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 1-9 and 20 are pending.
Claims 10-19 are withdrawn.
Claims 1, 4, 6, 9, 10, 15 and 20 were amended or newly added in the Applicant’s filing on 12/09/2025.
This office action is being issued in response to the Applicant's filing(s) on 12/09/2025.
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,” and “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.
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/or boldened 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 method comprising:
searching, by a capture agent in a distributed computing system, a document object model (DOM) for one or more web elements that identify a merchant associated with a graphical user interface (GUI) displayed on a user device.
Method claims are defined by the method steps being actively performed, not method steps performed in the past (i.e., displayed). Claiming method steps in the past tense can be interpreted as the method steps performed in the past are outside the scope of the claimed method. Alternatively stated, the scope of the claimed method are the active method steps which are building off a pre-existing state. The method steps performed for creation of the pre-existing state are outside the scope of the claimed invention.
Claims 4, 5, 9 (i.e., displayed and rendered) and 20 due to similar claim language, result in a similar claim interpretation.
Claim 1 recites a method comprising:
based at least on receiving, via the GUI, one or more queries including text corresponding to one or more fields included in the metadata, providing, by the distributed computing system, the user with the transaction statement in an online banking system.
The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent is not met. See MPEP §2111.04(II).
Usage of the term and/or phrase “based at least on receiving …” in Claim 1 suggests that there remains the possibility that the contingent limitations are not performed as the condition(s) precedent is not met. For example, the claim does not establish that a query is received or that a query includes text corresponding to one or more fields included in the metadata. Therefore, the claim limitations based upon the condition are optional claim limitations. As a matter of linguistic precision, optional claim limitations do not narrow the scope of the invention, since they can always be omitted. See MPEP §2111.04(II).
As the Applicant does not address what happens should the optional claim limitation(s) 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.
Claim 20, due to similar claim language, results in a similar claim interpretation.
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 1-9 and 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 comprising:
searching, …, a document … for one or more … elements that identify a merchant …;
identifying, … based on the one or more … elements, the merchant …;
detecting, … based on the identifying, a financial document …, the financial document comprising information about one or more items purchased by a user … including a description of the one or more items and a price of the one or more items;
extracting, …, and for an individual item of the one or more items, metadata comprising the information about the individual items of the one or more items purchased by the user;
receiving, …, transaction data for a plurality of transactions associated with the user, the transaction data comprising an amount for each of the transactions and a merchant associated with each of the transactions;
matching, …, the metadata to one or more of the transactions based at least on comparing at least the price of the individual item of the one or more items to the transaction amount and comparing the merchant … to the merchant associated with the transaction;
augmenting the one or more matching transactions with the metadata;
storing, …, an association between the financial document and the one or more matching transactions;
generating, …, a transaction statement based on the stored association between the financial document and the one or more matching transactions; and
based at least on receiving, …, one or more queries including text corresponding to one or more fields included in the metadata, providing, …, the user with a transaction statement …, the transaction statement with the transaction statement ….
These limitations, as drafted, under its broadest reasonable interpretation, covers a series of steps instructing how to reconcile and organize financial transactions 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 mental process. See MPEP §2106.04(a)(2)(III)(A) citing Electric Power Group v. Alstom, SA. (Fed. Cir. 2016).
Accordingly, the claimed invention recites an abstract idea.
STEP 2A – PRONG TWO
The claimed invention recites additional elements (i.e., computer elements) of a capture agent (Claim(s) 1 and 20), a document object model (DOM) (Claim(s) 1 and 20), web element(s) (Claim(s) 1 and 20), a database (Claim(s) 1 and 20), a graphic user interface (Claim(s) 1 and 20), a user device (Claim(s) 1 and 20), a distributed computing system (Claim(s) 1 and 20) and an online banking system (Claim(s) 1 and 20).
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 adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer. 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) 2-9 recite claim limitations that further define the abstract idea recited in respective independent Claim(s) 1 and 20. As such, the dependent claims are also grouped an abstract idea utilizing the same rationale as previously asserted against the independent claims.
Dependent Claim(s) recite additional elements (i.e., computer elements) of a web browser (Claim(s) 2), a plug-in (Claim(s) 3 and 7), a Document Object Model (Claim(s) 4) and a mobile application (Claim(s) 7 and 8).
In each case, the additional element(s) are recited at a high level of generality such that these additional element(s) amount to no more than mere instructions to apply the exception using a generic computer component.
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 utilizing the same rationale as previously asserted against the independent claims.
Accordingly, the dependent claim(s) are also not patent eligible.
Appropriate correction is requested.
5. 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.
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, 4, 5, 6 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Blackhurst (US PG Pub. 2015/0032480) in view of Pappas (US PG Pub. 2013/0191723).
Regarding Claim 1, Blackhurst disclose a method comprising:
searching (parsing), by a capture agent in a distributed computing system (partly on a user’s computer and partly on a remote computer), a document object model (DOM) for one or more web elements (fields, elements or tags) that identify a merchant (e.g., merchant name, merchant web address). (see para. 19, 23 and 59-68);
identifying, by the distributed computing system and based on the one or more web elements (fields, elements or tags), the merchant (merchant name). (see para. 68);
detecting (via searching or filtering), by the distributed computing system, based on the identifying the merchant (merchant name), a financial document (order confirmation or e-receipt), the financial document comprising information about one or more items purchased by a user of the user device including a description of the one or more items (e.g., product description, product name, product quantity) and a price of the one or more items (product price). (see para. 23, 35-36, 55 and 60);
extracting, by the distributed computing system, for an individual item of the one or more items, metadata (e.g., SKU, manufacturer, product description, material, size, color, packaging, quantity, warranty terms, product price, product image) comprising the information about the individual item of the one or more items purchased by the user. (see para. 34-36);
receiving, by the distributed computing system, transaction data for a plurality of transactions associated with the user (for comparison and matching), the transaction data comprising an amount for each of the transactions (transaction amounts) and a merchant (merchant name) associated with each of the transactions. (see para. 33-39 and 68);
matching, by the distributed computing system, the financial document (e-receipt data) to one or more of the transactions (transaction data) based at least on comparing at least the price of the individual item of the one or more items to the transaction amount (matching transaction amount) and comparing the merchant to the merchant associated with the transaction (matching based upon merchant identity. (see para. 33-40);
augmenting (matching or storing) the one or more matching transactions with the metadata. (see para. 40, 67 and 68)
storing in a database, by the distributed computing system, an association between the receipt financial document and the one or more matching transactions. (see para. 32, 34, 67 and 68);
generating, by the distributed computing system, a graphical user interface (GUI) that includes transaction statement based on the stored association between the financial document and the one or more matching transactions. (see fig. 5; para. 78);
based at least on receiving, via the GUI, one or more queries (search queries) including text corresponding to one or more fields included in the metadata. (see para. 60);
providing, by the distributed computing system, the user with the transaction statement (monthly banking statement) in an online banking system (via an online banking account). (see fig. 5; para. 78).
Blackhurst does not explicitly teach a method wherein the merchant is associated with a graphical user interface (GUI) displayed on a user device.
However, Blackhurst does disclose a method wherein a document (order confirmation) from the merchant is displayed within a graphical user interface (web browser) on a user device (see para. 24). Utilizing the document object model and the web elements the merchant is identified in within the displayed document. (see para. 59-68).
If the displayed document is from the merchant and contains information pertaining to the merchant, then the merchant is associated with (i.e., connected to or corresponding with) a graphical user interface (GUI) displayed of a user device.
Regardless, Pappas discloses a method comprising searching (identifying), by a capture agent in a distributed computing system, a document object model (DOM) for one or more web elements (data record information) that identify a merchant (retailer name) associated with a graphical user interface (GUI) displayed on a user device. (see abstract; para. 37, 45 and 84).
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 Blackhurst by identifying a merchant associated with a graphical user interface displayed on a user device, as suggested by Blackhurst and disclosed by Pappas, thereby enabling a computer to search a document displayed on a graphical user interface (GUI) of a user device.
Regarding Claim 4, Blackhurst does not explicitly teach a method comprising searching the DOM from a plurality of web pages in the web browser, although Blackhurst discloses a method comprising searching the DOM for a web page (confirmation webpage) in a web browser (see para. 57, 61 and 66).
However, would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to have modified Blackhurst and Pappas by duplicating claim elements contained in Blackhurst (e.g., the first DOM for the first webpage) to create additional claim elements (e.g., a second DOM of a second webpage) 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 Claim 5, Blackhurst discloses a method comprising:
parsing, by a capture agent, the GUI displayed on the user device. (see para. 58); and
determining, by the distributed computing system, that the GUI is not a financial document (via filtering). (see para. 58).
Blackhurst does not explicitly teach a method comprising waiting, by the capture agent, for a predetermined amount of time; or after the waiting, parsing, by the capture agent, a second GUI displayed on the user device.
It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to have modified Blackhurst and Pappas by duplicating claim elements contained in Blackhurst (e.g., the first parsing and filtering decision) to create additional claim elements (e.g., a second parsing and filtering decision) 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).
Examiner notes that, if multiple iterations of the process were performed, there would be an amount of time between each iteration of the process.
Regarding Claim 6, Blackhurst discloses a method comprising:
determining a merchant associated with the GUI (via subject header). (see para. 59-60); and
using, by the capture agent, specific parsing logic (parsing template specific to merchant) associated with the merchant to detect the financial document. (see para. 59-60).
Regarding Claim 20, such claims recite substantially similar limitations as claimed in previously rejected claims and, therefore, would have been obvious based upon previously rejected claims.
Claim(s) 2, 3 and 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Blackhurst and Pappas, as applied to Claim 1 above, and further in view of Bauer-Hermann (US PG Pub. 2015/0127771).
Regarding Claim 2, Blackhurst does not teach a method wherein the capture agent comprises a plug-in for a web-browser.
Bauer-Hermann discloses a method wherein the capture agent comprises a plug-in for a web-browser. (see para. 63).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to have modified Blackhurst and Pappas by incorporating a web browser plug-in, as disclosed by Bauer-Hermann, as a web browser plug-in is a standard and conventional means by which to parse data displayed on a screen.
Regarding Claim 3, Blackhurst does not explicitly teach a method comprising receiving the plug-in from the server device, although Blackhurst discloses a method comprising receiving data from the server device. (see fig. 3; para. 56).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to have modified Blackhurst, Pappas and Bauer-Hermann by incorporating the receipt of the plug-in from the server, as data is already received from the server, as disclosed by Bauer-Hermann.
Regarding Claim 7, Blackhurst does not explicitly teach a method wherein the method is performed via a mobile application (on a mobile phone or tablet). (see fig. 3; para. 54).
Bauer-Hermann discloses a method wherein the capture agent comprises a plug-in for a web-browser. (see para. 63).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to have modified Blackhurst, Pappas and Bauer-Hermann by incorporating a plug-in, as disclosed by Bauer-Hermann, as a plug-in is a standard and conventional means by which to parse data displayed on a screen.
Regarding Claim 8, Blackhurst discloses a method wherein the mobile application comprises at least one of an online banking application or an e-commerce application. (see para. 27 and 71-74).
Regarding Claim 9, such claim recites substantially similar limitations as claimed in previously rejected claims (Claims 4 and 5) 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.
§101 Rejection
Step 2A Prong One
Applicant argues that the claimed invention does not recite a judicial exception and, as such, satisfies Step 2A Prong One of the §101 Guidelines. See Arguments, pp. 9-10.
Specifically, Applicant argues:
As explained in the parent case, Application No. 16/502,513, the processing steps of searching a DOM for one or more web elements that identify a merchant associated with a GUI; and identifying by the capture agent, a merchant associated with GUI" in combination with the other features does not relate to any kind of fundamental economic principles or practices, commercial or legal interactions, managing personal behavior or relationships or interactions between people. Neither do these features relate to any mental processes. Rather, they relate to a specific processing techniques that involve searching a document object model for web elements and identifying, based on the web elements, the merchant associated with the GUI, that cannot be performed in the human mind. Thus, claim 1 is not abstract. The Examiner respectfully disagrees. See Arguments, p. 10.
The Examiner respectfully disagrees.
The claimed invention is searching a document to identify a merchant and identifying a merchant based upon said document.
Admittedly, the document is a document object model (DOM), a programming interface for web documents, a computerized element. But additional elements (i.e., the computerized elements) are examined under Step 2A Prong Two, to determine whether any additional elements in the claim integrate the abstract idea into a practical application, not Step 2A Prong One. See MPEP §2106.05(f)(2).
As to the assertion that the claimed invention “cannot be performed in the human mind,” claims that recite limitations “that cannot practically be performed in the human mind” are not mental processes. See MPEP §2106.04(a)(2)(III)(A). For example, a limitation that cannot be practically performed in the human mind is “detecting suspicious activity by using network monitors and analyzing network packets” and “rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask, where the method required the manipulation of computer data structures (e.g., the pixels of a digital image and a two-dimensional array known as a mask) and the output of a modified computer data structure.” See MPEP §2106.04(a)(2)(III)(A). The examples provided require a computer. A computer is inherent to the underlying process (e.g., there is no network traffic, data packets or pixels without a computer). This is not the case with the claimed invention.
However, Claim 1 recites searching a document to identify a merchant, identifying a merchant based upon said document, detecting a financial document, extracting from the financial document information about an item purchased by the user, receiving transaction data comprising an amount for each transaction and a merchant associated with each of the transactions, matching the data based upon a comparison of a price of an item and merchants, storing an association between the documents and transactions and generating a transaction statement based upon the stored associations.
Examiner notes that financial document management or accounting has existed before the advent of computers.
As such, the processes are processes that can practically be performed in the human mind.
Additionally, MPEP § 2106.04(a)(2)(III)(C) recites:
In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification. For instance, examiners should review the specification to determine if the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite a mental process.
The claimed invention recites a mental process even though the claimed invention recites that the mental process is being performed on a computer. The claims merely recite that the “concept is performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept.”
Step 2A Prong Two
Applicant argues that the claimed invention recites a practical application, specifically “improvements in the technical field of banking systems and operations related using receipt information,” and, as such, satisfies Step 2A Prong Two of the §101 Guidelines. See Arguments, pp. 10-13.
Specifically, Applicant argues:
For example, representative claim 1 as a whole integrates into a practical application because it is directed to improvements in the technical field of banking systems and operations related using receipt information. Paragraphs 19, 39, 70, and 97 of the specification state "Embodiments of the present disclosure may improve the accuracy of online banking systems by augmenting transaction statements with relevant receipt information extracted from GUIs displayed on a user device," "improv[ing] the processing efficiency and/or interoperability of other operations performed using receipt information," "by augmenting additional item level receipt information to transaction statements, an online banking API may enhance transaction history, improve information accuracy, and enable item level search in an online banking application" and "capturing receipt information and associating receipt information with transaction data to improve functionality of online banking systems." See Arguments, p. 11 – emphasis original.
The Examiner respectfully disagrees.
An improvement to another technology or technical field requires an improvement to another technology (i.e., machinery or equipment developed from the application of scientific knowledge) or a technical field (i.e., a field concerned with said machinery or equipment).
However, the specification provides no evidence that the claimed invention constitutes “an improvement in the functioning of a computer, or an improvement to other technology or technical field” under MPEP §2106.04(d)(1) and 2106.05(a).
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.
However, 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.
For example, the specification does not provide any evidence that existing computer technology was unable to extract metadata from documents, unable to augment information with metadata, or, based upon receiving via a GUI a query providing information to a user.
Additionally, the specification does not provide any evidence that there is even a technical (i.e., technology-based) problem to be solved. For example, the specification does not provide any evidence that existing technology was incapable of performing the claimed technological functions (i.e., the technical problem) but for the claimed technical solution.
Examiner notes the specification recites and the Applicant argues benefits to be derived from the claimed invention, such as improved accuracy and improved efficiency. However, such benefits are not analogous to improvements in technology.
In DDR Holdings, LLC v. Hotels.com, the U.S. Court of Appeals stated:
As an initial matter, it is true that the claims here are similar to the claims in the cases discussed above in the sense that the claims involve both a computer and the Internet. But these claims stand apart because they do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks. See DDR Holdings, LLC v. Hotels.com, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) – emphasis added.
In the instant case, the problem that the claimed invention is designed to overcome, improved accuracy, is not a problem specifically arising from the realm of computers. This problem is a standard business problem that exists outside the realm of computers and existed before the age of computers.
As to the indirect improvements to the technology (e.g., improved efficiency) based upon performance of the claimed invention, any software can be argued to improve a computer. It can always be argued that the software runs the process more efficiently thereby reducing the demands placed upon the computer system.
In the claimed invention, the computer has not been improved. The non-technological process that the software is performing may have been improved but, according to Alice, improving the process without any technological innovation is not statutory. To be “directed to a patent-eligible improvement to computer functionality,” the claim “must be directed to an improvement to the functionality of the computer or network platform itself.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020) (citing Enfish, 822 F.3d at 1336-39).
The computer still operates according to its known and standard capabilities. A reduction of load on the computer does not bring about an improvement to the computer, it merely offers resources to other processes that are running on the computer.
Examiner asserts that the claimed invention is analogous to Electric Power Group LLC v. Alstom SA (Fed. Cir. 2016) wherein 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., augmenting transaction statements) that uses computers as tools.
Applicant further argues:
Additionally, as explained in the granted parent case, Application No. 16/502,513, Example 37 claim 1 was found patent-eligible under Prong Two even though it recites only generic user components such as a processor and GUI, because "the claim as a whole integrates the mental process into a practical application" and provides "a specific improvement over prior systems, resulting in an improved user interface for electronic devices." The present claims are analogous. Although they likewise recite certain generic computer components, when viewed as a whole they integrate the alleged judicial exception into a practical application, namely, improving the functioning of online banking systems and user interfaces through enhanced use of receipt information. Accordingly, as with Example 37 claim 1, the present claims provide a specific improvement over prior systems and therefore are not directed to a judicial exception. See Arguments, pp. 11-12.
The Examiner respectfully disagrees.
Each application is to be examined separately and independently based upon the most current guidance. Based upon the most current guidance, the claimed invention does not satisfy §101 Guidelines, regardless of the determination made in other applications.
Examiner notes that the Applicant is arguing that since the parent application satisfied §101 Guidelines then the child application must also be deemed to satisfy the §101 Guidelines but the converse is also possible. An alternate interpretation is that since the child application has not been deemed to have satisfy §101 Guidelines based upon current guidance then perhaps the parent application would not satisfy §101 Guidelines based upon current guidance.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RYAN D. DONLON can be reached on (571)270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692 April 19, 2026
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