Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
This communication is in response to Applicant’s amendment filed 29 October 2025. Claims 1 and 11 have been amended. Claims 1-20 are currently pending. The rejections are as stated below.
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a non-statutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
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Claims 1-20 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-20 of Patent No. US 11676146 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other because they recite means or steps that are substantially the same and that would have been obvious to one of ordinary skill in the art.
Claims 1-20 essentially repeat all the features listed in the Patent listed above, with the exception of removing several claim limitations. Therefore, the omission of an element with a corresponding loss of function is an obvious expedient. See In re Karlson, 136 USPQ 184 and Ex parte Rainu, 168 USPQ 375.
For these reasons, claims 1-20 of the instant application are not identical to claims 1-20 of Patent No. US 11676146 B2, but they are not patently distinct.
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 non-statutory subject matter. In particular, claims are directed to a judicial exception (abstract idea) without significantly more.
Claim 1 (exemplary) recites a series of steps for identifying fraudulent transactions allowing each current transition to be linked to other transactions through commonly shared identities to form chains of linked transactions.
The claim is directed to a process, which is a statutory category of invention.
The claim is then analyzed to determine whether it is directed to a judicial exception. Independent method claims 1, and similarly, system claim 11 recites the limitations of processing transaction data from a plurality of merchants to identify a plurality of transactions; generating a dynamic chain of linked transactions based on shared identities in transaction data of the plurality of transactions, wherein the dynamic chain of linked transactions is configured to be updated by adding one or more additional transactions in real-time; receiving first transaction data of a first transaction, wherein the first transaction data includes a first plurality of identities; updating in real-time the dynamic chain of linked transactions by linking, in real-time the first transaction to at least one of the plurality of transactions previously linked to each other, wherein in the dynamic chain of linked transactions the first transaction is linked to a second transaction through a first identity that is included in the first plurality of identities associated with the first transaction and a second plurality of identities associated with the second transaction; comparing, in real-time each identity stored in the dynamic chain of linked transactions to a negative list of identities associated with one or more fraudulent activities to determine whether the first transaction is fraudulent; matching based on the dynamic chain of linked transactions, a second identity from the second plurality of identities associated with the second transaction to an identity from the negative list database of identities, wherein the second identity is not included in the first plurality of identities associated with the first transaction, the second transaction is linked to the first transaction in the dynamic chain of linked transactions; based on the matching; identifying the first transaction as a fraudulent transaction; generating a first message indicating a first fraud alert for the first transaction based on the first plurality of identities associated with the first transaction being linked to the second identity from the second plurality of identities associated with the second transaction on the dynamic chain of linked transactions after updating the dynamic chain of linked transactions in real-time; sending the first message to the first merchant indicating the first fraud alert for the first transaction; and updating the negative list of identities based on the dynamic chain of linked transactions to include a third identity from the first plurality of identities, the third identity not previously included in the negative list of identities.
These limitations, as drafted, are processes that, under its broadest reasonable interpretation, covers performance of the limitations via transactional activities/interactions (such as a fundamental economic concept or managing interactions between people), but for the recitation of generic computer components, nothing in the claim precludes the limitations from practically being performed by a method of organizing human activity. Thus, like the concept of intermediated settlement in Alice, and the concept of hedging in Bilski, the concept of “identifying fraudulent transactions allowing each current transition to be linked to other transactions through commonly shared identities to form chains of linked transactions” recited in claim 1 “is a fundamental economic practice long prevalent in our system of commerce.”
Accordingly, it is clear that exemplary independent claim 1 recites fundamental economic practices and/or commercial transactions that, under the Revised Guidance, fall under the category of abstract ideas related to “certain methods of organizing human activity.” 2019 Revised Guidance, 84 Fed. Reg. at 52. See MPEP § 2106.04(a)(2). Accordingly, independent Claim 1 recites an abstract idea.
Next, the claim is analyzed to determine if it is integrated into a practical application. The recited judicial exception may be integrated into a practical application by identifying whether there are any additional elements recited in the claim beyond the judicial exception and evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. The claim recites additional limitation of a chaining engine executing on a central server computer, a plurality of merchant computers and a database to perform the steps. The processor (computer) in the steps is recited at a high level of generality, i.e., as a generic computer performing a generic computer function of processing data (see Applicant’s specification figures 3 and 6 and ¶¶ 0052 and 0064). This generic computer limitations are no more than mere instructions to apply the exception using generic computer component. Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(h). The claim is directed to the abstract idea.
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a server (using the computer as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the server at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at or provide an inventive concept. See MPEP 2106.05(h).
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea. Therefore, the claim is not patent eligible.
The analysis above applies to the statutory category of invention of claims1 and 11. Furthermore, dependent claims 2-10 and 12-20 do not add limitations that meaningfully limit the abstract idea. The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as integrating the abstract idea into a practical application.
Lastly, dependent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer. The claim merely amounts to the application or instructions to apply the abstract idea on a processor, and is considered to amount to nothing more than requiring a generic server to merely carry out the abstract idea itself.
Accordingly, claims 1-20 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Response to Arguments
The non-statutory double patenting rejection is maintained, since Applicant requested that the double patenting rejection be held in abeyance until the claimed invention is deemed allowable.
Applicant's arguments with respect to 35 USC § 101 directed to non-statutory subject matter have been fully considered but they are not persuasive.
Examiner respectfully disagrees. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
The proposed amendments do not overcome the 35 U.S.C. 101 rejection. Applicant amended the claims to include the above underlined claim limitations. The same updated analysis based on the new 2019 Patent Eligibility Guidance (2019 PEG) applies to the newly added claimed limitations and new claim 29 as discussed above and in the previous office action rejections.
The claims generally link the abstract idea and the gathering of information and determining an output based on analyzing the gathered information. The claims apply the abstract idea on the computer system at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The claims are directed to an abstract idea.
Applicant argues in substance that the claims are directed to the technological improvement, the ordered combination of the steps of claim 1 are unconcentional …
Examiner respectfully disagrees, the claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem/internet-centric problem. Limiting the use of an abstract idea “‘to a particular technological environment’ does not confer patent eligibility as this cannot be considered an improvement to computer or technology and so cannot be “significantly more.”
The focus of the claims in the present case is not on an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. The claims here are not directed to a specific improvement to computer functionality. Rather, they are directed to the use of generic technology in a well-known environment, without any claim that the invention reflects an inventive solution to any computer specific problem.
The courts found that “… if a patent’s recitation of a computer amounts to a mere instruction to ‘implement[t]’ an abstract idea ‘on . . . a computer,’ that addition cannot impart patent eligibility.” Alice Corp., 134 S.Ct. at 2358. The claimed invention does not indicate that specialized computer hardware is necessary to implement the claimed systems, similar to the claims at issue in Alice Corp. See Alice Corp., 134 S.Ct. at 2360 (determining that the hardware recited in the claims was “purely functional and generic,” and did not “offer [] a meaningful limitation beyond generally linking the use of the [method] to a particular technological environment, that is, implementation via computers”).
A claim may be found to be eligible if it integrates a judicial exception into a practical application as cited by Applicant. However, examiner notes that "claiming the improved efficiency/accuracy inherent with applying the abstract idea on a computer" does not provide an inventive concept (see MPEP §2106.05(f)(2).) Claiming improved data processing efficiency inherent with applying any improvement to the judicial exception itself on a computer does not provide an inventive concept. The claims do not integrate the judicial exception into a practical application.
In the instant case, the claims’ invocation of processors, networks, and databases does not transform the claimed subject matter into patent-eligible applications. The claims at issue do not require any nonconventional computer, network, or database components, or even a “non-conventional and non-generic arrangement of known, conventional pieces,” but merely call for performance of the claimed management of rehypothecated collateral allocations “on a set of generic computer components”. Bascom, 2016 WL 3514158, at *6–7.
The claims as a whole do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are generic computer components claimed to perform their basic functions. The processor is a general-purpose processor that performs general-purpose functions. The recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer (using the processor as a tool to implement the abstract idea). Taking the additional elements individually and in combination, each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The claim does not amount to significantly more than the abstract idea itself. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply a generic recitation of a computer processor performing its generic computer functions. Accordingly, claims are ineligible.
Applicant presumes that Examiner took the position that the claims describe well-understood, routine and conventional activities. Examiner respectfully disagrees. Examiner did not indicate that the claims describe well-understood, routine and conventional activities in the 101 rejections in this particular case. Rather, Examiner identified the focus of the invention, and determined that it is directed to an abstract idea and the use conventional “off the shelf” computer to implement the abstract idea.
Furthermore, Examiner relies on what the courts have recognized, or those of ordinary skill in the art would recognize, as elements that describe well-understood, routine, and conventional activity in particular fields. For example, receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) (“Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” (emphasis added)). In this case, the use of devicess and networks is described at a high level of generality, or as an insignificant extra-solution activity that cannot be considered as an improvement to network/computer technology.
Examiner submits that under the current 35 USC 101 examining practice, the existence of such novel features would still not cure the deficiencies with respect to the abstract idea. See for example: Ultramercial, Inc. v. Hulu, LLC, 112 USPQ2d 1750, U.S. Court of Appeals Federal Circuit, No. 2010-1544, Decided November 14, 2014, 2014 BL 320546, 772 F.3d 709, Page 1754 last two ¶: “We do not agree with Ultramercial that the addition of merely novel or non-routine components to the claimed idea necessarily turns an abstraction into something concrete”. Indeed, in this in instant case, the limitations simply narrow or limit the abstract idea without providing anything significantly more than the abstract idea itself.
Dependent claims do not resolve the issues raised in the independent claims. The dependent claims do not add limitations that meaningfully limit the abstract idea.
The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. The claims merely amount to the application or instructions to apply the abstract idea on a processor, and is considered to amount to nothing more than requiring a generic processor to merely carry out the abstract idea itself. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as significantly more than the abstract idea.
Accordingly, claims 1-20 are rejected as ineligible for patenting under 35 U.S.C. 101.
For these reasons the rejection under 35 USC § 101 directed to non-statutory subject matter set forth in this office action is maintained.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hani Kazimi whose telephone number is (571) 272-6745. The examiner can normally be reached Monday-Friday from 8:30 AM to 5:00 PM.
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Respectfully Submitted
/HANI M KAZIMI/
Primary Examiner, Art Unit 3691