DETAILED ACTION
Status 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 May 12, 2025. Claims 22 and 33 are canceled. Claims 21, 23-32 and 34-42 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 Rejection Analysis
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).
“ 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 21 which is illustrative of independent claims 32 and recites:
21. A system, comprising: at least one memory storing instructions; and at least one processor
configured to execute the instructions to:
receive a third party request seeking access to user data on a distributed computer system;
based on third party request; transmit a request to a service provider associated with the user data to authorize the third-party access to the user data;
transmit, a request to a user associated with the user data to authorize the third party to access the user data;
receive responses to the request to the service provider and the request to the user;
determine, based on the responses, that the third party is authorized to access to the user data; and based on the determination that the third party is authorized to access the user data;
configure a digital certificate identifying the third party and the consumer data that the third party is authorized to access; and
provide the configured digital certificate to the third party.
2A, Prong One, It is a certain method of organizing human activity because
Taking the broadest reasonable interpretation, the invention is directed to a method of organizing human activity that entails evaluating and granting access to a user’s information to a third party which is a commercial or legal interaction of accessing financial information of a consumer based on predefined conditions.(App. Spec. paras. 006-008; Abstract). This is similar to where a commercial agreement between the transacting parties lays out the terms governing when and how access is granted to a consumer’s account.
These limitations describe steps a person would take for requesting access to a user or consumer’s information by a third party from a financial institution whereby the request is evaluated against predefined criteria in which (see App. Spec. paras. 0005-0008). Evaluating information based on the existing data as recited in the claims are nothing more than gathering data and applying a set of instructions to the data.
2A Step Two
Beyond the abstract idea, the additional elements recite hardware components such as a processor (see App. Spec. para. 0026 – “Cloud platform 101 may be a computer-based system including computer system components, such as one or more servers, desktop computers, workstations, tablets, hand held computing devices, memory devices, and/or internal network(s) connecting the components. In one embodiment, cloud platform 101 may be a server that includes one or more processor(s), memory devices, and interface components configured to provide a cloud-based service. As used in this disclosure, services, processes, or applications that are “cloud-based” refer to scalable, distributed execution of one or more software processes over a network using real or virtual server hardware. Cloud platform 101 may be a single server or a distributed computer system including multiple servers or computers that interoperate to perform one or more of the processes and functionalities associated with the disclosed embodiments.”), 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 request for access is processed and not one of a technology or technological field.
Although the claims recite:
based on the determination that the third party is authorized to access the user data;[[,]]
configure a digital certificate identifying the third party and the consumer data that the third party is authorized to access; and
provide the configured digital certificate to the third party.
these suggests the type of authentication process used in identifying the consumer data, absent is any support for the claims as recited for how it is an improvement to the computer or technical field beyond automating the process of authorizing access to a consumer’s information by a third party.
The innovation as claimed appears to be directed to the user’s objective of requesting access to a consumer or user’s banking information and providing a certificate, albeit a digital certificate, as evidence of the verified identity of the transacting parties, rather than the integration of a practical application.
In particular, absent is any indication as to how generating a digital certificate amounts to an improvement to a technical field. There is a lack of improvement to a computer or technical field of identity certification as proof that the user’s data can be provided to the third party, 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 processor (see App. Spec. paras. 0026-0027) 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 23-31 and 34-42 are rejected under 35 U.S.C. § 101. For example, claims 23-27 provide descriptive material of the conditions or rules used in the certifying the identities of the transacting parties. 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 claims 21 and 32 are rejected under 35 U.S.C. § 101 including dependent claims 23-31 and 34-42 which fall with claims 21, 23-32 and 34-42. Therefore, claims 21, 23-32 and 34-42. 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 21, 23-32 and 34-42 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more. The claim recites 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.
Claim 21 which is illustrative of independent claims 32 and recites:
21. A system, comprising: at least one memory storing instructions; and at least one processor
configured to execute the instructions to:
receive a third party request seeking access to user data on a distributed computer system;
based on third party request; transmit a request to a service provider associated with the user data to authorize the third-party access to the user data;
transmit, a request to a user associated with the user data to authorize the third party to access the user data;
receive responses to the request to the service provider and the request to the user;
determine, based on the responses, that the third party is authorized to access to the user data; and based on the determination that the third party is authorized to access the user data;
configure a digital certificate identifying the third party and the consumer data that the third party is authorized to access; and
provide the configured digital certificate to the third party.
23. The system of claim 21, wherein the digital certificate comprises a Secure Sockets Layer (SSL) certificate.
24. The system of claim 21, wherein the user data comprises transaction history data of the user associated with the service provider.
25. The system of claim 21, wherein the user data comprises information associated with a financial services account of the user associated with the service provider.
26. The system of claim 21, wherein the user data further comprises data associated with transfer of money from one consumer’s account to another consumer’s account.
27. The system of claim 21, wherein the user data further comprises data associated with configuring recurring payments.
28.The system of claim 21, wherein the access request is received from a mobile device via a network.
29. The system of claim 21, wherein the received request from the third party further comprises a request for the service provider to perform one or more functions associated with the user data.
30. The system of claim 21, wherein the service provider is a financial institution.
31. The system of claim 21, wherein the third party is a mobile services provider seeking to access the user data via a mobile application.
The invention as claimed recites an abstract idea of certifying the identity of transacting parties where there is a request by a third party to access information of consumer from a financial institution. The transaction request is made through a mobile platform (App. Spec. paras. 0005-0007) and certificate is issued where certain pre-defined conditions are satisfied.
These steps describe the process a person would take to authenticate a request to access a consumer or customer’s banking information by a third party. Further, this is an example of steps performed by the human mind as mental processes because other than the generic components, nothing precludes these steps from practically being performed as mental processes.
The steps mimic human thought processes, perhaps with paper and pencil, where the data interpretation is perceptive only in the human mind. It suggests activity that represents longstanding conduct that existed well before the advent of computers and the internet. See CyberSource Corp. b. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011).
The next step is to determine if the claims recite additional elements that integrate the judicial exception into a practical application.
Besides reciting the abstract idea, the remaining claim limitations recite generic computer components (e.g. computing device, and processor; see App. specification paras. 0024-0028; Fig. 1).
This recited abstract idea is not integrated into a practical application. In particular, the claim only recites generic computer components (e.g. computing device, processor). The 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.
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 - (e.g. computing device) amount to no more than mere instructions to apply the abstract idea using generic computer components.
Dependent claims 21, 23-31 and 34-42 provide additonal details that describe the system and do not address the issues raised in the independent claims and therefore do not amount to a technical improvement or an integration of a practical application. In conclusion, merely “applying” the exception using generic computer components cannot provide an inventive concept. Therefore, the claims 21, 23-32 and 34-42 are not patent eligible under 35 USC 101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Dominguez, USP No. 7707120, Mobile Account Authentication Service
Bhinder, USP No. 9965757, Method And System For Controlling Access To A Financial Account.
Li, USP Pub. No. 20190392417, Bank Card Adding Method, And Apparatus
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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