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 .
Status of Claims
This is in reply to communication filed on 11/07/2025.
Claims 1, 11 and 20 have been amended.
Claims 1-20 are currently pending and have been examined.
Response to Arguments
Regarding 35 USC § 101 rejection:
Applicant argument submitted under the title “CLAIM REJECTIONS UNDER 35 U.S.C. § 101” in pages 8-10.
Applicant's arguments have been fully considered but they are not persuasive.
Applicant states the claims “do not recite an method of organizing a human activity” because they are “the computing system provides an improvement over other computing systems” for invoice generation. However, the claims expressly recite commercial/legal interactions (invoice generation; identifying/ identifying/ display invoice details) and a method of following rules and instruction to generate output data (i.e., invoices), which fall squarely within the “certain methods of organizing human activity” category of the abstract idea grouping, see MPEP 2106.04(a). Additionally, the claims considered to recite mental-process style data handling/presentation of generated results (i.e., invoices). Applicant's claims have not been shown to modify, reconfigure, manipulate, or transform the computer, computer software, or any technical elements in any discernible manner, much less yield an improvement thereto.
Furthermore, the claims utilizing a computer (processor, memory storage, display etc.) to execute the abstract idea of generating invoices this recitation to the generic computer technology that is being used as a tool to execute the steps that define the abstract idea do not provide for integration at the 2nd prong and do not provide for significantly more at step 2B.
In addition, the claims utilizing a GUI display at a client device coupled to the database system over a network and the processor uses a billing service that controls and maintains the invoice configuration metadata within the database system that includes the first subset of the plurality of records and uses a virtual application and graphical user interface (GUI) elements to define invoice configuration criteria are insignificant extra-solution activity (data gathering/output) that does not meaningfully limit use of the abstract idea (Mayo; OIP Techs.; MPEP 2106.05(g)), Courts have rejected similar arguments where the claimed improvement is merely using standard components to process and present information (Alice; Electric Power Group; Yu v. Apple, 1 F.4th 1040 (Fed. Cir. 2021)
Even assuming, for the sake of argument, that the claims amount to an improvement over prior art techniques for generating and displaying invoices, such an improvement would be considered, at most, an improvement confined within the abstract idea itself, which is not enough to confer eligibility on the claim. For the reasons above, Applicant’s argument is not persuasive.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more.
Step 1:
Claims 1-10 recite a method, which is directed to a process.
Claims 11-19 recite at least one non-transitory machine-readable storage medium, which is directed to a manufacture.
Claim 20 recite a device, which is directed to a machine.
Therefore, each claim falls within one of the four statutory categories.
Step 2A, Prong 1 (Is a judicial exception recited?):
The independent claims 1, 11 and 20 recite the abstract idea of generating and displaying invoices, see specification [0014].
1) These claims recite a certain method of organizing human activity. The claims recite a commercial interaction to generate and display invoices from gathered data, and managing personal behavior or relationships or interaction between people by following rules or instructions to provide transaction/invoice generation service.
Offending clauses include:
“providing an invoice graphical user interface (GUI) display at a client device coupled to the database system over a network”
“the processor uses a billing service that controls and maintains the invoice configuration metadata within the database system that includes the first subset of the plurality of records”
“uses a virtual application and graphical user interface (GUI) elements to define invoice configuration criteria”
2) These claims recite a mental process. The claims recite a mental process of data collection-analysis-display (MPEP 2106.04(a)(2)(III); Electric Power Group v. Alstom, 830 F.3d 1350). The claims recite at a high level of “identifying … plurality of records … associated with the key value”, “identifying … invoice configuration metadata associated with the invoice configuration”, “display … first region .. second region”
Offending clauses include:
“providing an invoice graphical user interface (GUI) display at a client device coupled to the database system over a network”
“the processor uses a billing service that controls and maintains the invoice configuration metadata within the database system that includes the first subset of the plurality of records”
“uses a virtual application and graphical user interface (GUI) elements to define invoice configuration criteria”
The exceptions arise from organizing human activity and mental-process style data handling/presentation.
Step 2A, Prong 2 (Is the exception integrated into a practical application?):
This judicial exception is not integrated into a practical application because the claims satisfy the following criteria, which indicate that the claims do not integrate the abstract idea into practical application:
The claimed additional limitations are:
Claim 1: a database system, processor, an invoice graphical user interface (GUI), client device coupled to the database system over a network,
Claim 11: at least one non-transitory machine-readable storage medium that provides instructions that, when executed by at least one processor, are configurable to cause the at least one processor to perform operations, a database system, an invoice graphical user interface (GUI), client device coupled to the database system over a network,
Claim 20: at least one non-transitory machine-readable storage medium that stores software; and at least one processor, coupled to the at least one non-transitory machine-readable storage medium, to execute the software that implements a billing service, a database system, an invoice graphical user interface (GUI), client device coupled to the database system over a network,
The additional limitation are directed to using a generic computer to process information and perform the abstract idea. Therefore, the limitations merely amount to adding the words “apply it” (or an equivalent) to the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, as discussed in MPEP 2106.05(f).
Claims 1, 11 and 20: “providing an invoice graphical user interface (GUI) display at a client device coupled to the database system over a network”, “the processor uses a billing service that controls and maintains the invoice configuration metadata within the database system that includes the first subset of the plurality of records”, “uses a virtual application and graphical user interface (GUI) elements to define invoice configuration criteria” are insignificant extra-solution activity (data gathering/output) that does not meaningfully limit use of the abstract idea (Mayo; OIP Techs.; MPEP 2106.05(g)).
Therefore, the recited exceptions are not integrated into a practical application.
Step 2B (Does the claim recite additional elements that amount to significantly more that the judicial exception?):
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As for Step 2B analysis, knowing the consideration is overlapping with Step 2A, Prong 2. The Step 2B considerations have already been substantially addressed under Step 2A Prong 2, see Step 2A Prong 2 analysis above. As discussed above, the additional imitations amount to adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, as discussed in MPEP 2106.05(f).
Further, with respect to the insignificant extra solution activity recited in the claims, these elements are similar to at least the following concepts determined by the courts to be insignificant extra solution activity that does not amount to significantly more than the abstract idea:
a) 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). See MPEP 2106.05(d)
b) Obtaining information about transactions using the Internet to verify credit card transactions, CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011);
c) Consulting and updating an activity log, Ultramercial, 772 F.3d at 715, 112 USPQ2d at 1754. See MPEP 2106.05(g).
Accordingly, the claims do not include “significantly more” than the judicial exceptions.
In addition, the dependent claims recite:
Step 2A, Prong 1 (Is a judicial exception recited?):
Dependent claims 2-10 and 12-19 recitations further narrowing the abstract idea recited in the independent claims 1, 11 and 20 and therefore directed towards the same abstract idea.
Step 2A, Prong 2 and Step 2B:
The dependent claims 2-10 and 12-19 further narrow the abstract idea recited in the independent claims 1, 11 and 20 and are therefore directed towards the same abstract idea.
The dependent claims recite the following additional limitations:
Claims 8 and 18: a database of the database system,
Claims 12-19: the at least one non-transitory machine-readable storage medium,
However, the examiner finds each of these additional elements to be directed to merely “apply it” or applying a generic technology to perform the recited abstract idea of generating invoices, the recitation to the generic computer technology that is being used as a tool to execute the steps that define the abstract idea do not provide for integration at the 2nd prong and do not provide for significantly more at step 2B.
Therefore, the limitations on the invention of claims 1-20, when viewed individually and in ordered combination are directed to in-eligible subject matter.
Distinguished Over Prior Art
Examiner is in agreement with applicant’s amendments and arguments filed on 05/27/2025. The claims 1-20, in present form, have overcome the prior art rejections and the examiner has been unable to find the claimed limitations in the prior art. The prior art on record, alone or in combination, neither anticipates, reasonably teaches, nor renders obvious the applicant's claimed invention. The examiner has been unable to find the claimed limitations in any prior art. Accordingly, the applicant needs to address the outstanding rejections above in order to issue an allowability notice. The reason to withdraw the 35 USC 103 rejection of claims 1-20 in the instant application is because the prior art of record fails to teach the overall combination as claimed. Therefore, it would not have been obvious to one of ordinary skill in the art to modify the prior art to meet the combination above without unequivocal hindsight and one of ordinary skill would have no reason to do so. Upon further searching the examiner could not identify any prior art to teach these limitations. The prior art on record, alone or in combination, neither anticipates, reasonably teaches, not renders obvious the Applicant’s claimed invention. Accordingly, the examiner recommends addressing the outstanding rejections above.
Conclusion
1. 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.
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/AVIA SALMAN/Primary Patent Examiner, Art Unit 3627