DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s amendments dated 1/23/26 are hereby entered.
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 1-5, 7-15, and 17-20 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.
Claims 1-5, 7-15, and 17-20 are directed to an abstract idea without significantly more. The claims recite a mental process that can be performed by a human being and/or a method of organizing human activity.
In regard to Claims 1, 11, and 20, the following limitations can be performed as a mental process by a human being in terms of claiming collecting data, analyzing that data, and providing outputs based on that analysis which has been held by the CAFC to be an abstract idea in decisions such as, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician v Ubisoft (non-precedential); and/or recite a method of organizing human activity in terms of claiming commercial or legal interactions, which has been identified by MPEP 2106.04(a)(2)(II) as being a method of organizing human activity, in terms of the Applicant claiming:
[a] method for providing a financial education, the method comprising:
[…] report[ing] a location of [a first user];
providing [the] first user and a second user access to [a] financial account, wherein the first user is associated with a first user credential, wherein the second user is associated with a second login credential, wherein the first user has a restricted level of access to the financial account, and wherein the second user has an unrestricted level of access to the financial account;
restricting financial transactions by the first user […] according to the location […];
preventing use of the payment card outside times set by the second user;
providing educational material related to finances,
tailoring the educational material based upon a level of sophistication of the first user, wherein the level of sophistication is set by the second user or is determined based on an attribute of the first user;
tailoring the educational material based upon transaction categories or spending patterns;
facilitating communication between the first user and the second user relating to the finances of the first user;
[…] obtaining a full order from a third-party ordering system, including an item description, a vendor, and a cost, to be displayed [to] the second user associated with a purchase, wherein the full order is obtained through [obtaining data from] the third-party ordering system;
interfacing with the third-party ordering system […] including:
monitoring purchases entered through the third-party ordering system;
intercepting purchase attempts using the payment card by identifying when the purchase is being made;
sending a purchase notification detailing the purchase to the […] second user; and
preventing completion of the purchase until approval is received from the second user;
providing an approval request to a second user when restricted financial transactions using the [financial account] are attempted by the first user, including information associated with the location and the third-party ordering system;
delivering a notification to the […] first user when use of the payment card is prevented outside of the times set by the second user.
In regard to the dependent claims, they also claim an abstract idea to the extent that they merely claim further limitations that likewise could be performed as a mental process by a human being and/or a method of organizing human activity.
Furthermore, this judicial exception is not integrated into a practical application because to the extent that additional elements are claimed either alone or in combination such as, e.g., a computer system comprising one or more processors and a non-transitory computer readable medium encoding instructions which embody Applicant’s abstract idea as computer code, a payment card associated with a financial account including an RFID programmed to report a location of the card which can be turned on and off, an API, scraping a webpage, these are merely claimed to add insignificant extra-solution activity to the judicial exception (e.g., data gathering), to embody the abstract idea on a general purpose computer, and/or do no more than generally link the use of a judicial exception to a particular technological environment or field of use. In this regard, see MPEP 2106.04(d)(I) in regard to “courts have also identified limitations that did not integrate a judicial exception into a practical application…”
Furthermore, the claims do not include additional elements that taken individually, and also taken as an ordered combination, are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g., a computer system comprising one or more processors and a non-transitory computer readable medium encoding instructions which embody Applicant’s abstract idea as computer code, a payment card associated with a financial account including an RFID programmed to report a location of the card which can be turned on and off, an API, scraping a webpage, these are well-understood, routine, and conventional elements and are claimed for the well-understood, routine, and conventional functions of collecting and processing data and/or providing an analysis/outputs based on that processing. To the extent that an apparatus is claimed as an additional element said apparatus fails to qualify as a “particular machine” to the extent that it is claimed generally, merely implements the steps of Applicant’s claimed method, and is claimed merely for purposes of extra-solution activity or field of use. See MPEP 2106.05(b). As evidence that these additional elements are well-understood, routine, and conventional, Applicant’s specification discloses the support for these elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a). See, e.g., F1 and F4 in Applicant’s PGPUB and text regarding same; see, e.g., p67 and 76 regarding a payment card associated with a financial account including an RFID programmed to report a location of the card which can be turned on and off; and, e.g., p71 regarding employing an API; see, e.g., p71 regarding scraping a webpage.
Response to Arguments
All of Applicant’s claims have been rejected under 35 USC 101 under the Mayo test as claiming abstract ideas and without claiming “significantly more”. The Mayo test is a legal test and, as such, the question in regard to making such a rejection is what is the most analogous case law in terms of identifying whether an applicant has claimed patent eligible versus ineligible subject matter. To that end, the 101 rejections made supra cite legal authorities in regard to why the Applicant is alleged to have claimed patent ineligible subject matter under the Mayo test.
Applicant argues that it has claimed a “practical application” and thereby claimed patent eligible subject matter under the Mayo test. Applicant’s argument is not persuasive. As just stated, the Mayo test is a legal test and “practical application” is not part of the Mayo test but is, instead, a burden placed on examiners by the Office when they are making a 101 rejection employing the Mayo test. In regard to “practical application”, the MPEP provides examples of Supreme Court and CAFC decisions where a claimed invention has been held to be directed to patent eligible subject matter. See MPEP 2106.05(d)(I). Simply invoking “practical application” but without citing specific legal authority in support of Applicant’s argument, such as from these examples, that it has claimed patent eligible subject matter under the two-part Mayo test, therefore, does not provide a proper basis or rationale as to why the 101 rejection being made is allegedly deficient.
Applicant argues that by embodying its abstract idea by, inter alia, employing an API it has claimed patent eligible subject matter. Applicant’s argument is not persuasive to the extent that Applicant merely claims and discloses a generic API and not any improvement to an API qua API. See from the CAFC’s decision in Cxloyalty:
PNG
media_image1.png
270
506
media_image1.png
Greyscale
Cxloyalty v. Maritz Holdings, slip. op., page 16.
To the extent that Applicant now claims preventing a commercial transaction from being completed that it itself an abstract idea in terms of a method of organizing human activity. See MPEP 2106.04(a)(2)(II).
Applicant argues that its claimed invention is analogous to the Office’s Example 40. Applicant’s argument is not persuasive because preventing someone, such as a child, from buying something is not analogous to the adaptive monitoring of data traffic on a computer network.
Applicant also argues:
PNG
media_image2.png
338
686
media_image2.png
Greyscale
Applicant’s argument is not persuasive because numerous of these cited limitations are identified in the 101 rejection as being part of the abstract idea and the fact that they may be novel and/or non-obvious (“not merely well-understood, routine, and conventional”) has no bearing on whether or not they claim patent eligible subject matter. See, e.g., from the CAFC’s opinion in In re: Greenstein:
PNG
media_image3.png
176
470
media_image3.png
Greyscale
PNG
media_image4.png
200
476
media_image4.png
Greyscale
Id., slip. op., pages 6-7.
For these reasons, the rejections made supra under 35 USC 101 are maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Mike Grant whose telephone number is 571-270-1545. The Examiner can normally be reached on Monday through Friday between 8:00 a.m. and 5:00 p.m., except on the first Friday of each bi-week.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's Supervisory Primary Examiner, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL C GRANT/Primary Examiner, Art Unit 3715
Prosecution Insights