DETAILED ACTION
Acknowledgements
This action is in response to Applicant’s filing on Aug. 19, 2025, and is made Final. This action is being examined by James H. Miller, who is in the eastern time zone (EST), and who can be reached by email at James.Miller1@uspto.gov or by telephone at (469) 295-9082.
Interviews
Examiner interviews are available by telephone or, preferably, by video conferencing using the USPTO’s web-based collaboration platform. Applicants are strongly encouraged to schedule via the USPTO Automated Interview Request (AIR) portal at http://www.uspto.gov/interviewpractice. Each AIR should specifically explain how the interview will advance prosecution—for example, by identifying targeted arguments responsive to the rejection of record, alleged defects in the examiner’s analysis, proposed claim amendments, or another concrete basis for discussion. See MPEP § 713. “Sounding out” the examiner is not permitted. See MPEP § 713.03. The Office is strictly enforcing interview practice.
The examiner is generally available Monday through Friday, 10:00 a.m. to 4:00 p.m. Eastern Time. For any GRANTED Interview Request, the applicant can expect an email within 24 hours confirming an interview slot from the dates/times proposed and providing collaboration tool access instructions. For any DENIED Interview Request, the record will include a communication explaining the reason for the denial.
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 .
Claim Status
The status of claims is as follows:
Claims 1 and 10 are pending and examined with Claims 1 and 10 in independent form.
Claims 1 and 10 are presently amended.
No Claims are presently cancelled or added.
Response to Amendment
Applicant's Amendment has been reviewed against Applicant’s Specification filed May 25, 2023, [“Applicant’s Specification”] and accepted for examination.
Response to Arguments
35 U.S.C. § 101 Argument
Applicant argues the amended claims recite a practical application of any alleged abstract idea because the amended claims “recite how to block transactions of particular transfers based on particularized information. For example, claim 1 blocks check clearing based on location.” Applicant’s Reply at 7. Further, Applicant argues the amended “claim elements of the independent claims, when considered in combination with each other, recite an inventive concept that amounts to significantly more than any abstract idea that may be present in the claims. Particularly, Applicant submits that the claimed arrangement of at least "receiving, by a payee bank computer program executed by a payee bank backend and from a payee bank computer application executed by a payee bank kiosk, check details for a check written by a payer to a payee, wherein the check details comprise a check number and an amount, wherein the check details are extracted with an image of the check by a camera in operative communication with the payee bank computer application," "receiving, by the payee bank computer program, a check passcode by extracting the check passcode from a machine-readable code presented to the payee bank kiosk by an application executed on a payer electronic device," and "blocking, by the payer bank computer program, the check from clearing," as recited by claim 1, were not a well-known, conventional way to block check clearing.” Id.
Examiner respectfully disagrees.
The claims recite “determining … to restrict clearing to the deposit location based on the check clearing restriction and the payee bank information.” Claim 1. Applicant’s Specification teaches check clearing occurs via “standard procedures.” Spec. ¶¶ 32, 58, 59. The “check clearing restriction,” “payee bank information,” and deposit location of a city and state” are all received by the “payer bank computer program,” which may be a “general purpose computer, to “block … the check from clearing.” Spec. ¶ 63 (“general-purpose computer”). The payer backend “generate[s] a check passcode, [and] may associated the check passcode with the check details, and may store the association in a database … the payer bank backend may also associate any check clearing restrictions with the check passcode and store those.” Spec. ¶ 44. “[T]he payer bank may compare the check clearing restrictions to payee bank information or payee actions.” Spec. ¶ 57. In view of the specification, the claims simply require collecting, comparing, blocking (rejecting) the check using conventional components via “standard procedures.” Spec. ¶ 57 (“standard procedures”). Absent the generic computer equipment, the claims recite a mental process where the computer is used to atomate the manual process of check clearing. MPEP § 2106.05(f). “[A] [method] claim whose entire scope can be performed mentally, cannot be said to improve computer technology.” MPEP 2106.05(a) (citation omitted). Further, “collecting information, analyzing it, and displaying certain results of the collection and analysis,” without more, are impermissibly abstract. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); see also In re Killian, 45 F.4th 1373, 1380 (Fed. Cir. 2022) (concluding that claims “directed to collection of information, comprehending the meaning of that collected information, and indication of the results, all on a generic computer network operating in its normal, expected manner” were abstract). The fact that the claims relate to a particular type of information—e.g., location data—does not remove them from the realm of the abstract. See, e.g., Sanderling Mgmt. Ltd. v. Snap Inc., 65 F.4th 698, 701 (Fed. Cir. 2023) (concluding that claims directed to providing a processing function based on “receiving . . . a Global Positioning System (GPS) location indication from each of a plurality of mobile devices” and “matching . . . each said GPS location indication with [a specific] geographic location” in a database were patent ineligible (citation and internal quotation marks omitted)). To the contrary, “even if a process of collecting and analyzing information is limited to particular content or a particular source, that limitation does not make the collection and analysis other than abstract.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (citation and internal quotation marks omitted); see also Elec. Power, 830 F.3d at 1353 (explaining that because “[i]nformation as such is an intangible,” this court has “treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas”). Thus, these claim limitations are part of the abstract idea exception. An inventive concept or practical application cannot be furnished by an abstract idea exception itself. MPEP §§ 2106.05(I), 2106.04(d)(III); accord Secured Mail Solutions LLC v. Universal Wilde, Inc., 873 F.3d 905, 907, 910–11 (Fed. Cir. 2017) (holding that claims directed to using a marking (e.g., a conventional barcode) affixed to the outside of a mail object to communicate information about the mail object, including claims reciting a method for verifying the authenticity of the mail object, were abstract.). Applicant’s argument is further belied by the teachings of the disclosure. Spec. ¶ 32 (“The payee bank may follow standard procedures for clearing the check.”; ¶ 58 (“The check may then be cleared using standard procedures.”); ¶ 59 (“The payer bank may inform the payee that the check will be cleared using standard procedures and any holds may be applied as is necessary and/ or desired.”).
Claim Interpretation
Under the broadest reasonable interpretation, the following claim terms are presumed to have their plain meaning consistent with the specification as it would be interpreted by one of ordinary skill in the art. MPEP § 2111.
“an application” executed by the payor electronic device, “a payer bank computer program,” “payee bank computer program,” “payee bank computer application” are synonymous terms. Spec. ¶ 5. Their functions are the same. The only distinction is in what specific device the software is installed, which is indicated by the non-functional labels preceding “program” or “application”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 10: Claim 1 was amended to recite “wherein the check passcode comprises a cryptographically generated machine-readable code comprising an encrypted representation of the check details and a digital signature generated using a private key of the paver bank” (Claim 1) and “a check passcode by extracting the check passcode from a cryptographically generated machine-readable code comprising an encrypted representation of the check details and a digital signature generated using a private key of the paver bank presented to the payee bank kiosk by an application executed on a payer electronic device” (Claim 10), with the underlined limitations being prohibited new matter. MPEP § 2163.06; 35 U.S.C. § 132; In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981). Applicant makes a broad statement that no new matter was introduced by the amendments, Applicant’s Reply at 6, but fails to “specifically point out the support for any amendments made to the disclosure.” MPEP § 714.02. Applicant’s Specification does not disclose “cryptographic,” “private key,” or “digital signature” based on a keyword search. Rather, Applicant’s Specification consistently descries the check passcode in general functional terms rather than specific cryptographic protocols. For example, the payer backend “may generate a check passcode, may associate the check passcode with the check details, and may store the association in a database.” Spec. ¶ 44. The passcode is specifically defined as “an alphanumeric code, such as a six digit and/or character code … [or] a machine-readable code, such as a QR code.” Spec. ¶ 45. The validation described is a database lookup, not a cryptographic verification. Spec. ¶ 55 (“the payer bank may validate that the check passcode and the check details received are associated with each other. For example, the payer bank may look up the association in a database”). Applicant’s Specification contains a boilerplate statement that “the instructions and/or data used in the practice of embodiments may utilize any compression or encryption technique or algorithm … An encryption module might be used to encrypt data.” Spec. ¶ 75. This is a generic statement about the system’s implementation capabilities, not a specific disclosure that the check passcode itself is a cryptographically generated container for the check details and a digital signature. For examination purposes, “[E]xaminer [will] consider the subject matter added to the claim in making rejections based on prior art since the new matter rejection may be overcome by applicant.” MPEP § 2163.06.
Claim Interpretation
Under the broadest reasonable interpretation, the following claim terms are presumed to have their plain meaning consistent with the specification as it would be interpreted by one of ordinary skill in the art. MPEP § 2111.
“an application” executed by the payor electronic device, “a payer bank computer program,” “payee bank computer program,” “payee bank computer application” are synonymous terms. Spec. ¶ 5. Their functions are the same. The only distinction is in what specific device the software is installed, which is indicated by the non-functional labels preceding “program” or “application”.
Claims 1 and 10: Claims 1 and 10 were amended to recite, “wherein the extraction comprises image processing to decode the machine-readable code and optical character recognition to extract the check details,” with the underlined limitations considered for a new matter rejection under § 112(a). Applicant makes a broad statement that no new matter was introduced by the amendments, Applicant’s Reply at 6, but fails to “specifically point out the support for any amendments made to the disclosure.” MPEP § 714.02. Applicant’s Specification does not disclose “optical character recognition” or “image processing” based on a keyword search and is silent on any method for extracting “check details” or the “passcode from a machine-readable code”.
Examiner finds the specification satisfies the written description requirement. As incorporated into MPEP § 2163(II)(A)(2), “information which is well known in the art need not be described in detail in the specification.” The specification discloses the function of “automatically extracting” check details from a digital image, Spec. ¶ 39, and a “check passcode in the form of a machine-readable code (e.g., a QR code) that may be imaged by the app 165.” Spec. ¶ 38. The extracted passcode is subsequently used for validation. Spec. ¶¶ 53, 55. A PHOSITA in the field of automated check processing would recognize that “optical character recognition” (OCR) and “image processing” (broadly) of a machine-readable code is the standard, well-known means for performing this extraction. Therefore, under MPEP § 2163.02, the specific claim term “‘optical character recognition” and “image processing” are implicitly supported by the functional disclosure in the specification.
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 and 10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more.
Analysis
Step 1: Claims 1 and 10 are directed to a statutory category. Claim 1 and 10 recite a “method” and are therefore, directed to the statutory category of a “process.”
Representative Claim
Claim 1 is representative [“Rep. Claim 1”] of the subject matter under examination and recites, in part, emphasis added by Examiner to identify limitations with normal font indicating the abstract idea exception, bold limitations indicating additional elements. Each limitation is identified by a letter for later use as a shorthand notation in referencing/describing each limitation. Portions of the claim use italics to identify intended use limitations1 and underline, as needed, in further describing the abstract idea exception:
[A] A method for code-based check authentication and clearance, comprising:
[B] receiving, by a payer bank computer program executed by a payer bank backend, check details for a check written by a payer to a payee;
[C] generating, by the payer bank computer program, a check passcode, wherein the check passcode comprises a cryptographically generated machine-readable code comprising an encrypted representation of the check details and a digital signature generated using a private key of the paver bank;
[D] associating, by the payer bank computer program, the check passcode with the check details, wherein the check details comprise a check number and an amount;
[D1] storing, by the paver bank computer program, the association in a secure database;
[E] receiving, by the payer bank computer program and from a payee bank backend, a received check passcode and received check details,
[F] wherein the received check passcode is extracted from a machine-readable code presented to a payee bank kiosk in communication with the payee back backend by an application executed on a payer electronic device,
[G] wherein the check details are extracted with [from] an image of the check by a camera in operative communication with the payer bank computer program; and
[G1] wherein the extraction comprises image processing to decode the machine-readable code and optical character recognition to extract the check details
[H] validating, by the payer bank computer program, an association between the received check passcode and the received check details by verifying the digital signature and decrypting the machine-readable code to confirm that the check details match the received check details;
[I] receiving, by the payer bank computer program, a check clearing restriction;
[J] associating, by the payer bank computer program, the check clearing restriction with the check passcode;
[K] receiving, by the payer bank computer program, payee bank information comprising a deposit location of a city or a state;
[L] determining, by the payer bank computer program, to restrict clearing to the deposit location based on the check clearing restriction and the payee bank information; and
[M] blocking, by the payer bank computer program, the check from clearing automatically preventing further processing of the check within the paver bank backend and
[N] transmitting a real-time notification to the payee bank backend.
Claims are directed to an abstract idea exception.
Step 2A, Prong One: Rep. Claim 1 recites “code-based check authentication and clearance” in the preamble, Limitation A, which recites a fundamental economic principle/practice under the organizing human activity exception because “code-based check authentication “describe[s] concepts relating to the economy and commerce,” such as “mitigating risks” of fraudulent checks, theft, and conversion. MPEP § 2106.04(a)(2)(II)(A). Limitations B–N are the required steps and data exchanges required for code-based check authentication and clearance and therefore, recite the same exception. Id.
Alternatively, Rep. Claim 1 recites “code-based check authentication and clearance” in the preamble, Limitation A, which recites a “long-standing commercial practice” and “legal interaction” under the organizing human activity exception because a check is a negotiable instrument under the Universal Commercial Code, Article 3, and represents a promise to pay another, which recites “agreements in the form of contracts” and “legal obligations” between two people. MPEP § 2106.04(a)(2)(II)(B). Limitations B–N are the required steps and data exchanges required for code-based check authentication and clearance and therefore, recite the same exception. Id.
Accordingly, the pending claims recite the combination of these abstract idea exceptions.
Step 2A, Prong Two: Rep. Claim 1 does not contain additional elements that integrate the abstract idea exception into a practical application because the additional elements are mere instructions to apply the abstract idea exception. MPEP § 2106.05(f). The additional elements are limited to the computer components and indicated in bold, supra. The additional elements are: a payer bank backend executing a payer bank computer program; a cryptographically generated machine-readable code comprising an encrypted representation of the check details and a digital signature generated using a private key of the paver bank; a secure database; a payee bank backend; payee bank kiosk; a payer electronic device executing an application; extracted from a machine-readable code wherein the extraction comprises image processing (software algorithm) to decode the machine-readable code; extracted with [from] an image of the check by a camera wherein the extraction comprises optical character recognition (software algorithm) to extract the check details (software algorithm).
Regarding the payer bank backend executing a payer bank computer program; a cryptographically generated machine-readable code comprising an encrypted representation of the check details and a digital signature generated using a private key of the paver bank; a secure database; a payee bank backend; payee bank kiosk; a payer electronic device executing an application; extracted from a machine-readable code wherein the extraction comprises image processing (software algorithm) to decode the machine-readable code; extracted with [from] an image of the check by a camera wherein the extraction comprises optical character recognition (software algorithm) to extract the check details (software algorithm), Applicant’s Specification does not otherwise describe them or describes them using exemplary language as a general-purpose computer, as a part of a general-purpose computer, or as any known and exemplary (generic) computer component known in the prior art. Thus, Applicant takes the position that such hardware/software is so well known to those of ordinary skill in the art that no explanation is needed under 35 U.S.C. § 112(a). Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1463 (Fed. Cir. 1984) (citing In re Meyers, 410 F.2d 420, 424 (CCPA 1969) (“[T]he specification need not disclose what is well known in the art”). E.g., Spec. ¶ 32 (“The payee bank may follow standard procedures for clearing the check”); ¶ 33 (“the payer bank may enforce any check clearing restrictions on the check that were entered by the payer. If any of the check clearing restrictions are not met, the payer bank will not clear the check”); ¶ 35 (“Backends 112 and 152 may communicate with each other via network 130, which may be any suitable network.”); ¶ 42 (“the payer may provide … any check clearing restrictions associated with the check”); ¶ 44 (“the payer bank backend may also associate any check clearing restrictions with the check passcode and store those”); ¶ 57 (“The payer bank may then send the amount to the payee bank using standard procedures”); ¶ 58 (“The check may then be cleared using standard procedures”); ¶ 59 (“The payer bank may inform the payee that the check will be cleared using standard procedures and any holds may be applied as is necessary and/ or desired”); ¶ 63 (Embodiments of the system … may be in the form of a "processing machine," such as a general-purpose computer”); ¶ 67 (“the processing machine used to implement embodiments may be a general-purpose computer. However, the processing machine described above may also utilize any of a wide variety of other technologies … or any other device or arrangement of devices that is capable of implementing the steps of the processes disclosed herein.”); ¶ 68 (“The processing machine used to implement embodiments may utilize a suitable operating system”); ¶ 69 (“each of the processors and the memories used by the processing machine may be located in geographically distinct locations and connected so as to communicate in any suitable manner”); ¶ 69 (“The two distinct pieces of equipment may be connected in any suitable manner”); ¶ 72 (“various technologies may be used to provide communication between the various processors and/or memories, as well as to allow the processors and/or the memories to communicate with any other entity … or any client server system that provides communication … [and] may use any suitable protocol”); ¶ 75 (“Any suitable programming language may be used in accordance with the various embodiments. Also, the instructions and/or data used in the practice of embodiments may utilize any compression or encryption technique or algorithm, as may be desired.”); ¶ 76 (“the set of instructions, i.e., the software for example, that enables the computer operating system to perform the operations described above may be contained on any of a wide variety of media or medium … the data that is processed by the set of instructions might also be contained on any of a wide variety of media or medium. That is, the particular medium, i.e., the memory in the processing machine, utilized to hold the set of instructions and/or the data used in embodiments may take on any of a variety of physical forms or transmissions, for example. … as well as any other medium or source of data that may be read by the processors”); ¶ 77 (“the memory or memories used in the processing machine that implements embodiments may be in any of a wide variety of forms”); ¶ 77 (“The database might use any desired arrangement of files”); ¶ 78 (“a user interface includes any hardware, software, or combination of hardware and software … or any other device that allows a user to receive information regarding the operation of the processing machine … [or] any device that provides communication between a user and a processing machine”); ¶ 81 (“the foregoing disclosure is not intended to be construed or to limit the present invention or otherwise to exclude any other such embodiments, adaptations, variations, modifications or equivalent arrangements.”) The generic processor, here, appears to perform calculations (functions) that are programmed by software. Spec. ¶¶ 72, 75, 76. This is a computer doing what it is designed to do—performing directions it is given to follow.
Regarding the claimed cryptographically generated machine-readable code comprising an encrypted representation of the check details and a digital signature generated using a private key of the paver bank, it describes a self-contained secure object. The code itself holds the check details (encrypted) and the proof of origin (digital signature). However, Applicant’s Specification describes a remote database pointer. The code contains no data other than an ID. The system works by sending the ID to the bank, which looks up the details in its own secure database. Spec. ¶ 55. Thus, Applicant’s Specification provides no practical instruction on how to generate, format, or parse the claimed specific code. Rather, the specification merely teaches how to do a database “look up”. Spec. ¶ 55. A person of ordinary skill would not know how to practice the “smart code” invention based on the “dumb code” look up instructions and teachings of the specification. The claim essentially says “apply cryptography” but the specification doesn’t show the practical machinery or steps to do so, i.e., a “black box” claim.
Regarding the claimed extracted from a machine-readable code wherein the extraction comprises image processing (software algorithm) to decode the machine-readable code; extracted with [from] an image of the check by a camera wherein the extraction comprises optical character recognition (software algorithm) to extract the check details (software algorithm), Applicant’s Specification does not explicitly disclose “optical character recognition to extract the check details” but merely that check details are extracted from an image of a check without naming the underlying technique/technology. Spec. ¶¶ 14, 26, 29, 36, 39, 52. Additionally, Applicant’s Specification does not explicitly disclose “image processing to decode the machine-readable code” but merely that the “check passcode” may be “in the form of a machine-readable code (e.g., a QR code) that may be imaged by the app 165” and then, the passcode, however extracted, is subsequently used for verification without naming the underlying technology. Spec. ¶¶ 38, 39, 48, 53, 55. Thus, Applicant’s Specification is silent on how the payee’s app extracts/decodes the passcode value from the QR code image, whether “image processing” or any specific algorithm is used, or whether the decoding happens on the device or the backend. Accordingly, Applicant’s Specification provides no practical instruction on how to extract the machine-readable code or check details. Rather, the specification merely teaches extraction occurs. Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016) (holding a claim lacked an inventive concept because it “simply recites the use of generic features ... as well as routine functions ... to implement the underlying idea”); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (“[C]ollecting information, analyzing it, and displaying certain results of the collection and analysis,” without more, are impermissibly abstract.); see also In re Killian, 45 F.4th 1373, 1380 (Fed. Cir. 2022) (concluding that claims “directed to collection of information, comprehending the meaning of that collected information, and indication of the results, all on a generic computer network operating in its normal, expected manner” were abstract).. This is mere apply it with a computer. MPEP § 2106.05(f).
Limitations A–N describe the payer bank backend executing a payer bank computer program; a cryptographically generated machine-readable code comprising an encrypted representation of the check details and a digital signature generated using a private key of the paver bank; a secure database; a payee bank backend; payee bank kiosk; a payer electronic device executing an application; extracted from a machine-readable code wherein the extraction comprises image processing (software algorithm) to decode the machine-readable code; extracted with [from] an image of the check by a camera wherein the extraction comprises optical character recognition (software algorithm) to extract the check details (software algorithm), performing the steps of the claimed invention, which represents the abstract idea exception itself. Performing the steps of the abstract idea exception itself simply adds a general-purpose computer after the fact to an abstract idea exception, MPEP § 2106.05(f)(2), or generically recites an effect of the judicial exception. MPEP § 2106.05(f)(3).
Therefore, the claim as a whole, looking at the additional elements individually and in combination, are no more than mere instructions to apply the exception using generic computer components and is not a practical application. MPEP § 2106.05(f). The additional elements do not integrate the abstract idea exception into a practical application because they do not impose any meaningful limits on the abstract idea exception. Accordingly, Rep. Claim 1 is directed to an abstract idea.
Rep. Claim 1 is not substantially different than Independent Claim 10 and includes all the limitations of Rep. Claim 1. Independent Claim 10 contains no additional elements not otherwise analyzed. Therefore, Independent Claim 10 is also directed to the same abstract idea.
The claims do not provide an inventive concept.
Step 2B: Rep. Claim 1 fails Step 2B because the claim as whole, looking at the additional elements individually and in combination, are not sufficient to amount to significantly more than the recited judicial exception. As discussed with respect to Step 2A, Prong Two, the additional elements in the claim amount to no more than mere instructions to apply the exception using a generic computer and/or generic computer components. MPEP § 2106.05(f). The same analysis applies here in Step 2B. Mere instructions to apply an exception using a generic computer and/or generic computer components cannot provide an inventive concept. MPEP § 2106.05(I).
The additional elements, taken individually and in combination, do not result in the claim, as a whole, amounting to significantly more than the identified judicial exception.
The pending claims in their combination of additional elements is not inventive. First, the claims are directed to an abstract idea. Second, each additional element represents a currently available generic computer technology, used in the way in which it is commonly used (individually generic). Last, Applicant’s Specification discloses that the combination of additional elements is not inventive. Spec., ¶¶ 80, 81 (steps/functions may be performed in any order); ¶¶ 32, 33, 35, 42, 44, 57, 58, 59, 63, 67, 68, 69, 72, 75, 76, 77, 78, 80, 81 (known and generic (exemplary) computer equipment as explained and cited supra.)
Thus, Examiner finds the additional elements of Rep. Claim 1 are elements that have been recognized as well-understood, routine, and conventional (“WURC”) activity in the particular field of this invention based on Applicant’s own disclosure2. Spec. ¶¶ 32, 33, 35, 42, 44, 57, 58, 59, 63, 67, 68, 69, 72, 75, 76, 77, 78, 80, 81; MPEP § 2106.05(d). Specifically, Applicant’s Specification discloses the recited additional elements (i.e., the payer bank backend executing a payer bank computer program; a cryptographically generated machine-readable code comprising an encrypted representation of the check details and a digital signature generated using a private key of the paver bank; a secure database; a payee bank backend; payee bank kiosk; a payer electronic device executing an application; extracted from a machine-readable code wherein the extraction comprises image processing (software algorithm) to decode the machine-readable code; extracted with [from] an image of the check by a camera wherein the extraction comprises optical character recognition (software algorithm) to extract the check details (software algorithm)) are limited to generic computer components. These elements do no more than “apply” the recited abstract idea(s) on a known computer and computer-related components. Case, U.S. Pat. No. 4,358,671 is prior art and additional evidence that machine-readable codes have been used on checks since 1982. Case, Abstract (“The system includes a specially designed check having a punch out or other machine-readable element.”). Arora, et al. U.S. Pat. Pub. No. 2019/0340584 is prior art and additional evidence that machine-readable codes have been used on checks in blockchain security since 2018 (filing date). Arora, ¶ 4 (“Each check includes a machine-readable code, such as a quick response (QR) code, displayed thereon that is encoded with a value that is unique to that check.”). Kotovich, et al. U.S. Pat. No. 2006/0124724 is prior art and additional evidence that optical character recognition is the industry standard for check processing. Kotovich, ¶ 5. The Examiner also finds the functions of receiving, storing, transmitting, displaying, and processing (e.g., performing mathematical operations on) data, described in Limitations A–N are all normal functions of a generic computer.
There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the additional elements in combination adds nothing that is not already present when looking at the elements individually. Their collective functions merely provide conventional computer implementation of the abstract idea at a high level of generality. Thus, Rep. Claim 1 does not provide an inventive concept.
Rep. Claim 1 is not substantially different than Independent Claim 10 and includes all the limitations of Rep. Claim 1. Independent Claim 10 contains no additional elements not otherwise analyzed. Therefore, Independent Claim 10 is also directed to the same abstract idea.
Dependent Claims Not Significantly More
There are no dependent Claims.
Conclusion
Claims 1 and 10 are therefore drawn to ineligible subject matter as they are directed to an abstract idea without significantly more. The analysis above applies to all statutory categories of invention. As such, the presentment of Rep. Claim 1 otherwise styled as another statutory category is subject to the same analysis.
Examiner Statement of Prior Art—No Prior Art Rejections
Based on the prior art search results, the prior art of record fails to anticipate or render obvious the claimed subject matter of the instant application. While some individual features of Claims 1 and 10 may be shown in the prior art of record—no known reference, alone or in combination, would provide the invention of Claims 1 and 10. The prior art most closely resembling the applicant’s claimed invention are:
Gantman et al. (U.S. Pat. Pub. No. 2010/0198733) is pertinent because it discloses a payor's mobile device generating an electronic/paperless version or image of a check that is transmitted by the payor's mobile device to the recipient's mobile device, who submits the received check, electronically or in paper form, to a financial institution for redemption.
Sanjiv (U.S. Pat. Pub. No. 2008/0140579) is pertinent because it discloses a payer writing an original check on a special form, scanning and sending the scan and other check data to a payment server, which in tum produces an image replacement document to process it as a substitute check having payer-set expiry rules for the check.
Ebbert (U.S. Pat. Pub. No. 2015/0039504) is pertinent because it discloses a remote deposit capture system that determines the acceptance of a valid check by the evaluation of business rules such as geographical location. Validation fails if the location of the deposit is outside of a specified geographical boundary-where geographical location is determined based on user input or geolocation data available from the user's computing device or network. ¶ 35. However, a “deposit location of a city or a state” as claimed is not disclosed.
FOR: European Pat. Pub. No. EP 0984410 A1 is pertinent because it discloses a method and system for scanning a check and/or cash to create an electronic image of the front and the back of the check and/or cash. The image is then processed and transmitted electronically to a central location. The image may be recreated into a paper form at the central location, resembling the original paper check or cash.
NPL: A Novelty in Turkish Commercial Life: Execution of QR Code on Cheques, 2017 is pertinent because cheques with Quick Response Code (QR Code) and serial number as a compulsory form requirement for the validity of cheques.
Conclusion
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/JAMES H MILLER/Examiner, Art Unit 3694
/SCOTT C ANDERSON/Primary Examiner, Art Unit 3694
1 Statements of intended use fail to limit the scope of the claim under BRI. MPEP § 2103(I)(C).
2 See Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), 3-4, https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-20180419.PDF (April, 18, 2018) (That additional elements are well-understood, routine, or conventional may be supported by various forms of evidence, including "[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).").