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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/2/26 has been entered.
DETAILED ACTION
Applicant filed an RCE on 2/2/26. Claims 1, 8, and 15 have been amended. No claims have been canceled. Thus claims 1-20 remain pending. After careful consideration of applicant arguments and amendments, the examiner finds them to be moot and/or non persuasive. This action is a Non Final Rejection.
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 they are directed to an abstract idea without more.
Claims 1, 8 and 15 are rejected under 35 USC 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1, 8 and 15 are directed to system, method and non-transitory computer readable medium which are statutory claim classes. (step 1 yes)
The examiner has identified claim 8 as representative similar to 1, 15.
The limitations of claim 8 are directed to document access and consent requests.
These limitations under their broadest reasonable interpretation covers performance of the limitation as certain methods of organizing human activity. Which is a fundamental economic practice.
Claim 8 contains the following abstract limitations,
receiving, … of a customer, a request to receive access to one or more disclosure documents associated with a financial account in electronic format, the request comprising a customer identifier; sending, to …, an electronic consent request to receive the one or more disclosure documents in electronic format; receive a response from the …. customer accepting the electronic consent request; transmitting to the … and displaying on … of the customer the one or more disclosure documents; and creating and storing an audit trail in a memory location of a customer database associated with a customer account associated with the customer identifier, wherein the audit trail includes a first confirmation that the customer consented to receive the one or more disclosure documents in electronic format and a second confirmation that the customer was provided access to the one or more disclosure documents.
The following technical limitations “computing device of the customer” and by amendment “unique messaging address” are just applying generic computing components to the recited abstract limitations. The recitation of generic computing components in a claim does not necessarily preclude a claim from reciting an abstract idea.
By amendment applicant has added hyperlink, …. Send to the computing device of the customer an electronic message comprising a hyperlink and in response to the hyperlink being selected… . However, a hyperlink may need more specific features like two way communication or some other feature versus a standard hyperlink. (see 0017 of spec for potential ideas).
Claims 1, 15 are similar. Step 2A prong 1 the claims recite an abstract idea (yes)
This judicial exception is not integrated into a practical application . In particular the claims recite additional elements of “computing device of the customer”. By amendment , via a unique messaging address associated with the customer.
The computer hardware/software are recited at a high level of generality such that it amounts no than instructions to apply the exception using a generic computer component. Accordingly these additional elements which considered separately or as an ordered combination do not integrate the abstract idea into a practical application because they do not impose meaningful limits on practicing the abstract idea and are at a high level of generality.
Thus claims 1, 8 and 15 are directed to an abstract idea without a practical application. Step 2A prong 2 (no)
The claims do not include additional elements to amount to significantly more “inventive concept”
The dependent claims 2-7, 9-14 and 16-20 do not add any further elements and thus are rejected because they depend on claims 1, 8 and 15.
It is noted that 0031, 0035 disclose hyperlinks and other elements that might be utilized in combination to create a practical and technical application that would overcome 35 UCS 101.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over
US Patent to Johnson 9373002 in view US Patent to Brown 7698230 and Gropper Publication 20070027715
As per claim 8 Johnson discloses; A method comprising: receiving, via a computing device of a customer, a request to receive access to one or more disclosure documents associated with a financial account in electronic format, the request comprising a customer identifier;
sending, to the computing device of the customer, via a unique messaging address associated with the customer (col. 14 lines 20-25, or unique messaging address of the recipient, col. I lines 20-30, in applicant specification 0024 “unique messaging address” may be an email address....)
an electronic consent request to receive the one or more disclosure documents in electronic format; receive a response from the computing device of the customer accepting the electronic consent request; Johnson(col. 21, lines 10-15 consent to release document and table 1)
transmitting to the computing device of the customer and displaying on the computing device of the customer the one or more disclosure documents;
Johnson(co. 3 lines 15-25, what is a disclosure document)
and creating and storing an audit trail in a memory location of a customer database associated with a customer account associated with the customer identifier, wherein the audit trail includes a first confirmation Johnson (fig. 12 audit trail, col. 20 audit record)
Johnson does not explicitly disclose what Brown teaches;
Brown,
that the customer consented to receive the one or more disclosure documents in electronic format and a second confirmation that the customer was provided access to the one or more disclosure documents.
(col. 10)
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the financial disclosures of Johnson with the consent of Brown for the motivation of reducing processing costs (col. 1 lines 50-55)
Johnson and Brown do not explicitly disclose what Gropper teaches;
send to the computing device of the customer an electronic message comprising a hyperlink Gropper(0234, selectable hyperlink)
in response to the hyperlink being selected Gropper(0234, hypelink that is selectable to view customer info) Gropper motivation
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine Johnson’s disclosures with Gropper’s hyperlink for the motivation of “better sharing medical information” (0005)
Claims 1, 15 are similar to claim 8.
As per claims 2, 9 and 16 Johnson discloses;
the system of claim 1, wherein the audit trail includes a date and time stamp corresponding to when the request to receive access to the one or more disclosure documents in electronic format was received from the computing device of the customer.
Johnson (table 3)
As per claims 3, 10 and 17 Johnson discloses;
The system of claim 1, further configured to send an electronic message to the computing device of the customer using the unique messaging address associated with the customer.
Johnson (col. 9 lines 20-25 email address)
As per claims 4, 11 and 18 Johnson discloses;
The system of claim 3, wherein the request to receive access to the one or more disclosure documents in electronic format is received by the system based on the electronic message.
Johnson(col. 13 lines 55-65)
As per claims 5, 12 and 19 Johnson does not explicitly disclose what Brown teaches;
the system of claim 3, wherein the electronic message sent to the computing device of the customer contains the customer identifier.
Brown (Col. 12 social security number)
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the financial disclosures of Johnson with the consent of Brown for the motivation of reducing processing costs (col. 1 lines 50-55)
As per claims 6, 13 and 20 Johnson does not explicitly disclose what Brown teaches;
The system of claim 1, wherein the one or more disclosure documents are retrievably stored in a structured format, the structured format based on at least one of an attribute indicative of a state, an attribute indicative of a jurisdiction, or an account-specific parameter.
Brown(col 15 jurisdiction specific consents)
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the financial disclosures of Johnson with the consent of Brown for the motivation of reducing processing costs (col. 1 lines 50-55)
As per claims 7, 14 Johnson does not explicitly disclose what Brown teaches;
The system of claim 1, wherein the customer identifier includes a parameter indicative of a state or jurisdiction.
Brown(col 15 jurisdiction specific consents)
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the financial disclosures of Johnson with the consent of Brown for the motivation of reducing processing costs (col. 1 lines 50-55)
Response to Arguments
Applicant filed an RCE on 2/2/26. Claims 1, 8, and 15 have been amended. No claims have been canceled. Thus claims 1-20 remain pending. After careful consideration of applicant arguments and amendments, the examiner finds them to be moot and/or non persuasive. This action is a Non Final Rejection.
Rejections Under 35 U.S.C. 101
Claims 1-20 were rejected under 35 U.S.C. § 101 because they are allegedly directed to an abstract idea without more.
Without acquiescing to the rejections under 35 U.S.C. § 101, and solely to further
prosecution on its merits, independent claims 1, 8, and 15 have been amended. Accordingly, Applicant respectfully submits that the Section 101 claim rejections are moot and overcome. To aid the Examiner's review, Applicant provides the following remarks and respectfully submits that, using the two-part subject matter eligibility framework articulated in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., ("Alice Corp.") and set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc. ("Mayo"), the amended independent claims 1, 8, and 15 are not directed toward an abstract idea and, even arguendo if considered directed to an abstract idea, integrate the abstract idea into a practical application of the abstract idea, or amount to significantly more than an abstract idea itself and therefore are directed toward statutory subject matter under Section 101.
Step 2A Analysis
Step 2A Prong One
On pages 2-3 of the Office Action, and with respect to the Step 2A analysis, the Examiner asserts that the claims fall within the "Method of Organizing Human Activity" grouping of abstract ideas. Specifically, the Examiner asserts that the claims fall under the "fundamental economic practice" subgrouping. Applicant submits that the October 2019 Update:
Subject Matter Eligibility published October 17, 2019 ("October Update") states:
The term "certain" qualifies the "certain methods of organizing human activity" grouping as a reminder of several important points.
First, not all methods of organizing human activity are October 2019 Update: Subject Matter Eligibility 5 abstract ideas (e.g., "a defined set of steps for combining particular ingredients to create a drug formulation" is not a "certain method of organizing human activity"). Second, this grouping is limited to activity that falls within the enumerated sub-groupings of fundamental economic principles or practices, commercial or legal interactions, managing personal behavior, and relationships or interactions between people, and is not to be expanded beyond these enumerated sub-groupings except in rare circumstances as explained in Section III(C) of the
2019 PEG.
(October Update, pages 4 and 5).
Applicant respectfully submits that the limitations of amended claims 1, 8, and 15 do not fall within the "fundamental economic practice" sub-groupings of "methods of organizing human activity." Rather, amended claim 1 recites: "send, to the computing device of the customer via a unique messaging address associated with the customer, an electronic consent request to receive the one or more disclosure documents in electronic format, receive a response from the computing device of the customer accepting the electronic consent request, send, to the computing device of the customer, an electronic message comprising a hyperlink, transmit to the computing device of the customer and display on the computing device of the customer the one or more disclosure documents, in response to the hyperlink being selected,"
and "create and store an audit trail in a memory location of a customer database associated with a customer account associated with the customer identifier, wherein the audit trail includes a first confirmation that the customer consented to receive the one or more disclosure documents in electronic format and a second confirmation that the customer was provided access to the one or more disclosure documents." (Emphasis added). Applicant respectfully submits that these features are not related to the abstract idea of a "fundamental economic practice", in their broadest reasonable interpretation, as alleged by the Examiner.
Accordingly, the amended claims are not directed to an abstract idea. Even assuming
arguendo that this is not the case, the Applicant respectfully submits that at least the above cited limitations must be properly treated as "additional elements" and therefore considered in the "practical application" and "significantly more" analysis at least because these operations are not tangential to the features recited in the amended claims 1, 8, and 15.
Here applicant is not persuasive because document delivery is a fundamental economic practice of finance. Further more by amendment applicant has a hyperlink which is not fully integrated into the inventive concept. The examiner provided some suggestions in the updated rejection.
Step 2A Prong Two
The Office Action alleges that the "judicial exception is not integrated into a practical application." (Office Action p. 3). However, "the way in which the additional elements use or interact with the exception may integrate it into a practical application. Accordingly, the additional limitations should not be evaluated in a vacuum, completely separate from the recited judicial exception. Instead, the analysis should take into consideration all the claim limitations and how those limitations interact and impact each other when evaluating whether the exception is integrated into a practical application." MPEP 2106.04(d)(III).
The claimed system implements a set of steps that are integrated into an overall claimed process, which, when viewed as a whole, has the clear, practical application of an improved computing system. The improved computing system enables the transmission of disclosure documents via a computing device of a customer and in response to receiving electronic consent. Additional technical advantages of the claimed process are described in the specification in at least paragraphs [0030] and [0031], which disclose:
[0030] For example, referring now to FIG. 3 , an electronic message 300 that may be used to provide access to electronic disclosure materials according to an exemplary embodiment is shown. In the illustrated embodiment, message 300 is shown displayed on the screen of a mobile device 301. Message 300 includes a hyperlink 302 associated with a graphical button labeled "Access Disclosures"
that may be selected in order to access, for example, a web application or landing page hosted by a computer system (e.g.,
computer system 103 shown in FIG. 1 ).
[0031] Referring again to FIG. 1 , when hyperlink 118 is selected, mobile device 101 may execute a client application, such as a web browser or other mobile application configured to create and send, for example, a Hypertext Transfer Protocol (HTTP) request 120 to computer system 103. Request 120 may serve as an indication from customer 102 via mobile device 101 acknowledging that customer 102 has been given access to disclosure documents 108. Request 120 may include network address 114 as well as customer identifier 116. Upon receiving request 120, computer system 103 may determine whether mobile device 101 has indeed accessed network address 114 by verifying that the request contains customer
identifier 116.
(Emphasis added). One of skill in the art would appreciate that a problem in the technical field of accessing disclosure documents is secure transmission and the ability to document consent. To increase transmission security and document consent to electronic disclosure, the current application and the amended claims recite a process including: “send, to the computing device of the customer, an electronic message comprising a hyperlink, “transmit to the computing device of the customer and display on the computing device of the customer the one or more disclosure documents, in response to the hyperlink being selected," and "create and store an audit trail in a memory location of a customer database associated with a customer account associated with the customer identifier, wherein the audit trail includes a first confirmation that the customer consented to receive the one or more disclosure documents in electronic format and a second confirmation that the customer was provided access to the one or more disclosure documents," as recited in amended claim 1 and analogously recited in claims 8 and 15. As such, Applicant respectfully submits that amended claim 1 integrates a practical application by reciting the aforementioned features, which improve the relevant technology in the field.
Thus, the claimed process steps ensure that claimed system and method does not claim any alleged judicial exception itself and is not a drafting effort designed to obtain a patent on the exception itself.
As such, Applicant respectfully requests that claims 1, 8, and 15, and all claims dependent thereon be deemed patent eligible.
Step 2B Analysis
As shown above, claims 1, 8, and 15 are patent-eligible. However, even assuming
arguendo that they do recite an abstract idea without integrating the abstract idea into a practical application (which Applicant does not concede), independent claims 1, 8, and 15 are patent eligible under Step 2B. The memo released by the USPTO on April 19, 2018 regarding the Berkheimer v. HP, Inc. decision ("Berkheimer memo") states that "an examiner should conclude that an element (or combination of elements) represents well-understood, routine, conventional activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry," which "must be based upon a factual determination." Specifically, this factual determination must be based on one of the following (1) "[a] citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s)," (2) "[a] citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s)," (3) "[a] citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s)," or (4) "[a] statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s)." Berkheimer memo, p. 3-4.
The Office Action asserts that "[t]he claims do not include additional elements to amount to significantly more." (Office Action p. 4). First, Applicant respectfully submits that the claims do recite "additional elements." For example, claim 1 recites "a memory location of a customer database associated with a customer account associated with the customer identifier."-11-
Additionally, Applicant respectfully submits that the claimed computer-implemented
processes recite significantly more than any alleged abstract idea. Specifically, the claims recite limitations including at least: "send, to the computing device of the customer, an electronic message comprising a hyperlink,""transmit to the computing device of the customer and display on the computing device of the customer the one or more disclosure documents, in response to the hyperlink being selected," and "create and store an audit trail in a memory location of a customer database associated with a customer account associated with the customer identifier, wherein the audit trail includes a first confirmation that the customer consented to receive the one or more disclosure documents in electronic format and a second confirmation that the customer was provided access to the one or more disclosure documents." (Emphasis added). Applicant respectfully submits that these limitations, at least in combination, recite more than mere collection and receipt of data. In particular, the claims recite a non-conventional and non-generic arrangement of components that advantageously enables a specific interaction between the claimed system, the customer computing device, and the customer database where the disclosure documents are securely transmitted (e.g., in response to a selection of a hyperlink) and electronic consent for transmission of the disclosure documents is recorded.
Therefore, Applicant respectfully submits that amended independent claims 1, 8, and 15 and the claims depending therefrom are patent eligible under Step 2B as well.
Here the rejection is updated to account for the hyperlink. The examiner noted that an improvement of the technology would be required. Another suggestion is example 35 of the December 2016 guidance examples 2, 3 which are directed to determining customer identity.
Rejections Under 35 U.S.C. 103
Claims 1-20 were rejected under 35 U.S.C. § 103 as allegedly being unpatentable over U.S. Patent No. 9,373,002 ("Johnson") in view U.S. Patent No. 7,698,230 ("Brown").
Without acquiescing to the rejections, Applicant has amended claim 1 to recite:
1. A provider computing system, configured to:
receive, via a computing device of a customer, a request to receive access to one or more disclosure documents associated
with a financial account in electronic format, the request
comprising a customer identifier;
send, to the computing device of the customer via a unique messaging address associated with the customer, an electronic
consent request to receive the one or more disclosure documents in
electronic format;
receive a response from the computing device of the customer accepting the electronic consent request;
send, to the computing device of the customer, an electronic message comprising a hyperlink;
transmit to the computing device of the customer and display on the computing device of the customer the one or more disclosure documents, in response to the hyperlink being selected;
and
create and store an audit trail in a memory location of a customer database associated with a customer account associated
with the customer identifier, wherein the audit trail includes a first
confirmation that the customer consented to receive the one or
more disclosure documents in electronic format and a second
confirmation that the customer was provided access to the one or
more disclosure documents.
(Emphasis added). Claims 8 and 15 have been amended to recite similar features.
Johnson is generally directed to a "system to manage and delivery electronic documents is disclosed." (Johnson at Abstract). Johnson discloses that "[a] Document Ordering Service (DOS) module 110 implements an online ordering website that allows users of the system to order and pay for documents and document management services using conventional payment processing techniques such as, for example, credit card processing techniques, bank transfers, or the like," and that "[the] DOS module 110 enables users of the system 100 to place orders for traditional paper documents, secure electronic documents or other products that may be offered through the client data center." (Johnson col. 3 11. 15-30).
In contrast with claim 1, however, Johnson does not disclose, teach, or suggest
"send[ing], to the computing device of the customer, an electronic message comprising a hyperlink" and "transmit[ting] to the computing device of the customer and display[ing] on the computing device of the customer the one or more disclosure documents, in response to the hyperlink being selected." Rather, Johnson is silent with respect to transmitting and displaying-13-
"one or more disclosure documents ... in response to the hyperlink being selected." Thus, Johnson does not disclose this feature of amended claim 1.
Brown was cited for teaching other features of the claims. However, Brown does not cure the above-described deficiencies of Johnson. For example, Brown is silent with respect to "send[ing], to the computing device of the customer, an electronic message comprising a hyperlink" and "transmit[ting] to the computing device of the customer and display[ing] on the computing device of the customer the one or more disclosure documents, in response to the hyperlink being selected," as recited in amended claim 1.
In view of the foregoing, Applicant respectfully submits that claim 1 is patentable over the cited references. Claims 8 and 15 recite similar features and are patentable for at least the same reasons. Claims 2-7, 9-15, and 16-20 depend from claims 1, 8, and 15, respectively, and are patentable for at least the same reasons. Therefore, reconsideration and withdrawal of the rejections under 35 U.S.C. § 103 are respectfully requested.
Here the applicant arguments are directed to the addition of a hyperlink which is anticipated by.
US Patent Publication to Gropper. This renders applicant arguments to be moot in view of amendment. This action is a non-final office action. The dependent claims are argued by virtue of dependency.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Analytical Study on Internet Banking System ARXIV, 2010
Evaluation Framework for Personal Health Records: Microsoft HealthVault Vs. Google Health, IEEE 2010
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRUCE I EBERSMAN whose telephone number is (571)270-3442. The examiner can normally be reached 8:00 am - 5:00 pm Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael W Anderson can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRUCE I EBERSMAN/Primary Examiner, Art Unit 3693
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