applying” the exception using generic computer components cannot provide an inventive concept. Therefore, Independent claim 1 and the dependent claims 2-7 are not patent eligible under 35 USC 101.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Listed on form PTO-892.
Riediger et al. (USP. No. 10191893) – Information Extraction And Annotation Systems and Methods For Documents
Gordon et. al. (US Pub. No 20150379469) - Consolidated Client Onboarding System.
Hsieh et al.( USP. Pub. No. 20190213675) - Digital Mortgage Application System And Processes Thereof.
Conclusion
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/CHIKAODINAKA OJIAKU/Primary Examiner, Art Unit 3696
1 Interval Licensing, 896 F.3d at 1344–45 (concluding that ‘‘[s]tanding alone, the act of providing someone an additional set of information without disrupting the ongoing provision of an initial set of information is an abstract idea,’’ observing that the district court ‘‘pointed to the nontechnical human activity of passing a note to a person who is in the middle of a meeting or conversation as further illustrating the basic, longstanding practice that is the focus of the [patent ineligible] claimed invention.’’); Voter Verified, Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 1385 (Fed. Cir. 2018) (finding the concept of ‘‘voting, verifying the vote, and submitting the vote for tabulation,’’ a ‘‘fundamental activity’’ that humans have performed for hundreds of years, to be an abstract idea);
In re Smith, 815F.3d 816, 818 (Fed. Cir. 2016) (concluding that ‘‘[a]pplicants’ claims, directed to rules for conducting a wagering game’’ are abstract).
14 If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir . 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016)(holding that computer-implemented method for ‘‘anonymous loan shopping’’ was an abstract idea because it could be ‘‘performed by humans without a computer’’); Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (‘‘Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.’’); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding that the incidental use of ‘‘computer’’ or ‘‘computer readable medium’’ does not make a claim otherwise directed to process that ‘‘can be performed in the human mind, or by a human using a pen and paper’’ patent eligible); id. at 1376 (distinguishing Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010), as directed to inventions that ‘‘could not, as a practical matter, be performed entirely in a human’s mind’’). Likewise, performance of a claim limitation using generic computer components does not necessarily preclude the claim limitation from being in the mathematical concepts grouping, Benson, 409 U.S.at 67, or the certain methods of organizing human activity grouping, Alice, 573 U.S. at 219–20 - – See Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019