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 .
DETAILED ACTION
Status of Claims
This action is in reply to the response filed on 12-2-2025. Claims 16-20 and 28-42 are currently pending and have been examined. cancelled by Applicants. Claims 16, 30, 36 and 37 have been amended.
Patent-Ineligible Subject Matter - 35 U.S.C. § 101
Under 35 U.S.C. § 101, “[w]hoever 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.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 217–18.
The U.S. Patent and Trademark Office (the “USPTO”) published revised guidance on January 7, 2019, for use by USPTO personnel in evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the USPTO’s examination procedure with respect to the first step of the Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that [are] considered an abstract idea”; and (2) clarifying that a claim is not “directed to” a judicial exception if the judicial exception is integrated into a practical application of that exception. Id. at 50.1
The first step, as set forth in the 2019 Revised Guidance (i.e., Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to whether the claim recites a judicial exception, e.g., one of the following three groupings of abstract ideas: (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. 2019 Revised Guidance, 84 Fed. Reg. at 54; see also MPEP §§ 2106.04(II)(A)(1), 2106.04(a). If so, we next determine, in Step 2A, Prong Two, whether the claim as a whole integrates the recited judicial exception into a practical application of that exception, i.e., whether the additional elements recited in the claim beyond the judicial exception, apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Id.; see also MPEP §§ 2106.04(II)(A)(2), 2106.04(d). Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we conclude that the claim is “directed to” the judicial exception, e.g., an abstract idea. Id.; see also MPEP § 2106.04(II)(A)(2).
If the claim is determined to be directed to a judicial exception under Step 2A, we next evaluate the additional elements, individually and in combination, in Step 2B, to determine whether they provide an inventive concept, i.e., whether the additional elements or combination of elements amounts to significantly more than the judicial exception itself; only then, is the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56; see also MPEP § 2106.05.
Analysis:
STEP 1
Is the claim(s) directed to a process, machine, manufacture or composition of matter?
Claims 16-20 and 28-42 are all directed to a statutory category (e.g., a process, machine, manufacture, or composition of matter). The answer is YES. Therefore, the issue now is whether it is directed to a judicial exception without significantly more.
STEP 2
Step 2A(i): Does the Claim Recite a Judicial Exception?
Claims 16-20 and 28-42 are directed to method for providing account management capabilities for users with limited access to banks and bank accounts, as basic transacting generally requires exchange or swap of bank account data such as debit card numbers or routing numbers. The method involves receiving information associated with a user, and generating a limited account for the user through a computing device, where the limited account has a restriction e.g. geographical- or internet protocol address-based limitation on withdrawal privileges, according to the received information. A code associated with the account is caused to be applied to a physical token. Limited access is provided to the limited account to a mobile device that scans the code. An instruction is received from the mobile device to transfer an asset to or from the account. The asset is transferred according to the instruction. The Examiner finds that the abstract ideas in this case are receiving user information, creating a limited account, applying a code to a token, providing full access to the limited account and providing limited access to the limited account.
From this we see that the claims do not recite the judicial exceptions of either natural phenomena or laws of nature. The next issue is whether it recites the judicial exception of an abstract idea. To answer this, we next determine whether it recites one of the concepts the Courts have held to be lacking practical application, viz. mathematical concepts2, certain methods of organizing human interactions3, including fundamental economic practices and business activities, or mental processes4.
The practice of providing bank accounts for “limited users” (See Specification paragraph 9) is a fundamental economic practice. The abstract ideas in exemplary claim 16 are receiving user information, creating a limited account, applying a code to a token, and providing access to restricted or full access to the account. Thus, the invention is an example of a conceptual idea subject to the Supreme Court's "concern that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity." See Alice, 573 U.S. at 216 (citations omitted). Thus the claims are directed to a certain method of organizing human activity.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
The 2019 Revised Guidance sets forth a non-exhaustive listing of considerations indicative that an additional element or combination of elements may have integrated a recited judicial exception into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55; see also MPEP § 2106.04(d). In particular, the Guidance describes that an additional element may have integrated the judicial exception into a practical application if, inter alia, the additional element reflects an improvement in the functioning of a computer or an improvement to other technology or technical field. Id. At the same time, the Guidance makes clear that merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea; adding insignificant extra-solution activity to the judicial exception; or only generally linking the use of the judicial exception to a particular technological environment or field are not sufficient to integrate the judicial exception into a practical application. Id.
The Examiner finds each of the limitations of representative claim 16 recites abstract ideas as Identified in Step 2A(i), supra, and none of the limitations integrate the fundamental economic practice into a practical application as determined under one or more of the MPEP sections cited above. The claim as a whole merely uses instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea.
Thus, on this record, Applicants have not shown eligibility under the guidance of Manual for Patent Examining Procedure section 2106.05(a) (“Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field”) or section 2106.05(e) (“Other Meaningful Limitations”).
Step 2B – “Inventive Concept” or “Significantly More”
Evaluating representative claim 16 under step 2 of the Alice analysis, the Examiner concludes it lacks an inventive concept that transforms the abstract idea of managing accounts for limited users into a patent-eligible application of that abstract idea. As evidence of the conventional nature of the invention as disclosed, the Examiner refers to paragraphs 13 and 45 of the published Specification, and Figure 5. The Examiner finds the recited hardware is well-understood, routine, and conventional. The generic computers described in the Specification are well-understood, routine, and conventional, at least because the Specification describes the computers in a manner that indicates they are sufficiently well-known that the Specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112 ¶ 1(a). See Berkheimer Memo5 § III.A.1. Thus, because the Specification describes the additional elements in general terms, without describing the particulars, the Examiner concludes the claim limitations may be broadly but reasonably construed as reciting conventional computer components and techniques, particularly in light of Applicants’ Specification.6
Dependent claims 17, 31 and 38 add the additional limitation of full access comprising a withdrawal privilege and a deposit privilege, and wherein restricted access comprises the deposit privilege. This is nonfunctional descriptive material because it is a mere arrangement of data. Descriptive material is nonstatutory when claimed as descriptive material per se, 33 F. 3d at 1360, 31 USPQ2d at 1759. See MPEP §2011.05(II).
Dependent claims 18, 34 and 40 add the additional limitation of the information received from the user excluding at least one of a phone number, an email address, or a mailing address. This is also nonfunctional descriptive material.
Dependent claims 19, 35 and 41 add the additional limitations of Dependent claims add the additional limitation of displaying a portion of the received information, generating a first interactive element prompting a confirmation regarding the received information generating a second interactive element prompting a deposit into the limited account. This is insignificant extra-solution activity because this is activity incidental to the primary process or product that is merely a nominal or tangential addition to the claim. See 2019 Revised Guidance, 55 n.31; see also MPEP § 2106.05(g). As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. Parker vs. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978).
Dependent claims 20, 36 and 42 add the additional limitations of receiving the deposit, holding an amount of the deposit in a holding account for a period of time, displaying a third interactive element prompting a confirmation regarding the amount of the deposit and executing the deposit. This is also insignificant extra-solution activity.
Dependent claim 28 adds the additional limitation of the restricted access comprising a third interactive element prompting privileges. This is also nonfunctional descriptive material.
Dependent claims 29 and 33 add the additional limitation of the limitation on withdrawal privileges allowing the second computing device to withdraw funds at a pre-defined location. This is also insignificant extra-solution activity.
Dependent claims 32 and 39 add the additional limitation of providing restricted access comprising providing a limitation on withdrawal privileges. This is also insignificant extra-solution activity.
Conclusion of Law
The examiner concludes that the claims do not provide an inventive concept because the additional elements recited in the claims do not provide significantly more than the recited judicial exception. From these determinations the examiner further notes that the claims do not recite an improvement to the functioning of the computer itself or to any
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other technology or technical field, a particular machine, a particular transformation, or other meaningful limitations. From this the examiner finds the claims are directed to a fundamental economic practice without significantly more.
Claim Rejections - 35 USC § 103 (Post-AIA )
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.
Claims 16, 18, 19, 28, 30, 34, 35, 37, 40 and 41 are rejected under 35 U.S.C. 103 as being unpatentable over US20210374709, Suresh et al, in view of US20150379506, Griffin, and further in view of US20010047330, Gephart et al.
As per claim(s) 16, 30 and 37, Suresh teaches:
receiving, from a first computing device, information regarding a user (At least paragraph(s) 3 and abstract);
creating a limited account for the user based on the received information (At least paragraph(s) 24, 32 and abstract).
Suresh may not teach causing a code associated with the limited account to be applied to a physical token, the code including data representative of the limited account and additional data representative of a level of authority for accessing at least a feature of the limited account; however, this step is taught by Griffin in at least paragraphs 23, 36 (“any other information”) and 45. It would be prima facie obvious to one of ordinary skill in the art before the time of the invention to combine the teachings of Griffin with Suresh because a code acts as a supplementary layer of security, making it harder for unauthorized individuals to access an account. The also code helps verify one’s identity, preventing scammers and hackers from impersonating a user and accessing sensitive information or financial assets.
Griffin goes on to teach:
providing to the first computing device, in response to the first computing device scanning the code, full access to the limited account (At least paragraph(s) 58 and claim 4).
Neither Suresh nor Griffin may teach providing to a second computing device, in response to the second computing device scanning the code, restricted access to the limited account; however, this limitation is taught by Gephart in at least the abstract. It would be prima facie obvious to one of ordinary skill in the art before the time of the invention to combine the teachings of Gephart with those of Suresh and Griffin as this would allow a user to perform transactions from anywhere with an internet connection.
With respect to claim(s) claims 18, 34 and 40, Griffin discusses:
the information received from the user excluding at least one of a phone number, an email address, or a mailing address (At least paragraph(s) 69).
In reference to claim(s) 19, 35 and 41, Griffin discloses:
displaying a portion of the received information (At least paragraph(s) 51).
Suresh discloses:
generating a first interactive element prompting a confirmation regarding the received information (At least paragraph(s) 54).
Gephart discloses:
and in response to the confirmation, generating a second interactive element prompting a deposit into the limited account (At least paragraph(s) 35).
Regarding claim(s) 28, Griffin describes:
restricted access comprising a third interactive element prompting privileges (At least paragraph(s) 54).
Claims 17, 20, 29, 31-33, 36, 38, 39 and 42 are rejected under 35 U.S.C. 103 as being unpatentable over US20210374709, Suresh et al, in view of US20150379506, Griffin, in view of US20010047330, Gephart et al, and further in view of US20090030840, Kane.
As to claim(s) 17, 31 and 38, none of the prior artisans may teach full access comprising a withdrawal privilege and a deposit privilege, and wherein restricted access comprising the deposit privilege; however, this step is taught by Kane in at least 62 and abstract. It would be prima facie obvious to one of ordinary skill in the art before the time of the invention to combine the teachings of Kane with those of the other prior artisans since this would help ensure that the funds are used for specific purposes.
With respect to claim(s) 20, 36 and 42, Gephart discusses:
receiving, from the second computing device, the deposit (At least paragraph(s) 35, 47 and claim 12);
at an end of the period of time, displaying, on the second computing device, a third interactive element prompting a confirmation regarding the amount of the deposit (At least paragraph(s) 54).
Kane discusses:
holding an amount of the deposit in a holding account for a period of time (At least paragraph(s) 7, 13 and abstract);
and in response to the confirmation, executing the deposit (At least paragraph(s) 7, 13 and abstract).
In reference to claim(s) 29 and 33, Kane discloses:
wherein the limitation on withdrawal privileges allows the second computing device to withdraw funds at a pre-defined location (At least paragraph(s) 12, 17 and abstract).
Regarding claim(s) 32 and 39, Kane describes:
wherein the limitation on withdrawal privileges allows the second computing device to withdraw funds at a pre-defined location (At least paragraph(s) 12, 17 and abstract).
Response to Arguments and amendments
Concerning the art rejection, that rejection is sustained. Applicants amended the independent claims by adding, “...the code including data representative of the limited account and additional data representative of a level of authority for accessing at least a feature of the limited account.” This though is taught by Griffin in at least paragraph 36 (“any other information”).
Turning now to the ‘101,’ Applicants contend that the claims are patent-eligible because of their similarity to the claims in McRO v. Bandai Namco Games America, 837, F.3d, 1299, 1313 (Fed. Cir. 2016).
But in McRO, the claimed improvement "allow[ed] computers to produce 'accurate and realistic lip synchronization and facial expressions in animated characters' that previously could only be produced by human animators [] through 'the use of rules, rather than artists, to set the morph weights and transitions between phonemes. "' 837 F.3d at 1313. Further, in McRO, the claims were defined in a specific way to solve the problem, automating tasks that previously were not automated, because they were driven by subjective determinations, rather than specific mathematical rules. Id at 1314. The existing technological process was improved by the incorporation of the claimed rules to allow automation of further tasks. Id.
Here, by contrast, applicant's claims are not defined in a specific way to solve the problem; rather, the claims essentially perform steps and actions (e.g., receiving, creating, associating, and providing. Moreover, in McRO, there existed substantial argument and support from the Specification concerning the inventive concept.
In this case applicant’s specification nor claims provide any details in a way that indicates an improvement in computer capabilities has been made. As such, applicant’s claims provide no details for any technical solution for any technical problem.
The claims, when viewed as a whole, perform processing functions that courts have routinely found insignificant to transform an abstract idea into a patent-eligible invention. As such, the claims amount to nothing significantly more than an instruction to implement the abstract idea on a generic computer
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which is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2360.
Applicants also fault the Examiner for failing to provide evidence that the claimed elements are routine, conventional and well-understood.
Examiner disagrees. The only additional elements beyond the abstract ideas to are the hardware components, and these were found to be routine, conventional and well-understood per paragraphs 13 and 45 of the published Specification, and Figure 5.
Accordingly, for reasons of record and as set forth above, the examiner maintains the rejection of the claims as being directed to a judicial exception without significantly more, and thereby being directed to non-statutory subject matter under 35 USC §101.
This action is made final. Applicants are 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 mailing date of this final action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert R. Niquette whose telephone number is 571-270-3613. The examiner can normally be reached on Monday through Friday, 5:30 AM to 2:00 PM Eastern.
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, Abhishek Vyas, can be reached at 571-270-1836.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT R NIQUETTE/
Primary Examiner, Art Unit 3691
1 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates the revised guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020)..
2 See e.g., Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972); Bilski v. Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018).
3 See e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Systems Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1383 (Fed. Cir. 2017); In re Marco Guldenaar Holding B. V., 2018 WL 6816331 (Fed. Cir. 2018).
4 See e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371-1372 (Fed. Cir. 2011); Intellectual Ventures I LLCv. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
5 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), USPTO 3 (2018) (available at https://www.uspto.gov/ sites/default/files/documents/memo-berkheimer-20180419.PDF) (explaining that a specification that describes additional elements “in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can show that the elements are well understood, routine, and conventional).
6 Claim terms are to be given their broadest reasonable interpretation, as understood by those of ordinary skill in the art and taking into account whatever enlightenment may be had from the Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).