CTFR 17/975,699 CTFR 81148 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Rejections - 35 USC §101 07-04-01 AIA 07-04 1. 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. 2. Claim 17 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Subject Matter Eligibility Standard 3. The examiner contends that, under the judicial exceptions enumerated in the MPEP § 2106, to determine the patent-eligibility of an application, a two- part analysis has to be conducted. Part 1: it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. See MPEP 2106 .03. Part 2A: Prong 1: (1) Determine if the claims are directed to an abstract idea or one of the judicial exceptions. Examples of abstract ideas referenced in Alice Corp. include: 1. Certain method of organizing human activity such as Fundamental Economic Practices, Commercial and Legal Interactions, or Managing Personal Behavior or Relationships or Interactions Between People. 2. A mental process. 3. Mathematical relationships/formulas. Part 2A: Prong 2: determine if the claim as a whole integrates the judicial exception into a practical application. Part 2B: determine if the claim provides an inventive concept. Analysis 4. Under Step 1 of the analysis, it is found that the claim indeed recites a series of steps and therefore, is a process - one of the statutory categories. Under Step 2A (Prong 1), using claim 17 as the representative claim, it is determined that apart from generic hardware and extra-solution activity discussed in Step 2A, Prong 2 below, the claim as a whole recites a method of organizing human activity. For instance, the claim language “executing a funds transfer between a transfer initiator and a transfer recipient; a receiver…a request for a person-to-person value transfer, said request comprising a request identifier, said request identifier being based on one or more of a 20-byte string used to uniquely identify an organization participant in the Zelle network,; a 64-byte string used to uniquely identify an organization participant in the Zelle network, and a 20-byte string of characters used to uniquely identify a Zelle participant in a Financial Transaction Manager (FTM)…” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. Thus, the claim recites a judicial exception, i.e., an abstract idea. Under Step 2A (Prong 2), the examiner contends that the claim recites a combination of additional elements including “a transmitter for transmitting the request to a shared database; and a shared database that is configured to operate in combination with the processor to determine whether multiple targets are associated with the request identifier, and a transfer mechanism shared database that is configured to receive the request, query existing transfer mechanism accounts, and process queries; wherein, when multiple targets are associated with the request identifier, the shared database that is further configured to operate in combination with the processor and the transmitter to notify the transfer initiator that multiple targets are associated with the request identifier and to prompt the transfer initiator to select one of the multiple targets to function as a recipient target for the value transfer; wherein the receiver is further configured to receive…a selection of the one of the multiple targets to function as the recipient target for the value transfer; and a router to route the value transfer to the recipient target; and wherein the transfer mechanism shared database is further configured to initiate: a first query regarding whether the transfer recipient has an existing transfer mechanism account; a second query based on the first query regarding whether the request identifier exist within other participating organizations; and process a return result from the second query.” These additional elements, considered in the context of claim 17 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of inputting data, processing data, and outputting data using a generic computer system. In other words, these additional limitations are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, the processor, router and database are caused to perform these steps. The processor, router and shared database, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Further, the additional limitations can be reasonably characterized as reciting a patent-ineligible mental process, insignificant extra-solution activities. For instance, the steps of “a transfer mechanism shared database that is configured to receive the request, query existing transfer mechanism accounts, and process queries; transmitting the request to a shared database; wherein the receiver is further configured to receive…a selection of the one of the multiple targets to function as the recipient target for the value transfer; and a router to route the value transfer to the recipient target,” when considered as a whole, are mere data gathering steps considered to be insignificant extra-solution activities of receiving and sending data from one system to another (see Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir. 2016 ). Further still, the limitations “a shared database…that is configured to operate in combination with the processor to determine whether multiple targets are associated with the request identifier; wherein, when multiple targets are associated with the request identifier, the shared database that is further configured to operate in combination with the processor and the transmitter to notify the transfer initiator that multiple targets are associated with the request identifier and to prompt the transfer initiator to select one of the multiple targets to function as a recipient target for the value transfer; and wherein the transfer mechanism shared database is further configured to initiate: a first query regarding whether the transfer recipient has an existing transfer mechanism account; a second query based on the first query regarding whether the request identifier exist within other participating organizations; and process a return result from the second query” are directed to the analysis of data, which is nothing but the automation of mental tasks. See Benson, Bancorp and Cyberphone. Also s ee Electric Power, 830 F.3d at 1354 (“[W]e have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes. Further, wherein each of the multiple targets comprises a distinct account, each distinct account being associated with a different financial institution; wherein each of the multiple targets comprises a distinct account, each distinct account being associated with a different financial institution; wherein the shared database prompts the transfer initiator to select one of the multiple targets to function as the recipient target for the value transfer by presenting a selectable grid to the transfer initiator, said selectable grid that comprises a list of the multiple targets; wherein the shared database prompts the transfer initiator to select one of the multiple targets to function as the recipient target for the value transfer by presenting a selectable grid to the transfer initiator, said selectable grid that comprises a list of the multiple targets; wherein the selectable grid comprises an independent selection option associated with each of the multiple targets; wherein, upon a completion of the routing of the value transfer to the recipient target, the system stores an audit log of the value transfer; wherein, upon a completion of the routing of the value transfer to the recipient target, an audit log of the value transfer captures for distribution; wherein the shared database, in conjunction with the processor, prompts the request initiator to select one of the multiple targets to function as the recipient target for the value transfer, send an e-mail to the transfer initiator, the e-mail being retrieved based on a 20-byte string of characters associated with the recipient target; and wherein the prompting the request initiator to select one of the multiple targets to function as the recipient target for the value transfer comprises sending a selectable text message to the transfer initiator” are recited to further narrow the scope of the abstract idea. Further still, the shared database, processor and transmitter are simply being applied to carry out the abstract idea. In all, these recited steps merely describe an intangible property of data that does not affect the examiner’s characterization of the additional limitations as insignificant extra-solution activities and the automation of mental tasks. Thus, it is determined that claim 17 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception. Under Step 2B, it is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 17 are the generically recited “processor, shared database and router.” The specification does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional hardware components or systems being used in their ordinary manner. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add 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. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself. The examiner contends that the ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188— 89 (1981).” A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.” Specifically, an improvement to an abstract idea cannot be a basis for determining that the claim recites significantly more than an abstract idea. Furthermore, relying on a “processor” to “perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OJP Techs., Inc. v. Amazon.com, Inc., 7788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, the examiner concludes that the claim does not recite additional elements that amount to significantly more than the judicial exception within the meaning of the 2019 Guidance. Note: The analysis above applies to all statutory categories of invention. As such, the independent claims otherwise styled as a computer-readable medium encoded to perform specific tasks, machine or manufacture, for example, would be subject to the same analysis. Furthermore, the limitations in the dependent claims are thus subject to the same analysis as in claim 17 and are rejected using the same rationale as in claim 17 above. More specifically, dependent claims 18-24 do not recite additional elements but merely further narrow the scope of the abstract idea. Response to Arguments 07-37 AIA Applicant's arguments filed on 02/12/26 have been fully considered but they are not persuasive. In response to applicant’s argument that the claim as currently amended covers a particular solution to real-world problem, the examiner disagrees. The examiner contends that there is a clear difference between the improvement in computer functionality, on one hand, and the use of existing computer as tools to perform a particular task, on the other. The alleged improvement that applicant touts do not concern an improvement to computer technology and capabilities but instead relate to an alleged improvement in computer-based process; that is, a process in which a computer is used as a tool in its ordinary capacity which is to process data. (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept’’); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea”); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“What is needed is an inventive concept in the non-abstract application realm’) . Conclusion 07-39 AIA 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 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 OJO O OYEBISI whose telephone number is (571)272-8298. The examiner can normally be reached on Monday-Friday, 9am-7pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Behncke can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. 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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. /OJO O OYEBISI/Primary Examiner, Art Unit 3695 Application/Control Number: 17/975,699 Page 2 Art Unit: 3695 Application/Control Number: 17/975,699 Page 3 Art Unit: 3695 Application/Control Number: 17/975,699 Page 4 Art Unit: 3695 Application/Control Number: 17/975,699 Page 5 Art Unit: 3695 Application/Control Number: 17/975,699 Page 6 Art Unit: 3695 Application/Control Number: 17/975,699 Page 7 Art Unit: 3695 Application/Control Number: 17/975,699 Page 8 Art Unit: 3695 Application/Control Number: 17/975,699 Page 9 Art Unit: 3695 Application/Control Number: 17/975,699 Page 10 Art Unit: 3695
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