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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/19/2026 has been entered.
Claim Rejections - 35 USC §101
1. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
2. Claims 1-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Subject Matter Eligibility Standard
3. The examiner contends that, under the judicial exceptions enumerated in the MPEP § 2106, to determine the patent-eligibility of an application, a two- part analysis has to be conducted.
Part 1: it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. See MPEP 2106.03.
Part 2A: Prong 1: (1) Determine if the claims are directed to an abstract idea or one of the judicial exceptions. Examples of abstract ideas referenced in Alice Corp. include:
1. Certain method of organizing human activity such as Fundamental Economic Practices, Commercial and Legal Interactions, or Managing Personal Behavior or Relationships or Interactions Between People.
2. A mental process.
3. Mathematical relationships/formulas.
Part 2A: Prong 2: determine if the claim as a whole integrates the judicial exception into a practical application.
Part 2B: determine if the claim provides an inventive concept.
Analysis
4. Under Step 1 of the analysis, it is found that the claim indeed recites a series of steps and therefore, is a process - one of the statutory categories.
Under Step 2A (Prong 1), using claim 12 as the representative claim, it is determined that apart from generic hardware and extra-solution activity discussed in Step 2A, Prong 2 below, the claim as a whole recites a method of organizing human activity. For instance, the claim language “reading an original on which a transfer destination is written and generating image data of the original; and acquiring information on the transfer destination, which is included in the image data of the original, based on the extracted number and the position information of the extracted number including the position of the extracted number in the image data of the original” can be performed in the human mind. Any steps that can be performed in the human mind fall into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Under Step 2A (Prong 2), the examiner contends that the claim recites a combination of additional elements including “storing the generated image data of the original in the memory; performing optical character recognition on the generated image data stored in the memory; storing characters positioned within a range of a predetermined distance from each other as a character information item, and extracting…a number having a predetermined number of digits; storing…the extracted number having the predetermined number of digits and in association with position information of the extracted number indicating a position of the extracted number in the generated image data of the original, and performing control to transmit a transfer instruction notification including the information on the transfer destination to the server.” These additional elements, considered in the context of claim 12 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of extracting data, storing and outputting data using a generic computer system. For instance, the recited memory, server and processors are merely being applied to the abstract idea and used as tools in executing the claimed process. Similarly, the reading unit, extraction unit, a storage unit, an acquisition unit, and transmission control unit, as recited in claim 1, are merely being applied to the abstract idea and used as tools in executing the claimed process. Further, the additional limitations can be reasonably characterized as reciting a patent-ineligible insignificant extra-solution and post-solution activities. For instance, the steps of “storing the generated image data of the original in the memory; performing optical character recognition on the generated image data stored in the memory; storing characters positioned within a range of a predetermined distance from each other as a character information item, and extracting…a number having a predetermined number of digits; storing…the extracted number having the predetermined number of digits and in association with position information of the extracted number indicating a position of the extracted number in the generated image data of the original,” when considered as a whole, are mere data gathering steps considered to be insignificant extra-solution activities. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity, also see content extraction). Further, the limitations “performing control to transmit a transfer instruction notification including the information on the transfer destination to the server” is directed to an insignificant post-solution activity of sending data from one system to another (see Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir. 2016). Thus, it is determined that claim 12 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Under Step 2B, it is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional element beyond the abstract idea of claims 1, 12 and 13 are generically recited server, memory, at least one processor, a reading unit, an extraction unit, a storage unit, an acquisition unit, and a transmission control unit. The specification does not point to sufficient evidence that these components are anything other than well-understood, routine, and conventional hardware component or system being used in their ordinary manner. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
The examiner contends that the ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188— 89 (1981).” A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.” Specifically, an improvement to an abstract idea cannot be a basis for determining that the claim recites significantly more than an abstract idea. Furthermore, relying on a “processor” to “perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OJP Techs., Inc. v. Amazon.com, Inc., 7788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, the examiner concludes that the claim does not recite additional elements that amount to significantly more than the judicial exception within the meaning of the 2019 Guidance. Note: The analysis above applies to all statutory categories of invention. As such, the independent claims otherwise styled as a computer-readable medium encoded to perform specific tasks, machine or manufacture, for example, would be subject to the same analysis. Furthermore, the limitations in the dependent claims are thus subject to the same analysis as in claim 12 and are rejected using the same rationale as in claim 12 above. More specifically, dependent claims 2, 5 do not recite additional elements but merely further narrow the scope of the abstract idea. However, dependent claims 6, 8-11 recites additional elements, but these additional elements comprise the analyses of data, which is nothing but the automation of mental tasks. See Benson, Bancorp and Cyberphone. Also see Electric Power, 830 F.3d at 1354 (“[W]e have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes”). Lastly, dependent claims 3, 4, 7 recite additional elements but they are insignificant extra-solution activities; that is, data gathering.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dutta et al (Dutta hereinafter, US PAT: 2002/0152164).
Re claim 1. Dutta discloses an image processing apparatus that communicates with a server
which provides a transfer service, comprising: at least one processor; and a memory coupled to the at least one processor, the memory having instructions that, when executed by the processor, perform the operations as: a reading unit configured to read an original on which a transfer destination is written; generate image data of the original, and store the generated image data of the original in the memory (see paras 0031, 0042-0043, 0057, 0074); an extraction unit configured to perform optical character recognition on the generated image data stored in the memory (see paras 0031, 0057), to store characters positioned within a range of a predetermined distance from each other as a character information item, and to extract from among stored character information items (see paras 0043), a number having a predetermined number of digits by performing optical character recognition on the image data (see the abstract, paras 0009, 0031); a storage unit configured to store in the memory the extracted number having the predetermined number of digits in association with position information of the extracted number in the generated image data of the original (see paras 0028); an acquisition unit configured to acquire information on the transfer destination, which is included in the image data, based on the number and the position information of the number; and a transmission control unit configured to perform control to transmit a transfer instruction notification including the acquired information on the transfer destination to the server (see paras 0052-0053, 0075, 0085).
Re claim 2. Dutta discloses the image processing apparatus according to claim 1, wherein the predetermined number of digits is the same number of digits as an account number (see paras 0031.
Re claim 3. Dutta discloses the image processing apparatus according to claim 1, further comprising a display unit configured to display a confirmation screen including the acquired information on the transfer destination, and wherein when a user performs a predetermined operation as a transmission instruction on the confirmation screen, the transmission control unit performs control to transmit the transfer instruction notification to the server (see paras 0052-0053, 0085).
Re claim 4. Dutta discloses the image processing apparatus according to claim 3, wherein the instructions, when executed by the processor, perform the operations further as an instruction receiving unit configured to receive an instruction input to a screen displayed on the display unit, and wherein the instruction receiving unit receives an instruction for changing information on a transfer destination displayed on the confirmation screen (see paras 0042, 0067, 0082).
Re claim 5. Dutta discloses the image processing apparatus according to claim 1, wherein the information on the transfer destination includes a bank name, a branch office name, an account type, and an account number of the transfer destination (see paras 0082).
Re claim 6. Dutta further discloses the image processing apparatus according to claim 1, wherein the instructions, when executed by the processor, perform the operations further as a registration unit configured to register the acquired information on the transfer destination included in the transfer instruction notification transmitted to the server, and position information in the information (see paras 0042).
Re claim 7. Dutta further discloses the image processing apparatus according to claim 6, wherein the extraction unit extracts another number having the predetermined number of digits from other image data generated by the reading unit reading an original anew, and wherein in a case where information on a transfer destination, including an account number matching the other number, has been registered, and position information of the other number matches position information of the account number, the transmission control unit performs control to transmit a transfer instruction notification including the information on the transfer destination to the server (see the abstract, see paras 0031, 0052-0053).
Re claim 8. Dutta discloses the image processing apparatus according to claim 7, wherein the transfer instruction notification includes a transfer amount selected by a user from a plurality of numbers extracted from the image data, wherein the registration unit registers position information of the transfer amount in the image data in association with the information on the transfer destination, which is included in the transfer instruction notification transmitted to the server, and wherein in a case where information on a transfer destination, which includes an account number matching the other number, has been registered, and position information of the other number matches position information of the account number, the transmission control unit performs control to transmit a transfer instruction notification including a number indicated by the position information of the transfer amount in the other image data, as a transfer amount, to the server (see paras 0031, 0082).
Re claim 9. Dutta discloses the image processing apparatus according to claim 5, wherein the acquisition unit identifies a bank name of the transfer destination, which is included in the image data, based on a positional relationship between the number and a character string having “bank” at its end in the image data (see paras 0031, 0046, 0049)
Re claim 10. Dutta further discloses the image processing apparatus according to claim 5, wherein the acquisition unit identifies a branch office name of the transfer destination, is included in the image data, based on a positional relationship between the number and a character string having “branch office” or “head office” at its end in the image data (see paras 0030, 0049-0050).
Re claim 11. The image processing apparatus according to claim 5, wherein the acquisition unit identifies an account type of the transfer destination, which is included in the image data, based on a positional relationship between the number and a predetermined character string indicating an account type in the image data (see paras 0031).
Re claim 12. Claim 12 recites similar limitations to claim 1 above and thus rejected using the same art and rationale as in claim 1 above.
Re claim 13. Claim 13 recites similar limitations to claim 1 above and thus rejected using the same art and rationale as in claim 1 above.
Response to Arguments
Applicant's arguments filed on 02/19/2026 have been fully considered but they are not persuasive.
In response to applicant’s argument that the additional elements as amended in claim 1 are specific limitations other than what is well-understood, routine and conventional in the field, the examiner disagrees. The examiner contends that it is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional element beyond the abstract idea of claims 1, 12 and 13 are generically recited server, memory, at least one processor, a reading unit, an extraction unit, a storage unit, an acquisition unit, and a transmission control unit. The specification does not point to sufficient evidence that these components are anything other than well-understood, routine, and conventional hardware component or system being used in their ordinary manner. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
In response to applicant’s argument that the prior art of record fails to disclose the extraction and storage units as correctly amended, the examiner disagrees. The examiner contends that
Dutta discloses a server with a storage unit 101 (see paras 0028). Dutta further discloses a scanner (see fig.4 element 424) for extracting information/data.
Conclusion
The prior arts, Jones et al (US PAT: 8,437,532) and Wells et al (US PUB: 2005/0108163), cited but relied upon, are found pertinent to the claimed subject matter for they teach a method and system for processing financial documents/checks.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OJO O OYEBISI whose telephone number is (571)272-8298. The examiner can normally be reached on Monday-Friday, 9am-7pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Behncke can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OJO O OYEBISI/Primary Examiner, Art Unit 3695