DETAILED ACTION
Status of Claims
1. This office action is in response to RCE filed 2/26/2026.
2. Claims 1-20 are pending.
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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/26/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
MPEP 2161.01 Computer Programming, Computer Implemented Inventions, and 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph [R-07.2022] I. DETERMINING WHETHER THERE IS ADEQUATE WRITTEN DESCRIPTION FOR A COMPUTER-IMPLEMENTED FUNCTIONAL CLAIM LIMITATION (“Similarly, original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV.”)
Independent claims 1, 13 and 17 are rejected for lack of algorithms for the following limitations:
“digitally encode the plurality of digital check images to base64 encoding”
“determine a first SHA hash value as a function of the at least one of the base64 encoding of the front side image and the base64 encoding of back side image of the associated printed paper check;”
Dependent claims 6, 15 and 19 are rejected for lack of algorithms for the following limitations:
“determine the first SHA value comprising converting front or back image to a base-64 encoded front side image and base-64 encoded back side image and calculating the first SHA hash value of the base-64 encoded front side image combined with the base-64 encoded backside image;”
Examiner notes that neither the claims nor the specification provides sufficient disclosure of the algorithm for “digitally encoding check images to base64 encoding,” “determining SHA values as a function of base64 encoding of front and back images,” and “calculating the first SHA hash value of the base-64 encoded front side image combined with the base-64 encoded backside image” so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP 2161.01(I) (“In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed.”).
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
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1: Claims 1-12 are directed to a system; claims 13-16 are directed to a storage media; claims 17-20 are directed to a method – each of which is one of the statutory categories of inventions.
Step 2A: A claim is eligible at revised Step 2A unless it recites a judicial exception and the exception is not integrated into a practical application of the application.
Prong 1: Prong One of Step 2A evaluates whether the claim recites a judicial exception (an abstract idea enumerated in the 2019 PEG, a law of nature, or a natural phenomenon).
Groupings of Abstract Ideas:
I. MATHEMATICAL CONCEPTS
A. Mathematical Relationships
B. Mathematical Formulas or Equations
C. Mathematical Calculations
II. CERTAIN METHODS OF ORGANIZING HUMAN ACTIVITY
A. Fundamental Economic Practices or Principles (including hedging, insurance, mitigating risk)
B. Commercial or Legal Interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)
C. Managing Personal Behavior or Relationships or Interactions between People (including social activities, teaching, and following rules or instructions)
III. MENTAL PROCESSES.
Concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
See MPEP 2106.04 (a) (2) Abstract Idea Groupings [R-10.2019]
The limitations of the independent claims 1, 13 and 17 –
a [bill pay interface] configured to receive a plurality of electronic bill pay requests as electronic requests, wherein each electronic bill pay request comprises electronic data indicative of a payee, an amount, and a unique check identifier;
a [check print manager] configured to (i) generate a plurality of pre-print checks as digital files as a function of the plurality of electronic bill pay requests and (ii) provide the plurality of pre-print checks as digital files over an [electronic communication subsystem];
a [high-volume printer device] configured to (i) receive the plurality of pre-print checks as digital files over the electronic communication subsystem and (2) print the plurality of pre-print checks as a plurality of printed paper checks at high volume, wherein each printed paper check comprises a unique check identifier encoded as a datamatrix, bar code, or other machine- readable graphical code;
a [scanner device] configured to (i) digitally capture images of the plurality of printed paper checks as a plurality of digital check images in response to printing of the plurality of pre-print checks, (ii) digitally encode the plurality of digital check images to base64 encoding, and (iii) provide the plurality of digitally encoded check images as [electronic information over the electronic communication subsystem], wherein each digitally encoded check image is representative of at least one of a front side or a back side of a printed paper check;
a [check record manager] configured to (i) receive the plurality of digitally encoded check images as electronic information over the electronic communication subsystem from the scanner device (ii) read an electronic check record table stored as electronic information in an electronic data storage location comprising a plurality of electronic check records, wherein each electronic check record is indicative comprises electronic information representative of a) at least one of a front side image of an associated printed paper check or a back side image of the associated printed paper check; b) a unique check identifier of the associated printed paper check represented in at least of the front side image of the associated printed paper check or the back side image of the associated printed paper check; and (iii) for each encoded check image of the plurality of digital check images;
determine a first SHA hash value as a function of the at least one of the base64 encoding of the front side image and the base64 encoding of back side image of the associated printed paper check;
recognize a first unique check identifier, encoded as a datamatrix, bar code, or other machine-readable graphical code, from the at least one of the front side image and the back side image;
select a first [electronic check record] with the first unique check identifier from the [electronic check record table] in response to recognizing the unique check identifier; and
update the first [electronic check record in the electronic check record table with the first SHA hash value]; and
a [check image interface] configured to (i) receive an electronic check image request, wherein the electronic check image request is indicative of a requested hash value, (ii) select a requested [electronic check record from the electronic check record table] with the requested hash value, and (iii) return an electronic response record in response to receipt of the electronic check image request and selection of the requested electronic check record, wherein the electronic response record includes at least one of the front side image or the back side image that are associated with the requested hash value by the requested electronic check record.
– recite Certain Methods of Organizing Human Activity and/or Mathematical Concepts.
Check printing to process bill pay request is a Commercial/Legal Interaction. Encoding check images to base64 encoding and determining SHA hash value as a function of base64 encoding involves Mathematical Concepts. Hence, the independent claims recite a combination of abstract ideas.
The limitations of the dependent claims –
(claim 2) scanning a front side and a back side of each printed paper check.
(claim 3) the bill pay interface further includes a security setting for access and is configured to receive bill pay requests in response to entry of security setting.
(claims 4, 14,18) determining whether a count of the plurality of bill pay requests exceeds a predetermined count threshold; determining whether an elapsed time from a last printing exceeds a predetermined time threshold; and generating the plurality of pre-print checks in response to a determination that the count exceeds the predetermined count threshold or a determination that the elapsed time exceeds the predetermined time threshold.
(claim 5) read of table of checks from the scanner device.
(claims 6, 15, 19) determine the first SHA value comprising converting front or back image to a base-64 encoded front side image and base-64 encoded back side image and calculating the first SHA hash value of the base-64 encoded front side image combined with the base-64 encoded backside image; finding a first electronic check record for the printed check that matches the first unique check identifier; updating the first electronic check record with a location of the front side image and a location of the back side image within the data storage location.
(claim 7) updating the electronic check record for each printed paper check comprises moving the plurality of digital check images to the data storage location.
(claims 8, 16, 20) receiving the electronic check image request comprises validating security of the electronic request.
(claim 9) determining whether an electronic check record includes a hash value that matches the requested hash value of the electronic check image request; and returning an error message in response to a determination that no electronic check record includes the hash value that matches the requested hash value, wherein returning the electronic response record further comprises returning the electronic response record in response to a determination that the electronic check record includes the hash value that matches the requested hash.
(claim 10) retrieving at least a front side image or a back side image from the data storage location indicated by the electronic check record in response to the determination that the electronic check record includes the hash value that matches the requested hash; and providing the retrieved front side image or the back side image in the electronic response record.
(claim 11) the check image interface is further configured to (i) receive an electronic check re- print request, wherein the electronic check re-print request is indicative of the requested hash value, and (ii) retrieve at least the front side image or the back side image that is associated with the requested hash value; and the check print manager is further configured to prepare a second pre-print check as a function of at least the front side image or the back side image.
(claim 12) wherein the check print manager is further configured to provide the second pre-print check to a low-volume printer device.
– also constitute Certain Methods of Organizing Human Activity and/or Mathematical Concepts.
Hence under Prong One of Step 2A, claims 1-20 recite a combination of judicial exceptions. See MPEP 2106.04 B. Evaluating Claims Reciting Multiple Judicial Exceptions (“In some claims, the multiple exceptions are distinct from each other,”). See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract.”).
Prong 2: Prong Two of Step 2A evaluates whether the claim recites additional elements that integrate the judicial exception into a practical application of the exception.
Limitations that are indicative of integration into a practical application include:
Improvements to the functioning of a computer or to any other technology or technical field – see MPEP 2106.05(a)
Applying the judicial exception with, or by use of, a particular machine – see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing – see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception – see MPEP 2106.05(e)
Limitations that are not indicative of integration into a practical application include:
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 – see MPEP 2106.05(f)
Adding insignificant extra-solution activity to the judicial exception – see MPEP 2106.05(g)
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
Additional elements recited by the claims, beyond the abstract idea, include: computing device comprising: bill pay interface, check print manager, check record manager, check image interface; scanner device; high-volume printer device; low-volume printer device; plurality of check images; electronic bill pay request; electronic communication subsystem; electronic data storage location; electronic check record; electronic check image; electronic response record.
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[0032] (“The check print server 102 may be embodied as any type of device capable of performing the functions described herein. For example, the check print server 102 may be embodied as, without limitation, a server, a rack-mounted server, a blade server, a workstation, a network appliance, a web appliance, a desktop computer, a laptop computer, a tablet computer, a smartphone, a consumer electronic device, a distributed computing system, a multiprocessor system, and/or any other computing device capable of performing the functions described herein.”)
[0035] (“As shown in FIG. 1, the check print server 102 is coupled to the high-volume printer 104 and the scanner 106. The high-volume printer 104 may be embodied as a litho web press, a high speed digital ink jet printer, or any other printing system capable of printing checks on two sides (e.g., front and back) at high volumes. For example, in an embodiment the high-volume printer 104 may be capable of printing at least 100,000 checks per hour. The high-volume printer 104 prints checks onto a continuous paper medium 108. As shown in FIG. 1, the paper 108 is stored in rolls 110, 112. Roll 110 is a roll of blank paper that is fed to the high-volume printer 104.”)
[0036] (“The printed paper 108 output by the printer 104 is continuously fed through the scanner 106, which scans both sides of the paper 108. The scanner 106 may be embodied as any digital scanner, digital camera, or other imaging device capable of capturing images of the paper 108 as it is produced by the printer 104. For example, in the illustrative embodiment, the scanner 106 may be capable of scanning at least 100,000 checks per hour. The scanner 106 may include multiple cameras or other imaging elements to provide redundancy, error correction, or otherwise ensure that all checks printed by the high-volume printer 104 are scanned. As shown in FIG. 1, after being scanned by the scanner 106, the printed checks on the continuous paper 108 are stored on the roll 112.”)
[0040] (“Referring now to FIG. 2, in the illustrative embodiment, the check print server 102 establishes an environment 200 during operation. The illustrative environment 200 includes a bill pay interface 202, a check print manager 204, a check record manager 206, and a check image interface 208. The various components of the environment 200 may be embodied as hardware, firmware, software, or a combination thereof. As such, in some embodiments, one or more of the components of the environment 200 may be embodied as circuitry or a collection of electrical devices (e.g., bill pay interface circuitry 202, check print manager circuitry 204, check record manager circuitry 206, and/or check image interface circuitry 208). It should be appreciated that, in such embodiments, one or more of those components may form a portion of the processor 120, the I/O subsystem 122, and/or other components of the check print server 102.”)
MPEP 2106.05(f) Mere Instructions To Apply An Exception [R-10.2019]:
(1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words “apply it”. See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015). In contrast, claiming a particular solution to a problem or a particular way to achieve a desired outcome may integrate the judicial exception into a practical application or provide significantly more. See Electric Power, 830 F.3d at 1356, 119 USPQ2d at 1743.
By way of example, in Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017), the steps in the claims described “the creation of a dynamic document based upon ‘management record types’ and ‘primary record types.’” 850 F.3d at 1339-40; 121 USPQ2d at 1945-46. The claims were found to be directed to the abstract idea of "collecting, displaying, and manipulating data." 850 F.3d at 1340; 121 USPQ2d at 1946. In addition to the abstract idea, the claims also recited the additional element of modifying the underlying XML document in response to modifications made in the dynamic document. 850 F.3d at 1342; 121 USPQ2d at 1947-48. Although the claims purported to modify the underlying XML document in response to modifications made in the dynamic document, nothing in the claims indicated what specific steps were undertaken other than merely using the abstract idea in the context of XML documents. The court thus held the claims ineligible, because the additional limitations provided only a result-oriented solution and lacked details as to how the computer performed the modifications, which was equivalent to the words “apply it”. 850 F.3d at 1341-42; 121 USPQ2d at 1947-48 (citing Electric Power Group., 830 F.3d at 1356, 1356, USPQ2d at 1743-44 (cautioning against claims “so result focused, so functional, as to effectively cover any solution to an identified problem”)).
Here, Examiner finds that the following claim limitations in the independent claims 1, 13 and 17 have been recited in a result-focused and functional way lacking in technical details such they cover any solution to an identified problem:
generate a plurality of pre-print checks as digital files as a function of the plurality of electronic bill pay requests
digitally encode the plurality of digital check images to base64 encoding
provide the plurality of digitally encoded check images as electronic information over the electronic communication subsystem, wherein each digitally encoded check image is representative of at least one of a front side or a back side of a printed paper check
determine a first SHA hash value as a function of the at least one of the base64 encoding of the front side image and the base64 encoding of back side image of the associated printed paper check;
recognize a first unique check identifier, encoded as a datamatrix, bar code, or other machine-readable graphical code, from the at least one of the front side image and the back side image;
All purported inventive concepts reside in how the ‘generate … checks as a function of … bill pay requests,’ ‘digitally encode … check images to base64,’ ‘provide … check images as electronic information,’ ‘determine … SHA hash value as a function of … bas64 encoding,’ ‘recognize … check identifier’ are technically accomplished and not in how the processing technologically achieves the result which neither the specification or the drawings shed any light on.
Examiner thus finds that any additional element(s), beyond the judicial exception, has been recited at a high level of generality such that the claim limitations amount to no more than mere instructions to apply the exception using generic components (see MPEP 2106.05(f)) or insignificant extra solution activities (see MPEP 2106.05(g)). The combination of additional elements – receiving, generating, providing, printing, digitally capturing, digitally encoding, reading, determining, recognizing, updating, selecting, returning – does not purport to improve the functioning of a computer or effect an improvement in any other technology or technical field. Instead, the additional elements do no more than “use the computer as a tool” and/or “link the use of the judicial exception to a particular technological environment or field of use.” The focus of the claims is not on improvement in computers, but on certain independently abstract ideas – receive bill pay requests, generate and print pre-print checks, scan pre-print checks into digital images, digitally encode digital images of pre-print checks to base64 encoding, read electronic check record table comprising front side image and unique check identifier of printed paper check, determine SHA hash value as a function of base64 encoding of front side image and back side image, recognize check identifier from front side and back side image, select check record in response to recognizing unique check identifier, update check record with first SHA value, receive check image request, select a requested check record with requested hash value, return response record in response to check image record – that merely uses generic components as tools. Steps that do no more than spell out what it means to “apply it on a computer” cannot confer patent eligibility.
See Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1056 (Fed. Cir. 2017) (“But merely ‘configur[ing]’ generic computers in order to ‘supplant and enhance’ an otherwise abstract manual process is precisely the sort of invention that the Alice Court deemed ineligible for patenting.”) (“Our prior cases have made clear that mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology.”). See also Clarilogic v. FormFree Holdings (concluding that gathering financial information is an abstract “a method for collection, analysis, and generation of information reports, where the claims are not limited to how the collected information is analyzed or reformed, is the height of abstraction”).
Therefore, under Prong Two of the Step 2A, the additional elements individually and in combination, do not integrate the judicial exception into a practical application.
Hence, the claims are ineligible under Step 2A.
Step 2B:
In Step 2B, the evaluation consists of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception.
As discussed in Prong Two, the additional elements in the claims amount to no more than mere instructions to apply the exception using generic computer components, which is insufficient to provide an inventive concept.
When considered individually or as an ordered combination, the additional elements fail to transform the abstract idea of – receive bill pay requests, generate and print pre-print checks, scan pre-print checks into digital images, digitally encode digital images of pre-print checks to base64 encoding, read electronic check record table comprising front side image and unique check identifier of printed paper check, determine SHA hash value as a function of base64 encoding of front side image and back side image, recognize check identifier from front side and back side image, select check record in response to recognizing unique check identifier, update check record with first SHA value, receive check image request, select a requested check record with requested hash value, return response record in response to check image record – into significantly more.
See MPEP 2106.05(f) Mere Instructions To Apply An Exception [R-10.2019].
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.
Hence, the claims are ineligible under Step 2B.
Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to a judicial exception without significantly more.
Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
US20060112013 Method and system for verifying check images
Response to Arguments
Applicant's arguments filed 2/26/2026 have been fully considered but they are not persuasive.
101
In response to the applicant’s arguments (pages 16-17, 2/25/2026) that the human mind cannot physically hold 1.98 MB of pixel data in memory, the examiner notes that the applicant’s arguments are not commensurate with the scope of the claims because the pending claims do not recite any of the cited statistics cited such as 100,000 checks per hour, 198 GB of raw pixel data, or 260 GB of text per hour for grayscale scanning, or 1 TB perf hour for color processing. Only two checks are required to invoke the limitation “a plurality of pre-print checks,” or “the plurality of digitally encoded check images,” or “an electronic check record table … comprising a plurality of electronic check records,” in claims 1, 13 and 17. Furthermore, there is no requirement that claims have to be exclusively performed in the mind in order to be rendered abstract. See MPEP 2106.04 (a)(2) III. C. A Claim That Requires a Computer May Still Recite a Mental Process (“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.”).
Applicant argues that the amended clams do not merely claim the result of determining a hash value but instead recite a collection of components that provide a particular solution.
Examiner respectfully disagrees because, when considered as an ordered combination, the additional elements merely apply a combination of judicial exceptions at high level of generality. For example, as set forth in Prong 2, all purported inventive concepts reside in how the ‘generate … checks as a function of … bill pay requests,’ ‘digitally encode … check images to base64,’ ‘provide … check images as electronic information,’ ‘determine … SHA hash value as a function of … bas64 encoding,’ ‘recognize … check identifier’ are technically accomplished and not in how the processing technologically achieves the result which neither the specification or the drawings shed any light on. For example, as per para [0061] of the specification (“In block 614, the check print server 102 converts images of the front and back of each check to a base64 encoding.”), however, the specification does not disclose any algorithm or methodology or such conversion. There are multiple methodologies in the art for converting image data to base64 as can be seen from NPL Google Image to Base64. For example, this could involve loading image as blob and using FileReader API to convert it to dataURL. See NPL StackExchange. However, the specification is silent on any specific algorithm(s) for converting image to base64. In the absence of any disclosure, the limitation “digitally encode the plurality of digital check images to base64 encoding” is so overbroad and all-encompassing that it practically amounts to claiming the result of conversion from image to base64 without reciting details on how such solution or outcome is accomplished. Thus, the limitation of determining hash value as a function of check image practically amounts to claiming the result of determining hash value from an image without providing any details that confines the claim to a particular solution to a problem.
See also Two-Way Media Ltd. v. Comcast Cable Commc’n, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017) (“The claim [before the court] requires the functional results of ‘converting,’ ‘routing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating records,’ but does not sufficiently describe how to achieve these results in a non-abstract way.”); see Intellectual. Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (“Indeed, the claim language here provides only a result-oriented solution, with insufficient detail for how a computer accomplishes it. Our law demands more.”); see Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016) (“At that level of generality, the claims do no more than describe a desired function or outcome, without providing any limiting detail that confines the claim to a particular solution to an identified problem. The purely functional nature of the claim confirms that it is directed to an abstract idea, not to a concrete embodiment of that idea.”); see Move, Inc. v. Real Estate Alliance Ltd., 721 F. App’x 950, 952-53, 954-56 (Fed. Cir. 2018) (non-precedential) (“Instead of focusing on the technical implementation details of the zooming functionality, for example, claim 1 recites nothing more than the result of the zoom.”). Similarly, “provide the plurality of digitally encoded check images as electronic information over the electronic communication subsystem, wherein each digitally encoded check image is representative of at least one of a front side or a back side of a printed paper check” merely claims the result of encode check image as electronic information with insufficient detail.
Similarly, the limitation “determine a first SHA hash value as a function of the at least one of the base64 encoding of the front side image and the base64 encoding of back side image of the associated printed paper check” has been expressed purely in terms of results, devoid of implementation details. The specification does not disclose any algorithm to determine a hash value as a function of the at least one of the front side image and the back side image. All purported inventive concepts reside in how independent claims 1, 13 and 17 determine the hash value as a function of front side image or back side image and not how they simply achieve the result of determining the hash value from the image which neither the specification or the drawings shed any light on.
For the above reasons, the additional elements do not integrate the abstract idea into a practical application.
Previously Addressed Arguments
Applicant argues that equipment used in a physical process has always been patentable subject matter.
In response, Examiner notes that the focus of the claims is not on any improvement of any device or equipment. Rather the focus of the claims is on –
determining a hash value, recognizing a first unique check identifier, selecting a first check record, updating the first check record – which is a combination of abstract ideas as set forth in Prong 1 above. Moreover, the so-called “equipment” recited in claims 1-12 has been described as consisting of modular components devoid of any structure – bill pay interface, check print manager, check record manager, check image interface – recited with intended use at a high level of generality. Therefore, it cannot be asserted that claims 1-12 recite patent eligible subject matter.
Applicant argues that the hash value is not human readable.
In response, Examiner notes that since the claims do not specify any particular hashing algorithm, number of characters, etc., there is no reason why a human analyst cannot read and update a series of alphanumeric characters on a table. Moreover, the limitation “determine a hash value as a function of the at least one of the front side image and the back side image of the associated printed check” has been functionally recited such that it merely claims a result or outcome without disclosing the algorithm or methodology to achieve that result.
Applicant argues that the claims improve technology by performing a distinct process different from a process performed by humans as in McRO.
Examiner respectfully disagrees.
Examiner notes that the pending claims stand in stark contrast to the claims in McRO which clearly set forth the steps that brought about improvements in phoneme generation. The claimed method in McRO “allow[ed] computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators,” providing “an improved technological result in conventional industry practice.” As the court explained in McRO, the recited rules “are limiting in that they define morph weight sets as a function of the timing of phoneme sub-sequences.” “The claimed process [in McRO] uses a combined order of specific rules that renders information into a specific format that is then used and applied to create desired results: a sequence of synchronized, animated characters.” The claims in McRO used “rules to automatically set a keyframe at the correct point to depict more realistic speech, achieving results similar to those previously achieved manually [through subjective determinations] by animators”. These rules, which were not based on subjective determinations, “allow[ed] computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated’ characters that previously could only be produced by human[s]”, effecting an improvement to technology in 3-D animation techniques.
Examiner does not see any parallel between the rules described in McRO that result in an improvement to technology in 3-D animation techniques, and the result-based, functional limitations recited in the independent claims. In contrast with McRO, there is no similar improvement to a technological process in Applicant’s claimed invention. Indeed, unlike McRO, the steps of claim 1 – determine, recognize, select, updated – are abstract ideas that can be performed in the mind or with pen and paper do not improve technology or a technical process. Cf. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (explaining that the claims in McRO “avoided being ‘abstract’ in another sense reflected repeatedly in our cases” because “they had the specificity required to transform a claim from one claiming only a result to one claiming a [particular] way of achieving it”). The present claims, on the other hand, merely recited a series of abstract mathematical/mental/human activity processes to update a check record in a check record table – which is, at most, an improvement to the business of check processing as opposed to technical improvement.
For the above reasons, the McRO analogy is inapposite here.
Previously Addressed Arguments
Applicant argues that amended claim 1 recites significant technical details that do not recite fundamental economic practices or commercial interactions.
Examiner respectfully disagrees.
Examiner notes that claim 1, when considered as a whole – receive bill pay requests; generate and print pre-print checks; receive check images indicative of printed checks from scanner; read check record table wherein each record is indicative of each check identifier and check image; determine hash value of printed check; recognize first unique check identifier from check; select first check record with unique check identifier from check record table in response to recognizing the unique check identifier; update the first check record in the check record table with the first hash value; receive check image request indicative of a requested hash value, select a requested check record from the check record table with requested hash value, and return a response record in response to check image request and selection of check record indicating check image associated with hash value – describes a series of steps involved in check processing which require observation, evaluation, judgement and opinion and thus constitutes Mental Process. In addition, since check processing has been a Fundamental Economic Practice in commerce, it also constitutes Certain Methods of Organizing Human Activity.
Each of the steps can be carried out by humans using pencil, paper and a check printer. A human analyst can receive a bill pay request in person, print checks from scanner, read printed check record table, visually recognize unique cheque identifier, select a check record with the unique identifier from the check record table, update the check record in the check record table with hash value, receive check image request indicative of a requested hash value, select a requested check record from the check record table with requested hash value, and return a response record in response to check image request and selection of check record indicating check image associated with hash value – require little more than observation, evaluation, judgement and opinion and thus constitute abstract idea(s). None of the above steps are of a nature that cannot be carried out by humans using pencil, paper and a check printer. See MPEP 2106.04(a)(2) Abstract Idea Groupings [R-07.2022] III. MENTAL PROCESSES B. A Claim That Encompasses a Human Performing the Step(s) Mentally With or Without a Physical Aid Recites a Mental Process.
Examiner also notes that in the independent claims 1, 13 and 17, the limitation “determining hash value associated with front or rear image of a check” has been recited a high level of generality. Dependent claims 6, 15 and 19 further define the step of determining hash value by converting the check images to base064 encoded image – that constitutes Mathematical Concepts.
Applicant argues that the independent claims do not recite fundamental economic principles or commercial or legal interactions; rather they claim systems and methods for printing, scanning and accessing images of paper checks. Applicant points to para [0031] to argue that the claims recite improvement to a computer or other technological field.
Examiner respectfully disagrees.
The history of check as a means of payment stretches back to the eleventh century. MICR encoding of payment information on a check was invented by Stanford University researchers in cooperation with Bank of America in 1954 and became industry standard by 1962. See NPL “The Evolution of Check as a Means of Payment: A Historical Survey”, Federal Reserve of Atlanta, 2008. Examiner notes that since the check is a means of payment, the limitations recited in the independent claims are merely directed to carrying out the necessary economic activity of generating and printing this vital economic instrument for use in everyday commercial interactions. A person or entity cannot make a payment to another person or entity until the check is printed with the necessary information for processing the check such as account number and routing number.
The independent clams merely automate the previously manual method of preparing hand written checks using scanners and printers. See Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1056 (Fed. Cir. 2017) (“But merely ‘configur[ing]’ generic computers in order to ‘supplant and enhance’ an otherwise abstract manual process is precisely the sort of invention that the Alice Court deemed ineligible for patenting.”) (“Our prior cases have made clear that mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology.”).
Therefore, to assert that printing of checks is not a Fundamental Economic Practice is not persuasive.
With respect to Applicant’s arguments citing para [0031] such as electronic transmission of check images, improvement in speed, security, etc. Examiner notes that courts have consistently held that relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible. See OIP v. Amazon, 788 F.3d at 1363; “‘[C]laiming the improved speed or efficiency inherent with applying the abstract idea on a computer’ [is] insufficient to render the claims patent eligible.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (quoting Intell. Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 1370 (Fed. Cir. 2015)); Intellectual Ventures I LLC v. Capital One Bank (USA) (Fed. Cir. 2015) (“[C]laiming the improved speed or efficiency inherent with applying the abstract idea on a computer [does not] provide a sufficient inventive concept.”); International Business Machines Corp. v. Zillow Group, Inc., 50 F.4th 1371, 1378 (Fed. Cir. 2022) (“Using a computer to ‘concurrently update’ the map and the list may speed up the process, but ‘mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology.’”). Further, the applicant’s argument that the claimed invention improves physical security of electronic bill processing because the printed checks may remain withing a secure facility is part of the abstract idea of Commercial/Legal Interaction of check processing, which, by its nature, is a business process that depends on secrecy and privacy for fear of counterfeiting and cannot be considered improvement to computers or technology.
The combination of limitations in claims 1-20 does not recite (i) an improvement to the functionality of a computer or other technology or technical field; (ii) a “particular machine” to apply or use the judicial exception; (iii) a particular transformation of an article to a different thing or state; or (iv) any other meaningful limitation. See MPEP 2106.05 (a)-(c), (e)-(h). Hence, the additional elements fail to integrate the abstract idea into a practical application or provide significantly more. MPEP 2106.05(f).
Conclusion
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/ARUNAVA CHAKRAVARTI/Primary Examiner, Art Unit 3692
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