DETAILED ACTION
The present application is being examined under the first inventor to file provisions of the AIA . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This Office Action is in response Applicant communication filed on 11/21/2025.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/21/2025 has been entered.
Claims
Claims 1, 6, 8, 10, 15, 17, 19, and 22 have been amended.
Claim 4, 5, 13, 14, and 21 has been cancelled.
Claims 23 and 24 have been newly added.
Claims 1-3, 6-12, 15-20, and 22-24 are currently pending in the application.
Response to Arguments
Claim Objections
The previous claim objections are withdrawn. The examiner spoke with applicant during the interview on 19 November 2025 and cleared up the confusion with the transitions of the claims 6, 7, 8, 15, 16, 17, and 22.
101
The applicant argues that independent claims 1, 10, and 19 are not directed to an abstract idea under step 2A, Prong One because the claims recite computer-implemented functionality for generating an anonymized subset of electronic check records that are utilized to test a software application for processing checks. This computer-implemented functionality cannot be practically performed by a human (see pages 16 and 17 of applicants arguments/remarks).
The examiner respectfully disagrees. The claims recite the abstract idea of selecting code paths, selecting check records, and anonymizing the check records to test the code paths which is an abstract idea that can be performed in the human mind and by a user using pen and paper. The instant specification in section [0067] discloses that a developer can manually determine possible code paths via code inspection.
Further, the applicant argues that independent claims 1, 10, and 19 are eligible under Step 2A, Prong Two because they integrate the alleged abstract idea into a practical application by providing a specific technological improvement to existing technology (see pages 17-22 of applicant’s arguments/remarks).
The examiner respectfully disagrees. The claims do not recite any additional elements that provide significantly more than the abstract idea. The claims as a whole do not recite an improvement to technology that tests software applications and instead recites an abstract idea that is generally linked to a particular field of use which is testing electronic check record software.
Furthermore, the applicant argues that the combination of additional elements recited in amended claims 1, 10, and 19, when taken together, supply an inventive concept that amounts to significantly more than the abstract idea (see pages 22 and 23 of applicant’s arguments/remarks).
The examiner respectfully disagrees. The claims do not recite a technical improvement for testing software applications for processing checks. Instead the claims recite a computer as a tool to perform the abstract idea of selecting code paths, selecting check records, and anonymizing the check records to test the code paths. The use of a computer as a tool to implement or perform an abstract idea does not integrate the abstract idea into a practical application.
The examiner has considered all of the applicant’s arguments but maintains the 101 rejection.
103
Examiner previously cited limitations of claims 6, 15, and 22 as allowable subject matter over the prior art. The applicant has added limitations of claims 6, 15, and 22 to the independent claims 1, 10, and 19. After further search and consideration, the examiner withdraws the previous 103 rejection due to the claim amendments.
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 1-3, 6-12, 15-20, and 22-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-3, 6-9, 23, and 24 are directed to a computing platform, claims 10-12, and 15-18 are directed to a non-transitory computer-readable medium, and claims 19, 20, and 22 are directed to a method. Therefore, these claims fall within the four statutory categories of invention.
Claim 19 recites selecting code paths, selecting check records, and anonymizing the check records to test the code paths. Specifically, the claim recites “determining a set of possible code paths encoded within a software application associated with check processing…; receiving a set of [electronic] check records for real-world checks that are candidates for use in testing the software application; reducing the set of [electronic] check records down to a subset of [electronic] check records to be used for testing the software application that includes one [electronic] check record corresponding to each respective possible code path of the set of possible code paths, wherein the subset of [electronic] check records is determined through an iterative process that iterates through the set of [electronic] check records and involves, for each respective [electronic] check record in the set of [electronic] check records: (i) determining, for the respective [electronic] check record, a respective set of values for a given set of variables that are indicative of which possible code path of the software is to be utilized during the processing of respective [electronic] check record; (ii) based on the respective set of values that is determined for the respective [electronic] check record, identifying a code path from the set of possible code paths that is expected to be utilized during processing of the respective [electronic] check record; (iii) determining whether an [electronic] check record corresponding to the identified code path has already been added to the subset of [electronic] check records; and (iv) based on the determining, ither (a) refraining from adding the respective [electronic] check record to the subset of [electronic] check records if an [electronic] check record corresponding to the identified code path has already been added to the subset of [electronic]check records or (b) adding the respective [electronic] check record to the subset of [electronic] check records if an [electronic] check record corresponding to the identified code path has not already been added to the subset of [electronic] check records; and anonymizing the subset of [electronic] check records to be used for testing the software application by, for each respective [electronic] check record in the subset of [electronic] check records, modifying the respective [electronic] check record and thereby producing a respective anonymized check record for the respective [electronic] check record, wherein the anonymized subset of [electronic] check records is thereafter utilized to test the software application”, which is grouped within the “mental processes” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test because the claims involve selecting code paths, selecting check records, and anonymizing the check records to test the code paths which falls under the category of concepts performed in the human mind (pen/paper). For example, altering image data for the respective anonymized check record can be performed by a user using a pen to cross out information on a photocopy of a check record to remove any information on the check that the human wishes to be anonymized. Further a user can cross out and write in random data as a replacement. Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; MPEP § 2106.04(a)). Claim 1 is directed to a system that performs the same functions of claim 19 and claim 10 is directed to a non-transitory computer-readable medium that stores instructions that causes a processor to perform the same functions of claim 19. Therefore Claims 1 and 10 are also directed to the abstract idea of selecting code paths, selecting check records, and anonymizing the check records to test the code paths.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test, the additional element(s) of claims 1, 10, and 19, such as the use of the computing platform, communication interface, processor, computer implemented tool, and non-transitory computer-readable medium, merely use(s) a computer as a tool to perform an abstract idea. Specifically, the computing platform, communication interface, processor, computer implemented tool, and non-transitory computer-readable medium perform(s) the steps or functions of selecting code paths, selecting check records, and anonymizing the check records to test the code paths. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. Further, the use of electronic check records is generally linking the use of the judicial exception to a particular technological environment (e.g. computers) or field of use (testing electronic check record software). The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP § 2106.05(a)), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP § 2106.05(b)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP § 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
Claims 1, 10, and 19 does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP § 2106.05), the additional element(s) of using a computing platform, communication interface, processor, computer-implemented tool, and non-transitory computer-readable medium to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of selecting code paths, selecting check records, and anonymizing the check records to test the code paths. As discussed above, taking the claim elements separately, the computing platform, communication interface, processor, computer implemented tool, and non-transitory computer-readable medium perform(s) the steps or functions of the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of selecting code paths, selecting check records, and anonymizing the check records to test the code paths. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Further, the use of the electronic check records are recited at a high level and are used for generally linking the use of the judicial exception (e.g. selecting code paths, selecting check records, and anonymizing the check records to test the code paths) to a particular technological environment (e.g. computers) or field of use (e.g. testing check record software) and is not indicative of an inventive concept. Furthermore, the altering of check image data is well-understood, routine, conventional activity in the field as shown by US 2008/0002911 A1 (“Eisen”) including sections [0024]-[0028]. Therefore, the claim is not patent eligible.
The dependent claims 2, 3, 6-9, 11, 12, 15-18, 20, and 22-24 further describe the abstract idea without integrating the abstract idea into a practical application or providing significantly more than the abstract idea.
Claims 2, 11, and 20 recite the abstract idea of storing the anonymized data so that the anonymized data is accessible for testing the software application. The additional elements include a source control system. However the source control system is a computer used as a tool to perform the abstract idea and therefore does not integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Claims 3 and 12 recite the abstract idea of storing the anonymized data. The additional elements include a data file. However the data file generally linking the abstract idea to a particular technological environment (e.g. computer storage) and therefore does not integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Claims 6, 15, and 22 recite the abstract idea of determining whether to add an electronic check record to a subset of electronic check records based on whether the electronic check record has already been added to the subset or not. This is done by using identifiers generated for the electronic check records. There are no additional elements.
Claims 7 and 16 recite the abstract idea of anonymizing data on the electronic check record. There are no additional elements.
Claims 8 and 17 recite the abstract idea of using a tool to identify the set of possible code paths. The additional elements include a code coverage analytic tool. The code coverage analytic tool is using a computer as a tool to perform the abstract idea. Therefore the additional elements do not integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Claims 9 and 18 recite the abstract idea of testing the software application using the anonymized subset of electronic check records. There are no additional elements.
Claims 23 and 24 recite the abstract idea of anonymizing data in electronic check records by altering image data and using image templates to anonymize data in various check fields. There are no additional elements.
The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US Publication Number 20150347278 A1 to Sinha teaches a system and method that compares test code paths to production code paths to identify code paths that are not included for testing. US Publication Number 20220188219 A1 to Hicks teaches a system and method that identifies code paths that need to be tested.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY P SAX whose telephone number is (571) 272-2935. The examiner can normally be reached on M-F 8-4:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patrick McAtee can be reached at (571) 272-7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TS/
Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698
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