DETAILED ACTION
1. 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 .
2. Status of Application and Claims
Claims 1-20 are pending.
Claims 1-4 and 6-20 were amended and/or newly added in the Applicant’s filing on 2/28/2025.
This office action is being issued in response to the Applicant's filing(s) on 2/28/2025.
3. Claim Interpretation
The subject matter of a properly construed claim is defined by the terms that limit its scope when given their broadest reasonable interpretation. see MPEP §2013(I)(C). Specifically, the “broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). However, “[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim.” See MPEP §2111.01, citing Superguide Corp. v. DirecTV Enterprises, Inc., 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See MPEP §2111, citing In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984).
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. See MPEP §2013(I)(C).
As such, claim limitations that contain statement(s) such as “if, may, might, can, could” are treated as containing optional language. See MPEP §2013(I)(C). As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted. See MPEP §2013(I)(C).
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. see MPEP §2111.04(II). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See MPEP §2143.03, citing Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009);
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art. In other words, if the prior art structure is capable of performing the intended use, then it meets the claim.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble. See MPEP §2111.02;
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby.” See MPEP §2111.04;
Contingent limitations. See MPEP §2111.04(II);
Printed matter. See MPEP §2111.05; and
Functional language associated with a claim term. See MPEP §2181.
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following italicized, underlined and emboldened language is interpreted as not further limiting the scope of the claimed invention.
Additionally, the following italicized, underlined and emboldened language is not necessarily an exhaustive list of claim language that is interpreted as not further limiting the scope of the claimed invention. Applicant should review all claims for additional claim interpretation issues.
Claim 1 recites a system performing operations comprising:
transmitting a soft credit check inquiry to a second third-party server, the soft credit check inquiry being associated with the first account identifier;
Claim elements pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Claims 8 and 15 have similar issues.
Claim 1 recites a system performing operation comprising:
transmitting the cardholder update file to a computing device associated with the single account provider to synchronize the second name with the selected accounts.
Examiner notes that the claimed invention does not synchronize the second name with the selected accounts. The claimed invention transmits an cardholder update with the intended purpose of having said update file to be used to synchronize the second name with the selected accounts.
The intended use or purpose of the transmitted data must result in a structural and/or functional difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use or fulfilling said purpose (i.e., the data is to be used to synchronize the second name with the selected accounts), then it meets the claim. See MPEP §2114(II), citing Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987).
Claims 8 and 15 have similar issues.
Claim 2 recites a system performing operations comprising:
in response to receiving the second name in the update file, transmitting a notification to the cardholder computing device that the one or more accounts require the updated legal name of the cardholder.
Claim elements pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Claims 9 and 16 have similar issues.
Claim 12 recites a system performing operation comprising:
receiving an access request from the cardholder computing device and, in response to the access request, transmitting a request to the cardholder computing device requesting that the cardholder enter their account credentials.
Claim elements pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Claims 5 and 19 have similar issues
4. 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 an abstract idea without significantly more.
STEP 1
The claimed invention falls within one of the four statutory categories of invention (i.e., process, machine, manufacture and composition of matter). See MPEP §2106.03.
STEP 2A – PRONG ONE
The claim(s) recite(s) a method, a system to perform a method and/or computer-readable medium containing instructions, when executed, causes a computer to perform a method comprising:
receiving an update file from a first third-party …, the update file including a second record having a second account identifier, the first name of the cardholder associated with the second account identifier, and a second name of the cardholder;
identifying a match between the first account identifier and the second account identifier, the first and second account identifiers comprising a social security number of the cardholder;
modifying the first record in the account information table by writing the second name to the first record in the account information table;
transmitting a soft credit check inquiry to a second third-party ..., the soft credit check inquiry being associated with including the first account identifier;
after transmitting a soft credit check inquiry, receiving, from the second third-party …, a list of one or more accounts associated with the first account identifier;
presenting the list of one or more accounts …, each of the presented accounts being individually selectable;
receiving, …, a selection of one or more of the one or more accounts for updating;
generating a structured cardholder update file associated with a single account provider, including writing the second name to the cardholder update file, the cardholder update file including only the selected accounts associated with the single account provider; and
transmitting the cardholder update file to a … single account provider to synchronize the second name with the selected accounts.
These limitations, as drafted, under its broadest reasonable interpretation, covers a series of steps instructing how to update accountholder information which is a fundamental economic practice, a sub-category of certain method(s) of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(A).
Additionally, these limitations, as drafted, under its broadest interpretation, covers a series of steps that can be practically performed in the human mind (e.g., observations, evaluations, judgments and opinions) which are mental process, a second enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(III).
Examiner notes that “’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” is a court-provided example of a mental process. See MPEP §2106.04(a)(2)(III)(A) citing Electric Power Group v. Alstom, SA. (Fed. Cir. 2016).
STEP 2A – PRONG TWO
The claimed invention recites additional elements (i.e., computer elements) of a database (Claim(s) 1, 8 and 15), a server (Claim(s) 1, 8 and 15), a user interface (Claim(s) 1, 8 and 15), and a computing device (Claim(s) 1, 8 and 15).
The claimed invention does not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field; improvements to the functioning of the computer itself; are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; are not applying the judicial exception with or by use of a particular machine; are not effecting a transformation or reduction of a particular article to a different state or thing; and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §2106.04(d).
The additional elements are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. See MPEP §2106.05(f). Alternately, the additional elements amount to no more than generally linking the exception to a particular technological environment or field of use. See MPEP §2106.05(h). Accordingly, these additional element(s), when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Accordingly, the claimed invention is directed to an abstract idea without a practical application.
STEP 2B
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to (i) adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, (ii) adding insignificant extra-solution activity to the judicial exception, and/or (iii) generally linking the use of judicial exception to a particular technological environment or field of use. See MPEP §2106.07(a)(II). The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
DEPENDENT CLAIMS
Dependent Claim(s) 2-7, 9-14 and 16-20 recite claim limitations that further define the abstract idea recited in respective independent Claim(s) 1, 8 and 15. As such, the dependent claims are also grouped an abstract idea utilizing the same rationale as previously asserted against the independent claims.
No additional computer components other than those found in the respective independent claims is recited, thus it is presumed that the claim is further utilizing the same generically recited computer.
As such, the dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the judicial exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination.
Accordingly, the dependent claim(s) are also not patent eligible.
Appropriate correction is requested.
5. 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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over McDill (US Patent 8,682,866), Winters (US PG Pub. 2010/0036769) and Lanham (US PG Pub. 2024/0046345).
Regarding Claim 8, McDill discloses a computer-implemented method performed by an automatic name change system, the automatic name change system including a database having an account information table (table driven matcher), the account information table including a first record (reference file) having a first account identifier (e.g., social security number) and a first name (name, such as a maiden name). (see fig. 11; col. 3, lines 45-65; col. 5, line 63 – col. 6, line 8; col. 6, lines 31-37; col. 23, line 50 – col. 24, line 16) the method comprising:
receiving an update file (demographic file containing new demographic information) from a first third-party server, the update file including a second record that includes a second account identifier (e.g., social security number), the first name (i.e., old COA information, such as a maiden name) and a second name (e.g., married name). (see col. 6, lines 31-37; col. 9, lines 35-59; col. 23, line 50 – col. 24, line 16);
identifying a match between the first account identifier and the second identifier, the first and second account identifiers comprising a social security number. (see col. 10, lines 5-29; col. 19, line 27 – col. 20, line 19);
modifying the first record (reference file) in the account information table by writing the second name (e.g., married name) to the first record (creating an updated reference file) in the account information table. (see col. 23, line 50 – col. 24, line 16);
transmitting an inquiry to a second-third party server (owner(s) or vendor(s) of the licensed reference files). (see col. 22, lines 13-44);
generating a structured update file (updated reference file) including writing the second name (e.g., married name) to the cardholder update file (updated reference file). (see col. 23, line 50 – col. 24, line 16); and
transmitting the update file (updated reference file) to a computing device associated to synchronize the second name. (see col. 23, line 50 – col. 24, line 16).
McDill does not explicitly teach a method wherein the data pertains to a cardholder, although McDill does disclose that the data pertains to credit card information. (see col. 19, line 27 – col. 20, line 19), although McDill does recite that the system accesses credit card information of the user (see col. 19, line 28 – col. 20, line 19), which would make the user a cardholder.
McDill does not teach a method comprising transmitting a soft credit check inquiry to a second third-party server, the soft credit check inquiry including the first account identifier; after transmitting a soft credit check inquiry, receiving from a third-party server, a list of one or more accounts associated with the first account identifier; presenting the list of one or more accounts on a user interface of a cardholder computing device associated with the cardholder, each of the presented accounts being individually selectable; receiving, from the cardholder computing device, a selection of one more accounts for updating; the structure update file includes only the selected accounts associated with a single account provider; or transmitting the cardholder information to the single account provider.
Winters discloses a method performed by an automatic name change system, the automatic name change system including a database storing account information table, the account information table including a first record having a first account identifier (social security number) and a first name (pre-name change) of a cardholder (account holder of credit card), the method (see abstract; para. 1, 4-5, 21 and 78-80) comprising:
transmitting an inquiry (query) to a second third-party server, the inquiry being associated with the first account identifier (account holder information). (see para. 29);
after transmitting an inquiry, receiving (obtaining), from the second third-party server, a list of one or more accounts associated with the first account identifier (list of account holder’s payment devices). (see para. 29);
presenting the list of the one or more accounts (list of merchant accounts or list of payment devices) on a user interface of a cardholder computing device associated with the cardholder, each presented accounts being individually selectable; (see para. 35 and 52);
receiving, from the cardholder computing device, a selection of one more accounts (merchants accounts) for updating. (see para. 35-40);
generating a structured update file (updated information) associated with a single account provider (corresponding merchant), including writing the second (post-name change) name to the cardholder update file, the cardholder update file including only the selected accounts (selected merchant accounts) associated with a single account provider (merchant). (see para. 35-40); and
transmitting the cardholder update file (updated information) associated with a single account provider (corresponding merchant) to synchronize the second (post-name change) name with the selected accounts. (see para. 35-40). to the single account provider.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to have modified McDill to incorporate the ability to transmit the updated information to an account provider, as disclosed by McDill, thereby ensuring an account provider is provided with up-to-date account information.
Rowe does not explicitly teach a system wherein the inquiry is a soft credit check inquiry.
Lanham discloses a system wherein the inquiry is a soft credit check inquiry. (see para. 146).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to have modified McDill and Winters to incorporate a soft credit check inquiry, as disclosed by Lanham, thereby retrieving information to identify cardholder accounts (lines of credit). (see para. 146).
Regarding Claims 9-10, McDill does not disclose a method comprising, in response to receiving the second name in the update file, transmitting a notification to the cardholder computing device, that the one or more accounts require the second name or, in response to the update file including the second name and receipt of the list one or more accounts associated with the first account identifier, generating the notification.
Lanham discloses continually transmitting notifications to the cardholder computer device and generating notifications. (see para. 155, 182 and 183)
It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to have modified McDill, Winters and Lanham to incorporate continuous notifications, as disclosed by Lanham, thereby keeping the cardholder apprised and updated concerning the performance of the method.
Regarding Claim 11, McDill discloses a method comprising parsing (via the parser) the update file and identifying the second name and the corresponding second account identifier. (see col. 22, line 44 – col. 23, line 49).
Regarding Claim 12, McDill does not teach a method comprising receiving an access request from the cardholder computing device and, in response to the access request, transmitting a request to the cardholder computing device requesting that the cardholder enter their account credentials.
Winters discloses a method comprising receiving an access request from the cardholder computing device and, in response to the access request, transmitting a request (prompt or security question) to the cardholder computing device requesting that the cardholder enter their account credentials (login and password). (see para. 21, 31, 49, 53 and 55).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have modified McDill, Winters and Jayaraman to incorporate authentication protocols, as disclosed by Winters, as submission of account credentials are standard and conventional in cybersecurity.
Regarding Claim 13, McDill does not teach a method comprising executing a two-factor authentication process with the cardholder computing device.
Lanham discloses a method comprising executing a two-factor authentication process with the cardholder computing device. (see para. 157)
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have modified McDill, Winters and Lanham to incorporate two-factor authentication protocols, as disclosed by Lanham, as two-factor authentication is standard and conventional in cybersecurity.
Regarding Claim 14, McDill does not explicitly teach a method wherein writing the updated legal name of the cardholder to a cardholder update file comprises writing the updated legal name of the cardholder to a plurality of cardholder update files, wherein each cardholder update file includes only the one or more selected accounts associated with a single account provider.
It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to have modified McDill, Winters and Lanham by duplicating claim elements contained in McDill (e.g., the first update file) to create additional claim elements (e.g., a second update file) wherein each additional claim element would serve the same function as the original claim element. In the combination each element, original element and additional element, would merely have performed the same function as it did previously, and one of ordinary skill in the art at the effective filing date of the invention would have recognized that the results of the combination were predictable. see MPEP §2144.04 (VI)(B).
Regarding Claims 1-7 and 15-20, such claims recite substantially similar limitations as claimed in previously rejected claims and, therefore, would have been obvious based upon previously rejected claims.
6. Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered. Some arguments have been rendered moot based upon new references utilized in the current rejection. However, some arguments remain relevant, as they apply to a reference and/or rejection still utilized in the current rejection. Such arguments have been fully considered but are not persuasive and are addressed below.
Claim Interpretation
Applicant argues that one of the previously asserted claim interpretations was incorrect and should be withdrawn. See Arguments, p. 10
Specifically, Applicant argues:
Soft Credit Check Inquiry is Functionally Necessary: The Office asserts that the soft credit check inquiry is non-limiting. Page 4 of the Action. However, the recited "soft credit check inquiry" initiates the return of the list of associated accounts from the second third-party server, making it a required element for the structured data updates achieved by the claim. See Arguments, p. 10.
The Examiner respectfully disagrees.
Claim 8 recites performing a method comprising:
transmitting a soft credit check inquiry to a second third-party server, the soft credit check inquiry including the first account identifier;
after transmitting a soft credit check inquiry, receiving, from the second third-party server, a list of one or more accounts associated with the first account identifier;
The claims, as written, do not recite that a soft credit check (i.e., a review of a credit report that does not impact one’s credit score) is performed. As such, the purpose of the inquiry (i.e., an inquiry for a soft credit check) and the contents of the inquiry (i.e., a first account identifier) are non-functional descriptive material and is not functionally involved in the steps recited.
Transmission of an inquiry is a prerequisite for receiving a list of one or more accounts in that the method steps are performed in a designated sequence. However, the claims do not require interpretation that a soft credit check was performed, that a soft credit check was performed using the first account identifier or that the list of one or more accounts is output from the soft credit check.
§101 Rejection
Step 2A Prong Two
Examiner assumes that the Applicant is arguing that the claimed invention recites a practical application, specifically “an improvement in the functioning of a computer, or an improvement to other technology or technical field,” and, as such, satisfies Step 2A Prong Two of the §101 Guidelines. See Arguments, pp. 11-12.
Specifically, Applicant argues:
This characterization is incorrect. In fact, a reading of independent claim 1 in its entirety makes it clear that the claimed invention is directed to an improved technical process for synchronizing legal name changes across multiple institutions, utilizing SSA record retrieval and structured data propagation to enhance processing efficiency and data integrity. Applicant respectfully submits that the present invention, according to the currently amended claims, provides a practical solution (structured, system-driven legal name updates that minimize processing delays and inconsistencies) to a particular technical problem (the inefficiency and inconsistency of disparate financial institution records failing to reflect SSA-approved name changes) in a particular field (financial data management and regulatory compliance), and employs particular machines (an ANC computing device configured to process SSA update files, perform soft credit checks, and generate structured update files for financial institutions) to achieve a useful result (increased accuracy and compliance in financial record management). See Arguments, pp. 11-12 – emphasis original.
The Examiner respectfully disagrees.
The Examiner does not dispute that the claimed invention is a practical (i.e., feasible real-world) solution to update account information. Additionally, the Examiner does not dispute that the claimed invention is addressing issues in a particular field or achieves a useful result.
However, MPEP §2106.05(a) recites:
If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. – emphasis added.
The specification does not provide any evidence that the claimed invention results in an improvement to the functioning of a computer, an improvement to conventional technology or technological processes, or is addressing a computer-centric problem. Nor that there is even a technical (i.e., technology-based) problem to be solved.
Additionally, MPEP §2106.05(f)(1) recites:
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. – emphasis added.
Even assuming there was a technical problem, the claims, as written, fail to recite the details of how a technical solution to the technical problem was accomplished.
Examiner asserts that the claimed invention is analogous to Electric Power Group LLC v. Alstom SA (Fed. Cir. 2016) in which the court stated:
The claims here are unlike the claims in Enfish. There, we relied on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on “abstract ideas” (in Alice, as in so many other § 101 cases, the abstract ideas being the creation and manipulation of legal obligations such as contracts involved in fundamental economic practices). Enfish, 822 F.3d at 1335-36; see Alice, 134 S. Ct. at 2358-59. That distinction, the Supreme Court recognized, has common-sense force even if it may present line-drawing challenges because of the programmable nature of ordinary existing computers. In Enfish, we applied the distinction to reject the § 101 challenge at stage one because the claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement—a particular database technique—in how computers could carry out one of their basic functions of storage and retrieval of data. Enfish, 822 F.3d at 1335-36; see Bascom, 2016 U.S. App. LEXIS 11687, 2016 WL 3514158, at *5; cf. Alice, 134 S. Ct. at 2360 (noting basic storage function of generic computer). The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. see Electric Power Group LLC v. Alstom SA, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016) – emphasis added.
The claimed invention is not an improvement to computer technology or computer functionality. Rather, the claimed invention is applying a computer’s existing capabilities to implement a particular abstract idea. As in Electric Power Group, the focus of the claimed invention is not on an improvement in computers as tools but on improving an abstract idea (i.e., updating accountholder information) that use computers as tools.
Regarding performance of the claimed method on a particular machine, MPEP §2106.05(b)(I) recites:
It is important to note that a general-purpose computer that applies a judicial exception, such as an abstract idea, by use of conventional computer functions does not qualify as a particular machine. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014). See also TLI Communications LLC v. AV Automotive LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (mere recitation of concrete or tangible components is not an inventive concept); Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623, 114 USPQ2d 1711, 1715 (Fed. Cir. 2015) (noting that Alappat’s rationale that an otherwise ineligible algorithm or software could be made patent-eligible by merely adding a generic computer to the claim was superseded by the Supreme Court’s Bilski and Alice Corp. decisions). If applicant amends a claim to add a generic computer or generic computer components and asserts that the claim recites significantly more because the generic computer is 'specially programmed' (as in Alappat, now considered superseded) or is a 'particular machine' (as in Bilski), the examiner should look at whether the added elements provide significantly more than the judicial exception. Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2358-59, 110 USPQ2d 1976, 1983-84 (2014).
Examiner asserts the additional elements (i.e., the computer elements) are not a particular machine, as established by caselaw and the MPEP, but a general-purpose computer utilized to perform the judicial exception. Additionally, special programming of the general-purpose computer does not transform a general-purpose computer into a particular machine.
MPEP §2106.04(d) recites:
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f); [and]
Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
Examiner asserts that the additional elements amount to merely (1) including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, or alternatively, (2) merely links the use of a judicial exception to a particular technological environment or field of use.
7. Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON M BORLINGHAUS whose telephone number is (571)272-6924. The examiner can normally be reached M-F 9-5.
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/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692
March 11, 2025
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