DETAILED ACTION
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 .
This application is a 371 of PCT/EP2021/084065 11/02/2021 and also claims foreign priority of UNITED KINGDOM 2102599.4 02/24/2021
Status of Claims
Claims 1, 2, 5-8, and 11-15 are currently pending and rejected.
Claims 3-4 and 9-10 are canceled.
Claim Rejection – 35 U.S.C. 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, 2, 5-8, and 11-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The rationale for this finding is explained below. In the instant case, the claims are directed towards identifying a validation check for a set of numbers. The concept can be performed mentally, thus the present claims fall within the Mental Processes grouping. The claims do not include limitations that are “significantly more” than the abstract idea because the claims do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Note that the limitations, in the instant claims, are done by the generically recited computer device. The limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. Therefore, claims 1, 2, 5-8, and 11-15 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Step 1: The claims 1, 2, 5-8, and 11-15 are directed to a process, machine, manufacture, or composition matter.
In Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347 (2014), the Supreme Court applied a two-step test for determining whether a claim recites patentable subject matter. First, we determine whether the claims at issue are directed to one or more patent-ineligible concepts, i.e., laws of nature, natural phenomenon, and abstract ideas. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296–96 (2012)). If so, we then consider whether the elements of each claim, both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.
Step 2A: The claims are directed to an abstract idea.
Prong One
The present claims are directed towards identifying a validation check for a set of numbers. The concept comprises obtaining data comprising a set of unique numbers with predetermined length (e.g., account number), determine a plurality of candidate validation functions to apply to the data, determine a plurality of candidate weights to apply to the data, determining whether the candidate validation function confirms the set of numbers is valid, and identifying the candidate validation function and the candidate weighting as the validation check for the data when the number of confirmations is above a predetermined threshold. Similar to the ineligible claims in Electric Power Group v. Alstom, the present claims recite a concept of obtaining data, analyzing data, and providing result of the analysis. The concept can be performed in the human mind. As such, the present claims fall within the Mental Processes grouping. Furthermore, ECBS reference (European Committee for Banking Standards, Register of European Account Numbers, TR201 V3.23, February 2007) suggests that validating bank account number using at least a standard modulus function and a double alternate modulus function is a longstanding economic practice. Thus, the present claims also fall within the Certain Method of Organizing Human Activities grouping. The performance of the claim limitations using generic computer components (i.e., generic circuitry in claims 1-13 and a computer in claim 15) does not preclude the claim limitation from being in the mental processes and the certain methods of organizing human activity grouping. Accordingly, this claim recites an abstract idea.
Prong Two
Claims 1, 2, 5-8, and 11-13 recite an apparatus comprising a circuitry as additional element. Claim 14 and 15 recite a computer as additional element. The additional elements are claimed to perform basic computer functions, such as obtaining data, determining candidate validation functions to apply to the data, determining candidate weights to apply to the data, determining whether the candidate validation function confirms that the number is valid using the candidate weighting, and identifying the candidate validation function and the candidate weighting as the validation check for the data when the number of confirmations is above a predetermined threshold. The processes of determining and identifying are merely analyzing data according to predetermined rules/algorithms. Under the broadest reasonable interpretation, these processes can be performed by generic computer or entirely in the human mind. The recitation of the computer elements amounts to mere instruction to implement an abstract concept on computers. The present claims do not solve a problem specifically arising in the realm of computer networks. Rather, the present claims implement an abstract concept using existing technology in a networked computer environment. The present claims do not recite limitation that improve the functioning of computer, effect a physical transformation, or apply the abstract concept in some other meaningful way beyond generally linking the use of the abstract concept to a particular technological environment. As such, the present claims fail to integrate into a practical application.
Step 2B: The claims do not recite additional elements that amount to significantly more than the abstract idea.
As discussed earlier, claims 1, 2, 5-8, and 11-13 recite an apparatus comprising a circuitry as additional element. Claim 14 and 15 recite a computer as additional element. The additional elements are claimed to perform basic computer functions, such as obtaining data, determining candidate validation functions to apply to the data, determining candidate weights to apply to the data, determining whether the candidate validation function confirms that the number is valid using the candidate weighting, and identifying the candidate validation function and the candidate weighting as the validation check for the data when the number of confirmations is above a predetermined threshold. According to MPEP 2106.05(d), “performing repetitive calculations”, “receiving, processing, and storing data”, “electronically scanning or extracting data from a physical document”, “electronic recordkeeping”, “storing and retrieving information in memory”, and “receiving or transmitting data over a network, e.g., using the Internet to gather data” are considered well-understood, routine, and conventional functions of computer. The present claims do not improve the functioning of computer technology. Simply implementing the abstract idea on a generic computer or using a computer as a tool to perform an abstract idea cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Therefore, the present claims are ineligible for patent.
Response to Remarks
Rejection under 35 U.S.C. 101
Applicant's arguments filed on 10/17/2025 with regards to rejection under 35 U.S.C 101 have been fully considered but they are not persuasive.
Applicant argued that the amended claims “recite specific technical components and configurations to provide ‘a particular efficient and reliable mechanism for identifying appropriate validation check for a set of numbers, reducing the computational burden numbers for which a validation check is not available have upon the computational system’”. Applicant continued that the “validation check can be then be used to validate the numbers of the first set of data (at a later stage of processing, for example” to identify any inaccuracies which inadvertently enter into the first set of data”. Examiner points out that the method of identifying the validation check is via a series of process steps that can be performed mentally, such as “determine a plurality of candidate validation function to apply to the first data”, “determine a plurality of candidate weights to apply to the first data”, “apply the candidate validation function to the first data using the set of unique numbers and the candidate weighting as input”, “determine, for each number of the set of unique numbers, whether the candidate validation function confirms that the number is valid using the candidate weighting”, and “determine a number of confirmation for the first data for one of the plurality of candidate weightings and one of the plurality of candidate validation functions is above a predetermined threshold”. In other words, the present claims merely recite a brute force trial-and-error process to test which particular validation function and weighting provide the best result (or above threshold result). Without specifying the difficulty of calculations, the claimed process can be performed mentally. More importantly, the claimed process itself does not improve computer function. Identifying validation function which exceeds threshold number of confirmation is not necessarily rooted in computer environment. Validation function can be used outside of computer environment to validate a set of numbers. The claims also do not mention how the identified validation function is used at later stage of processing. Thus, it is not clear whether the identified validation function will achieve any improvement in computation efficiency at all.
Applicant argued the amended claims recite a specific length of the numbers i.e., account numbers between 15 and 32 characters, therefore precluding the performance in the human mind. Examiner points out that the claim language does not specify the difficulty of calculation. In a theoretical example, where there are only 2 candidate validation functions and 2 weightings being applied to 15 digits, the claimed process can still be performed mentally. Unlike the eligible claims of McRO v. Bandai, the present claims do not recite specific rules or calculation steps that are unique to machine. Human could perform the claimed calculation albeit at a slower speed. Examiner points out that utilizing the existing processing power of off-the-shelf computer to automate a manual process does not improve computer function. MPEP 2016.05 states that “Accelerating a process of analyzing audit log data when the increased speed comes solely from the capabilities of a general-purpose computer, FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095, 120 USPQ2d 1293, 1296 (Fed. Cir. 2016)” and “Mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017)” are insufficient to show an improvement in computer-functionality or integrate an abstract concept into practical application.
Applicant also argued claim 12 improves performance and efficiency of circuitry by reciting “apply each combination of the one of the plurality candidate validation functions and the one of the plurality candidate weights to the first data in parallel”. Examiner points out that claim 12 merely requires parallel processing, which is well-known feature of general-purpose computer. Any of the shelf multicore processor can perform calculations in parallel. Applicant’s specification suggests that the claimed invention only needs a general-purpose computer, such as a personal computer (mobile phone, laptop, or tablet) or a terminal connected to a server, to implement. Moreover, widely used computer arrangements, such as distributed computing system or sever cluster, can be levered to perform parallel processing. As such, claim 12 merely relies on existing computer technology and does not actually improve computer functionality.
Applicant attempted to compare the present claims to the claims in Unilock USA v. LG Electronics. However, the claims in Unilock USA v. LG Electronics are directed to improved wireless communication (Bluetooth) by allowing simultaneous inquiry/polling to reduce latency, which is not at all related to “identifying a validation function” as recited in the present claims. Identifying a validation function is not related to improving a computation function, such as improving Bluetooth by allowing simultaneous inquiry/polling to reduce latency. Checking different combinations of candidate validation functions and weights, and to determine from amongst the candidates the best validation function for a specific set of numbers, as claimed, do not improve computer function. Rather, the claimed steps utilizing existing computers as tools to perform repetitive calculations to find the combination of candidate function and weighting that provides the best result.
Applicant further argued the claims relate to a unique computer problem where the combination of data or the merger of data from different sources result in loss of data or corruption. Examiner disagrees and points out that the present claims merely identify the best combination of candidate function and weighting by brute force trials-and-errors, but the claims do not actually fix data corruption. Moreover, the claims merely recite validating account number, which is not unique to computer environment.
The present claims do not improve the functioning of computer technology. Simply implementing the abstract idea on a generic computer or using a computer as a tool to perform an abstract idea cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Claim 14 does not even require any computer to perform. Therefore, the present claims are ineligible for patent.
Rejection under 35 U.S.C. 103
Applicant’s arguments, see Remarks, filed on 10/17/2025, with respect to rejection under 35 U.S.C. 103 have been fully considered and are persuasive. The 103 rejection has been withdrawn. Examiner points out however, the novelty of the present claims are strictly within the realm of abstract concept. Therefore, the present claims are ineligible for patent under 35 U.S.C. 101.
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.
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/HAO FU/Primary Examiner, Art Unit 3695
DEC-2025