DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Application
This Communication is a Final Office Action in response to the Application filed on the 29th day of May, 2025. Currently Claims 1-20 are pending. No claims are allowed.
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 judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) with no practical application and without significantly more.
Under MPEP 2106, when considering subject matter eligibility under 35 U.S.C. § 101, 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 (step 1). If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea) (step 2A prong 1), and if so, it must additionally be determined whether the claim is integrated into a practical application (step 2A prong 2). If an abstract idea is present in the claim without integration into a practical application, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself (step 2B).
In the instant case, claims 1-20 are directed to a system, method, and non-transitory computer-readable media. Thus, each of the claims falls within one of the four statutory categories (step 1). However, the claims also fall within the judicial exception of an abstract idea (step 2). While claims 2, 9, and 16, are directed to different categories, the language and scope are substantially the same and have been addressed together below.
Under Step 2A Prong 1, the test is to identify whether the claims are “directed to” a judicial exception. Examiner notes that the claimed invention is directed to an abstract idea in that the instant application is directed to mental processes (see MPEP 2106.04(a)(2)(III).
Examiner notes that claims 1-20 recite a an automated document auditing system, method, and non-transitory readable medium for method comprising: receiving, in a hardware-comprising processor, an electronic representation of a document; receiving, in the hardware-comprising processor, a parameter list comprising a reference parameter and a data value of the reference parameter: via an optical-character-recognition engine, extracting a set of local parameters from the electronic representation, wherein the extracted set of local parameters includes an at least one error introduced by the optical-character-recognition engine; using the hardware-comprising processor to identity, from the set of local parameters, each occurrence of a local parameter corresponding to the reference parameter, for each identified occurrence of a local parameter, using the hardware- comprising processor, (i) performing a relative comparison of a data value of the respective local parameter io the data value of the reference parameter, and (ii) upon the relative comparison resulting in a mismatch due to an error of the at least one error introduced by the optical-character-recognition engine, correcting the error by performing a parameter reconciliation process; and using the hardware-comprising processor to produce an audit-result output, which is directed to concepts that are performed mentally and a product of human mental work. The limitations suggest a process similar to receiving loan documents, reconciliation processes applied to the document, and providing an output audit report, and the steps involved human judgments, observations and evaluations that can be practically or reasonably performed in the human mind, the claim recites an abstract idea consistent with the “mental process” grouping set forth in the see MPEP 2106.04(a)(2)(III).
Alternatively, Examiner notes that claims 1-20 recite a system, method, and non-transitory readable medium comprising receiving, in a hardware-comprising processor, an electronic representation of a document; receiving, in the hardware-comprising processor, a parameter list comprising a reference parameter and a data value of the reference parameter: via an optical-character-recognition engine, extracting a set of local parameters from the electronic representation, wherein the extracted set of local parameters includes an at least one error introduced by the optical-character-recognition engine; using the hardware-comprising processor to identity, from the set of local parameters, each occurrence of a local parameter corresponding to the reference parameter, for each identified occurrence of a local parameter, using the hardware- comprising processor, (i) performing a relative comparison of a data value of the respective local parameter io the data value of the reference parameter, and (ii) upon the relative comparison resulting in a mismatch due to an error of the at least one error introduced by the optical-character-recognition engine, correcting the error by performing a parameter reconciliation process; and using the hardware-comprising processor to produce an audit-result output, and is similar to the abstract idea identified in MPEP 2106.04(a)(2)(II) in grouping “II” in that the claims recite certain methods of organizing human activity such as fundamental economic practices and legal and business interactions. This is merely further embellishments of the abstract idea and does not further limit the claimed invention to render the claims patentable subject matter. The limitations, substantially comprising the body of the claim, recite standard processes found in standard practice in drafting, approving, and filing loan information. This is common practice when processing loan documents such as loan applications when information needs to be corrected in order to make sure that the terms and agreement made matches the parameters of the parties. Because the limitations above closely follow the steps standard in interactions between people and businesses such as legal/business interactions, risk management, and fundamental economic practices, and the steps of the claims involve organizing human activity, the claim recites an abstract idea consistent with the “organizing human activity” grouping set forth in the see MPEP 2106.04(a)(2)(II).
The conclusion that the claim recites an abstract idea within the groupings of the MPEP 2106.04(a)(2) remains grounded in the broadest reasonable interpretation consistent with the description of the invention in the specification. For example, [App. Spec ¶ 2], “automated method and system for auditing electronic representation of documents”. Accordingly, the Examiner submits claims 1-20, recite an abstract idea based on the language identified in claims 1 and 11, and the abstract ideas previously identified based on that language that remains consistent with the groupings of Step 2A Prong 1 of the MPEP 2106.04(a)(1).
If the claims are directed toward the judicial exception of an abstract idea, it must then be determined under Step 2A Prong 2 whether the judicial exception is integrated into a practical application. Examiner notes that considerations under Step 2A Prong 2 comprise most the consideration previously evaluated in the context of Step 2B. The Examiner submits that the considerations discussed previously determined that the claim does not recite “significantly more” at Step 2B would be evaluated the same under Step 2A Prong 1 and result in the determination that the claim does not integrate the abstract idea into a practical application.
The instant application fails to integrate the judicial exception into a practical application because the instant application merely recites words “apply it” (or an equivalent) with the judicial exception or merely includes instructions to implement an abstract idea. The instant application is directed to a method instructing the reader to implement the identified method of organizing human activity of legal interactions and risk management (i.e., legal/business interactions, risk management, and fundamental economic practices) on generically claimed computer structure. For instance, the additional elements or combination of elements other than the abstract idea itself include the elements such as “processor” recited at a high level of generality. These elements do not themselves amount to an improvement to the interface or computer, to a technology or another technical field. This is consistent with Applicant’s disclosure which states that the computing device The present invention may be implemented in software, hardware, firmware, or their combinations. When implemented in software, programming instructions for the different auditing steps described above may be implemented as separate software modules. The software may then be stored on a server(s), a local computer, a portable memory (e.g., CD, solid state memory, etc.) or it may be downloaded from cloud storage over the Internet. Once the software in the present invention is downloaded onto a server or a computer, a microprocessor inside the server or the computer executes the instructions to audit electronic documents according to the present invention. When designed in hardware or firmware, the server or the computer may audit electronic documents according to the present invention without any downloading of software code from portable storage or from cloud storage. (App. Spec. 97-98).
Accordingly, the claimed “system” read in light of the specification employs any wide range of possible devices comprising a number of components that are “well-known” and included in an indiscriminate “computer”, and “processor”, (e.g., processing device, modules). Thus, the claimed structure amounts to appending generic computer elements to abstract idea comprising the body of the claim. The computing elements are only involved at a general, high level, and do not have the particular role within any of the functions but to be an computer-implemented method using a generically claimed “processor” and “memory” and even basic, generic recitations that imply use of the computer such as storing information via servers would add little if anything to the abstract idea.
Similarly, reciting the abstract idea as software functions used to program a generic computer is not significant or meaningful: generic computers are programmed with software to perform various functions every day. A programmed generic computer is not a particular machine and by itself does not amount to an inventive concept because, as discussed in MPEP 2106.05(a), adding the words “apply it” (or an equivalent) with the judicial exception, or more instructions to implement an abstract idea on a computer, as discussed in Alice, 134 S. Ct. at 2360, 110 USPQ2d at 1984 (see MPEP § 2106.05(f)), is not enough to integrate the exception into a practical application. Further, it is not relevant that a human may perform a task differently from a computer. It is necessarily true that a human might apply an abstract idea in a different manner from a computer. What matters is the application, “stating an abstract idea while adding the words ‘apply it with a computer’” will not render an abstract idea non-abstract. Tranxition v. Lenovo, Nos. 2015-1907, -1941, -1958 (Fed. Cir. Nov. 16, 2016), slip op. at 7-8.
Here, the instructions entirely comprise the abstract idea, leaving little if any aspects of the claim for further consideration under Step 2A Prong 2. In short, the role of the generic computing elements recited in claims 1-20, is the same as the role of the computer in the claims considered by the Supreme Court in Alice, and the claim as whole amounts merely to an instruction to apply the abstract idea on the generic computerised system. Therefore, the claims have failed to integrate a practical application (2106.04(d)). Under the MPEP 2106.05, this supports the conclusion that the claim is directed to an abstract idea, and the analysis proceeds to Step 2B.
While many considerations in Step 2A need not be reevaluated in Step 2B because the outcome will be the same. Here, on the basis of the additional elements other than the abstract idea, considered individually and in combination as discussed above, the Examiner respectfully submits that the claims 1 and 11, does not contain any additional elements that individually or as an ordered combination amount to an inventive concept and the claims are ineligible.
With respect to the dependent claims do not recite anything that is found to render the abstract idea as being transformed into a patent eligible invention. The dependent claims are merely reciting further embellishments of the abstract idea and do not claim anything that amounts to significantly more than the abstract idea itself.
Claims 2-10 and 12-20 are directed to further embellishments of the abstract idea in that they are directed to aspects of the abstract idea identified above, as well as being directed to data processing and transmission which the courts have recognized as insignificant extra-solution activities (see at least M.P.E.P. 2106.05(g)). Data transmission is one of the most basic and fundamental uses there are for a generic computing device is not sufficient to amount to significantly more. The examiner takes the position that simply appending the judicial exception with such a well understood step of data transmission is not going to amount to significantly more than the abstract idea.
Therefore, since there are no limitations in the claim that transform the abstract idea into a patent eligible application such that the claim amounts to significantly more than the abstract idea itself, the claims are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. See MPEP 2106.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-2, 7, 9-12, 17, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 20190121865 to Maas et al. (hereinafter Maas) in view of U.S. Patent Application No. 20220335518 to Wellmann et al. (hereinafter Wellmann).
Referring to Claim 1 and 11 (substantially similar in scope and language), Maas discloses an automated document auditing method and non-volatile memory (see at least Maas: Abstract) comprising:
receiving, in a hardware-comprising processor, an electronic representation of a document (see at least Maas: ¶ 46 “once a document requiring archiving has been captured and validated, the system provides for immediate notification to the client (i.e., the archive requesting entity) that the document has been accepted into the archiving system and that archiving will ensue”;
receiving, in a hardware-comprising processor, a parameter list comprising a reference parameter and a reference data value of the global parameter (see at least Maas: ¶ 50-51 “provides for a user interface module (e.g., management console) that allows a user (i.e., an entity requesting archiving) to configure a document archiving process specific to the client, a document type and/or a specific individual document. In this regard the user interface module is configured to allow the user to configure/select archiving process attributes, including but not limited to, period of time between archiving cycles/batch processing, start times for a batch process, option for file conversion prior to archiving, archive file options for delivery to the archive, archive destination parameters, delivery protocols and auditing/reconciliation options”; see also Maas: ¶ 52-53 “system 10 provides for immediate reconciliation of document validation and ensuing archiving, as well as, subsequent reconciliation of the actual archiving within a likely period of time in which the user is still engaged within the client application”;
via an optical-character-recognition engine, extracting a set of local parameters from the electronic representation, wherein the extracted set of local parameters includes an at least one error introduce by the optical-character-recognition engine (further addressed below)
Examiner notes that Maas discloses extracting a set of local parameters from the electronic representations, wherein the extract set of local parameters includes an at least one error (see at least Maas: ¶ ), but fails to state that the error detection and correction is done via an optical-character-recognition engine.
However, Wellman, which talks about a method and system for generating an output data using machine learning wherein the risk level of a document is determined, teaches it is known to us an optical character recognition engine to identify texts and create text within a document (see at least Wellman: ¶ 71 “processing device 104 may perform optical character recognition techniques to a document to identify text and create machine-readable text. In some embodiments, a machine learning-based classifier (e.g., a random forest classifier) may classify the document data. In some embodiments, processing device 104 may use a machine learning classifier to classify the document data”; see also Wellman: ¶ 75 “For example, processing device 104 may provide a user interface allowing a user of processing device 104 (e.g., an instance of user device 300) to request additional information (e.g., document data, missing structured data information, unknown model inputs, or data undetermined due to a normalization error, classification error, extraction error, etc.)”; see also Wellman: ¶ 75 “processing device 104 may (e.g., according to a machine learning model) may replace values and/or impute missing values using statistical (e.g., time series analysis) and/or machine-learning approaches using context from an institution or group of institutions (e.g., time of year, past trends, current trend, a model function, etc.).”; see also Wellman: ¶ 55).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to apply the known technique of a method and system for processing documents a machine learning model trained to predict a risk level based on document data and transmitting the first model output data to the requestor device using an optical-character-recognition (as disclosed by Wellmann) to the known method and system for processing loan application (as disclosed by Maas) to analyze extracted document data and predict institutional risks. One of ordinary skill in the art would have been motivated to apply the known technique of method and system for processing documents a machine learning model trained to predict a risk level based on document data; and transmitting the first model output data to the requestor device using an optical-character-recognition because it would analyze extracted document data and predict institutional risks (see Wellmann ¶ 1).
Furthermore, it would have been obvious to one of ordinary skill in the art at the time of filing to apply the known technique of method and system for processing documents a machine learning model trained to predict a risk level based on document data; and transmitting the first model output data to the requestor device using an optical-character-recognition (as disclosed by Wellmann) to the known method and system for processing loan application (as disclosed by Maas) to analyze extracted document data and predict institutional risks, because the claimed invention is merely applying a known technique to a known method ready for improvement to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In other words, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention (i.e., predictable results are obtained by applying the known technique of method and system for processing documents a machine learning model trained to predict a risk level based on document data; and transmitting the first model output data to the requestor device using an optical-character-recognition to the known method and system for processing loan application to method and system for processing loan application). See also MPEP § 2143(I)(D).
The combination of Maas and Wellman teaches
using the hardware-comprising processor to identify, from the set of local parameters, each occurrence of a local parameter corresponding to the reference parameter (see also Maas: ¶ 52-53 “system 10 provides for immediate reconciliation of document validation and ensuing archiving, as well as, subsequent reconciliation of the actual archiving within a likely period of time in which the user is still engaged within the client application”; see also Maas: ¶ 74-75 “In this regard, the archiving management module 220 may define archiving attributes on a per-document type basis, a per-request basis or a per-client application basis. The archiving attributes that may configurable via the user interface include, but are not limited to, the predetermined interval 282 for batch processing; the start time 284 for a batch process; file format conversion options 286; batch file options 288 including compression file type; audit file delivery protocols 290, such as SFTP (Secure File Transfer Protocol), NDM (Network Data Mover), MQ (messaging Queue and the like; archive destination parameters 292 (so different types of documents can be delivered to different archive locations and the like); audit file and other reconciliation options 294 and the like”; see also Maas: ¶ 81 and 91; see also Wellman: ¶ 71 “processing device 104 may perform optical character recognition techniques to a document to identify text and create machine-readable text. In some embodiments, a machine learning-based classifier (e.g., a random forest classifier) may classify the document data. In some embodiments, processing device 104 may use a machine learning classifier to classify the document data”; see also Wellman: ¶ 75 “For example, processing device 104 may provide a user interface allowing a user of processing device 104 (e.g., an instance of user device 300) to request additional information (e.g., document data, missing structured data information, unknown model inputs, or data undetermined due to a normalization error, classification error, extraction error, etc.)”; see also Wellman: ¶ 75 “processing device 104 may (e.g., according to a machine learning model) may replace values and/or impute missing values using statistical (e.g., time series analysis) and/or machine-learning approaches using context from an institution or group of institutions (e.g., time of year, past trends, current trend, a model function, etc.).”; see also Wellman: ¶ 55);
for each identified occurrence of a local parameter, using the hardware-comprising processor: (i) performing a relative comparison of a data value of the respective local parameter to the data value of the reference parameter, and (ii) upon the relative comparison resulting in a mismatch due to an error of the at least one error introduce by the optical-character-recognition engine, correcting the error by performing a parameter reconciliation process; and using the hardware-comprising processor to produce an audit-result output (see at least Maas: ¶ 46 “providing systems, methods, computer program product and/or the like for archiving documents and related reconciliation”; see at least Maas: ¶ 50-51 “provides for a user interface module (e.g., management console) that allows a user (i.e., an entity requesting archiving) to configure a document archiving process specific to the client, a document type and/or a specific individual document. In this regard the user interface module is configured to allow the user to configure/select archiving process attributes, including but not limited to, period of time between archiving cycles/batch processing, start times for a batch process, option for file conversion prior to archiving, archive file options for delivery to the archive, archive destination parameters, delivery protocols and auditing/reconciliation options”; see also Maas: ¶ 52-53 “system 10 provides for immediate reconciliation of document validation and ensuing archiving, as well as, subsequent reconciliation of the actual archiving within a likely period of time in which the user is still engaged within the client application”; see also Maas: ¶ 74-75 “In this regard, the archiving management module 220 may define archiving attributes on a per-document type basis, a per-request basis or a per-client application basis. The archiving attributes that may configurable via the user interface include, but are not limited to, the predetermined interval 282 for batch processing; the start time 284 for a batch process; file format conversion options 286; batch file options 288 including compression file type; audit file delivery protocols 290, such as SFTP (Secure File Transfer Protocol), NDM (Network Data Mover), MQ (messaging Queue and the like; archive destination parameters 292 (so different types of documents can be delivered to different archive locations and the like); audit file and other reconciliation options 294 and the like”; see also Maas: ¶ 81 and 91; see at least Wellman: ¶ 71 “processing device 104 may perform optical character recognition techniques to a document to identify text and create machine-readable text. In some embodiments, a machine learning-based classifier (e.g., a random forest classifier) may classify the document data. In some embodiments, processing device 104 may use a machine learning classifier to classify the document data”; see also Wellman: ¶ 75 “For example, processing device 104 may provide a user interface allowing a user of processing device 104 (e.g., an instance of user device 300) to request additional information (e.g., document data, missing structured data information, unknown model inputs, or data undetermined due to a normalization error, classification error, extraction error, etc.)”; see also Wellman: ¶ 75 “processing device 104 may (e.g., according to a machine learning model) may replace values and/or impute missing values using statistical (e.g., time series analysis) and/or machine-learning approaches using context from an institution or group of institutions (e.g., time of year, past trends, current trend, a model function, etc.).”; see also Wellman: ¶ 55).
Referring to Claim 2 and 12 (substantially similar in scope and language), the combination of Maas and Wellman teaches the document auditing method of claim 1, including wherein the audit-result output lists the number of times the parameter reconciliation process resulted in failure (see at least Maas: ¶ 48).
Referring to Claim 9 and 19 (substantially similar in scope and language), the combination of Maas and Wellman teaches the document auditing method of claim 1, wherein the document is a loan document (see at least Maas: ¶ 55).
Referring to Claim 10 and 20 (substantially similar in scope and language), the combination of Maas and Wellman teaches the document auditing method of claim 1 and document auditing method of claim 11, including wherein the document is a batch of loan documents (see at least Maas: ¶ 52).
Referring to Claim 7 and 17, the combination of Maas and Wellman teaches a document auditing method of claim 1; The combination teaches wherein the parameter reconciliation process comprises using an optical-character-recognition dependent matching.
Wellmann, which talks about a method and system for processing documents, teaches it is known to process the documents based on parameters using optical character recognition (see at least Wellmann: ¶ 95).
Claim(s) 3-4 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 20190121865 to Maas et al. (hereinafter Maas) in view of U.S. Patent Application No. 20220335518 to Wellmann et al. (hereinafter Wellmann) in view of U.S. Patent Application No. 20160342589 to Brugger et al. (hereinafter Brugger).
Referring to Claim 3 and 13 (substantially similar in scope and language), the combination of Maas and Wellman teaches the document auditing method of claim 1; The combination fails to state wherein the relative comparison step comprises performing an exact-string comparison.
However, Brugger, which talks about a document collection and processing system, teaches it is known to provide a comparison of documents using an exact string comparison as well as an alias string in order to process the document (see at least Brugger: ¶ 38-39, 46, and 56).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to apply the known technique of providing a comparison of documents using an exact and alias string comparison (as disclosed by Brugger) to the known method and system for processing documents using a plurality of stored information to determine comparisons in order to determine an error of documents (as disclosed by the combination of Maas and Wellman) to for analyzing hierarchies and document collections together. One of ordinary skill in the art would have been motivated to apply the known technique of providing a comparison of documents using an exact and alias string comparison because it would for analyzing hierarchies and document collections together (see Brugger ¶ 7).
Furthermore, it would have been obvious to one of ordinary skill in the art at the time of filing to apply the known technique of providing a comparison of documents using an exact and alias string comparison (as disclosed by Brugger) to the known method and system for processing documents using a plurality of stored information to determine comparisons in order to determine an error of documents (as disclosed by the combination of Maas and Wellman) to for analyzing hierarchies and document collections together, because the claimed invention is merely applying a known technique to a known method ready for improvement to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In other words, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention (i.e., predictable results are obtained by applying the known technique of providing a comparison of documents using an exact and alias string comparison to the known method and system for processing documents using a plurality of stored information to determine comparisons in order to determine an error of documents to for analyzing hierarchies and document collections together). See also MPEP § 2143(I)(D).
Referring to Claim 4 and 14 (substantially similar in scope and language), the combination of Maas, Wellman, and Brugger teaches the document auditing method of claim 3, including wherein the relative comparison step comprises an alias-string comparison (see at least Brugger: ¶ 27, 29, 31-36, 48 and 52).
Claim(s) 5-6 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 20190121865 to Maas et al. (hereinafter Maas) in view of U.S. Patent Application No. 20220335518 to Wellmann et al. (hereinafter Wellmann) in view of U.S. Patent Application Publication No. 20120259752 to Agee.
Referring to Claim 5 and 15 (substantially similar in scope and language), the combination of Maas and Wellman teaches the document auditing method of claim 1 and claim 11; The combination fails to state wherein the parameter reconciliation process comprises using a context-dependent deductive reasoning matching process.
However, Agee, which talks about a method and system for auditing and risk tracking systems, teaches it is known to apply a context dependent reasoning matching process to identify audit risk associated loans (see at least Agee: ¶ 147, 171-172, and 788).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to apply the known technique of applying a context dependent matching process to identify similar instances or risk associated to loan applications (as disclosed by Agee) to the known method and system for processing loan application using parameter reconciliation (as disclosed by the combination of Maas and Wellman) to easily push their best practices updates to their client banks. One of ordinary skill in the art would have been motivated to apply the known technique of applying a context dependent matching process to identify similar instances or risk associated to loan applications because it would to easily push their best practices updates to their client banks (see Agee ¶ 4).
Furthermore, it would have been obvious to one of ordinary skill in the art at the time of filing to apply the known technique of applying a context dependent matching process to identify similar instances or risk associated to loan applications (as disclosed by Agee) to the known method and system for processing loan application using parameter reconciliation (as disclosed by the combination of Maas and Wellman) to easily push their best practices updates to their client banks, because the claimed invention is merely applying a known technique to a known method ready for improvement to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In other words, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention (i.e., predictable results are obtained by applying the known technique of applying a context dependent matching process to identify similar instances or risk associated to loan applications to the known method and system for processing loan application using parameter reconciliation to easily push their best practices updates to their client banks). See also MPEP § 2143(I)(D).
Referring to Claim 6 and 16 (substantially similar in scope and language), the combination of Maas, Wellman, and Agee teaches document auditing method of claim 5, including wherein the context-dependent deductive reasoning matching process comprises using a versioning criterion (see at least Agee: ¶ 1001-1105.
Response to Arguments
101 Rejections
Applicant's arguments filed with respect to claims 1-20 under 35 USC 101 have been fully considered but they are not persuasive.
Applicant argues “automatically correct for an OCR-introduced error arises and is dealt with via Applicant's parameter reconciliation process”; “claims 1 and 11 provide a technological solution to a technology-dependent problem that, as a whole, places it outside of the "Mental Process" and "Certain Methods of Organizing Human Activity ..." groupings of abstract ideas under Prong I of Step 2A”; and “using an OCR engine prior data comparison and error correction imposes meaningful limits on practicing the invention, thereby integrating any possible abstract idea exception into a practical technological application under Prong 2 of Step 2A”.
Examiner respectfully disagrees.
The courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012) ("‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same). (see MPEP 2106.04(a)(2)(III))
The courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75, 674 (noting that the claimed "conversion of [binary-coded decimal] numerals to pure binary numerals can be done mentally," i.e., "as a person would do it by head and hand."); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 120 USPQ2d 1473, 1474 (Fed. Cir. 2016) (holding that claims to a mental process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" are directed to an abstract idea, because the claims "read on an individual performing the claimed steps mentally or with pencil and paper"). Mental processes performed by humans with the assistance of physical aids such as pens or paper are explained further below with respect to point B.
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Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. As the Federal Circuit has explained, "[c]ourts 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." Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (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.’’); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (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"). Mental processes recited in claims that require computers are explained further below with respect to point C. (see MPEP 2106.04(a)(2)(III))
Claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. Examples of claims that recite mental processes include: a claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016); a claim to collecting and comparing known information (claim 1), which are steps that can be practically performed in the human mind, and Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067, 100 USPQ2d 1492, 1500 (Fed. Cir. 2011). (see MPEP 2106.04(a)(2)(III)(A))
Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures "can be carried out in existing computers long in use, no new machinery being necessary." 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of "anonymous loan shopping" recited in a computer system claim is an abstract idea because it could be "performed by humans without a computer"). (see MPEP 2106.04(a)(2)(III)(C))
In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification. For instance, examiners should review the specification to determine if the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite a mental process. (see MPEP 2106.04(a)(2)(III)(C)).
An example of a case in which a computer was used as a tool to perform a mental process is Mortgage Grader, 811 F.3d. at 1324, 117 USPQ2d at 1699. The patentee in Mortgage Grader claimed a computer-implemented system for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders, comprising a database that stores loan package data from the lenders, and a computer system providing an interface and a grading module. The interface prompts a borrower to enter personal information, which the grading module uses to calculate the borrower’s credit grading, and allows the borrower to identify and compare loan packages in the database using the credit grading. 811 F.3d. at 1318, 117 USPQ2d at 1695. The Federal Circuit determined that these claims were directed to the concept of "anonymous loan shopping", which was a concept that could be "performed by humans without a computer." 811 F.3d. at 1324, 117 USPQ2d at 1699. Another example is Berkheimer v. HP, Inc., 881 F.3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018), in which the patentee claimed methods for parsing and evaluating data using a computer processing system. The Federal Circuit determined that these claims were directed to mental processes of parsing and comparing data, because the steps were recited at a high level of generality and merely used computers as a tool to perform the processes. 881 F.3d at 1366, 125 USPQ2d at 1652-53.
Examiner notes that claims 1-20 recite a an automated document auditing system, method, and non-transitory readable medium for method comprising: receiving, in a hardware-comprising processor, an electronic representation of a document; receiving, in the hardware-comprising processor, a parameter list comprising a reference parameter and a data value of the reference parameter: via an optical-character-recognition engine, extracting a set of local parameters from the electronic representation, wherein the extracted set of local parameters includes an at least one error introduced by the optical-character-recognition engine; using the hardware-comprising processor to identity, from the set of local parameters, each occurrence of a local parameter corresponding to the reference parameter, for each identified occurrence of a local parameter, using the hardware- comprising processor, (i) performing a relative comparison of a data value of the respective local parameter io the data value of the reference parameter, and (ii) upon the relative comparison resulting in a mismatch due to an error of the at least one error introduced by the optical-character-recognition engine, correcting the error by performing a parameter reconciliation process; and using the hardware-comprising processor to produce an audit-result output, which is directed to concepts that are performed mentally and a product of human mental work. The limitations suggest a process similar to receiving loan documents, reconciliation processes applied to the document, and providing an output audit report, and the steps involved human judgments, observations and evaluations that can be practically or reasonably performed in the human mind, the claim recites an abstract idea consistent with the “mental process” grouping set forth in the see MPEP 2106.04(a)(2)(III).
The phrase "methods of organizing human activity" is used to describe concepts relating to: 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, and business relations); and managing personal behavior or relationships or interactions between people, (including social activities, teaching, and following rules or instructions).The courts have used the phrases "fundamental economic practices" or "fundamental economic principles" to describe concepts relating to the economy and commerce. Fundamental economic principles or practices include hedging, insurance, and mitigating risks. (see at least MPEP 2106.04(a)(2)(II))
An example of a case identifying a claim as reciting a fundamental economic practice is Bancorp Services., L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 103 USPQ2d 1425 (Fed. Cir. 2012). The fundamental economic practice at issue in Bancorp pertained to insurance. The patentee in Bancorp claimed methods and systems for managing a life insurance policy on behalf of a policy holder, which comprised steps including generating a life insurance policy including a stable value protected investment with an initial value based on a value of underlying securities, calculating surrender value protected investment credits for the life insurance policy; determining an investment value and a value of the underlying securities for the current day; and calculating a policy value and a policy unit value for the current day. 687 F.3d at 1270-71, 103 USPQ2d at 1427. The court described the claims as an "attempt to patent the use of the abstract idea of [managing a stable value protected life insurance policy] and then instruct the use of well-known [calculations] to help establish some of the inputs into the equation." 687 F.3d at 1278, 103 USPQ2d at 1433 (alterations in original) (citing Bilski). (see at least MPEP 2106.04(a)(2)(II)(A))
Other examples of "fundamental economic principles or practices" include: financial instruments that are designed to protect against the risk of investing in financial instruments, In re Chorna, 656 Fed. App'x 1016, 1021 (Fed. Cir. 2016) (non-precedential).
"Commercial interactions" or "legal interactions" include agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. (see at least MPEP 2106.04(a)(2)(II)(B))
An example of a claim reciting a commercial or legal interaction, where the interaction is an agreement in the form of contracts, is found in buySAFE, Inc. v. Google, Inc., 765 F.3d. 1350, 112 USPQ2d 1093 (Fed. Cir. 2014). The agreement at issue in buySAFE was a transaction performance guaranty, which is a contractual relationship. 765 F.3d at 1355, 112 USPQ2d at 1096. The patentee claimed a method in which a computer operated by the provider of a safe transaction service receives a request for a performance guarantee for an online commercial transaction, the computer processes the request by underwriting the requesting party in order to provide the transaction guarantee service, and the computer offers, via a computer network, a transaction guaranty that binds to the transaction upon the closing of the transaction. 765 F.3d at 1351-52, 112 USPQ2d at 1094. The Federal Circuit descr