DETAILED ACTION
1. Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Status of Application and Claims
Claims 21, 22, 24, 25, 27-33 and 35-41 are pending.
Claims 21, 22, 24, 27, 28, 30, 32 and 35-37 were amended or newly added in the Applicant’s filing on 4/27/2026.
This office action is being issued in response to the Applicant's filing(s) on 4/27/2026.
3. Claim Interpretation
The subject matter of a properly construed claim is defined by the terms that limit its scope when given their broadest reasonable interpretation. see MPEP §2013(I)(C). Specifically, the “broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). However, “[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim.” See MPEP §2111.01, citing Superguide Corp. v. DirecTV Enterprises, Inc., 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See MPEP §2111, citing In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984).
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. See MPEP §2013(I)(C).
As such, claim limitations that contain statement(s) such as “if,” “may,” “might,” “can,” and “could” are treated as containing optional language. See MPEP §2013(I)(C). As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted. See MPEP §2013(I)(C).
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. See MPEP §2111.04(II). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e., the method stops). An alternative interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See MPEP §2143.03, citing Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009);
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble. See MPEP §2111.02;
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby.” See MPEP §2111.04;
Contingent limitations. See MPEP §2111.04(II);
Printed matter. See MPEP §2111.05; and
Functional language associated with a claim term. See MPEP §2181.
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following italicized, underlined and/or boldened language is interpreted as not further limiting the scope of the claimed invention.
Additionally, the following italicized, underlined and emboldened language is not necessarily an exhaustive list of claim language that is interpreted as not further limiting the scope of the claimed invention. Applicant should review all claims for additional claim interpretation issues.
Claim 21 recites a method comprising:
receiving, by the first digital platform, from the second digital platform, a response to confirm that transferring the at least one existing digital object is complete;
automatically transmitting, by the first digital platform, via the portal, after a completion of transferring the at least one existing digital object, a third API call instruction to the second digital platform;
terminating, by the second digital platform, based on the third API call instruction, the association of the at least one existing digital object with the second digital platform; and
receiving, by the first digital platform, from the second digital platform, a reply confirming that the termination has been completed.
Claim elements pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Claims 22, 35 and 36 have similar issues.
Claim 24 recites a method wherein the at least one new digital object comprises at least one new user relationship comprising new account terms wherein the new account terms are compared against the existing account terms in a comparison view comprising one or more of a fee, an interest rates, an account type, and one or more terms associated with each account being compared.
Claim elements (i.e., the data displayed in a comparison view) pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Additionally, method claims are defined by the method steps being actively performed, not method steps performed in the past (i.e., compared). Claiming method steps in the past tense can be interpreted as the method steps performed in the past are outside the scope of the claimed method. Alternatively stated, the scope of the claimed method are the active method steps which are building off a pre-existing state. The method steps performed for creation of the pre-existing state are outside the scope of the claimed invention.
Claim 27 recites a method comprising:
automatically initiating a transfer process related to transferring the at least one recurring transaction to at least one respective new account, the transfer process comprising one or both of: (i) displaying the at least one recurring transaction to the at least one user with an interactive element that enables the at least one user to migrate the at least one recurring transaction to the at least one respective new account; and (ii) automatically migrating the at least one recurring transaction to the at least one respective new account.
Method claims are defined by the method steps being actively performed, not the functions (i.e., enables the user to migrate the at least one recurring transaction to the at least one respective new account) that system elements (i.e., an interactive element) are configured to perform.
Claims 33 and 39 have similar issues.
Claim 28 recites a method comprising:
returning existing account types and associated existing account information via the portal provided by the first digital platform, for direct visual comparison with the new account types and new account information that the first digital platform offers the at least one user.
Method claims are defined by the method steps being actively performed (i.e., providing), not method steps performed in the past (i.e., provided). Claiming method steps in the past tense can be interpreted as the method steps performed in the past are outside the scope of the claimed method. Alternatively stated, the scope of the claimed method are the active method steps which are building off a pre-existing state. The method steps performed for creation of the pre-existing state are outside the scope of the claimed invention.
Claim elements pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Claim 28 recites a method wherein:
the inter-platform APIs return and display existing account types and associated existing account information via the portal provided by the first digital platform, for direct visual comparison with the new account types and new account information that the first digital platform offers the at least one user.
Claim elements (i.e., the data returned and displayed) pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Claim elements (i.e., the data provided) pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Claim 29 recites a method wherein further comprising:
generating, for provision to the at least one user, another UI configured to: (i) display one or more UI elements configured to receive identifying information regarding the at least one user; and (ii) confirm, upon submission of the identifying information, an actual identity of the at least one user based on analysis of the identifying information.
Method claims are defined by the method steps being actively performed, not method steps that may or may not be performed. Reciting a system element (i.e., UI) in a method claim is configured to perform a method step (i.e., receive identifying information and confirm) does not mean that the method step is actually performed (i.e., receiving identifying information and confirming).
Claims 32 and 40 have similar issues.
Claim 29 recites a method wherein further comprising:
generating, for provision to the at least one user, another UI configured to: (i) display one or more UI elements configured to receive identifying information regarding the at least one user; and (ii) confirm, upon submission of the identifying information, an actual identity of the at least one user based on analysis of the identifying information.
The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent is not met. See MPEP §2111.04(II).
Usage of the term and/or phrase “upon submission of the identifying information” in Claim 29 suggests that there remains the possibility that the contingent limitations are not performed as the condition(s) precedent is not met. For example, user does not submit identifying information. Therefore, the claim limitations based upon the condition are optional claim limitations. As a matter of linguistic precision, optional claim limitations do not narrow the scope of the invention, since they can always be omitted. See MPEP §2111.04(II).
As the Applicant does not address what happens should the optional claim limitation(s) fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
Claim 30 recites method comprising:
providing, to the at least one user: (i) a list of financial institutions from which migrations of accounts to the first entity are possible, and (ii) one or more interactive UI elements that enable the at least one user to select at which of the financial institutions on the list that the at least one user has one or more existing accounts.
Claim elements (i.e., the list displayed) pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Method claims are defined by the method steps being actively performed, not the functions that system elements are configured to perform (i.e., IU elements enable selection).
Claim 31 recites a method wherein the UI element comprises:
an initial screen comprising a list of all second entities on the second digital platform regarding which account migration to the first entity is supported, wherein selection of a second entity from the list automatically navigates to the user to a second screen having fields to receive login access credentials of the user for accessing the second entity online.
Claim elements (i.e., the list displayed) pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Claim 31 recites a method wherein the UI element comprises:
an initial screen comprising a list of all second entities on the second digital platform regarding which account migration to the first entity is supported, wherein selection of a second entity from the list automatically navigates to the user to a second screen having fields to receive login access credentials of the user for accessing the second entity online.
The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent is not met. See MPEP §2111.04(II).
Usage of the term and/or phrase “wherein selection of a second entity from the list” in Claim 31 suggests that there remains the possibility that the contingent limitations are not performed as the condition(s) precedent is not met (i.e., no selection of a second entity from the list is made). Therefore, the claim limitations based upon the condition are optional claim limitations. As a matter of linguistic precision, optional claim limitations do not narrow the scope of the invention, since they can always be omitted. See MPEP §2111.04(II).
As the Applicant does not address what happens should the optional claim limitation(s) fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
Claim 32 recites a method comprising:
confirming that the transferred at least one object have been transferred, including generating a new UI, for transmission to the at least one user, confirming that the one or more new accounts have been opened and that the at least one existing digital object has been transferred.
The intended use or purpose of the data (i.e., the UI) must result in a structural and/or functional difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.
The method claim recites transmitting the API call instruction to a second digital platform and the API call instruction programming the second digital platform for transmission to the at least one user, confirming that the one or more new accounts have been opened and that the at least one existing digital object has been transferred. While the intended purpose of the programming may be to transmit to the at least one user, confirming that the one or more new accounts have been opened and that the at least one existing digital object has been transferred, the method claim does not recite that the second digital platform actively performs the method step of transmitting the new IU.
Claim 35 has similar issues.
Claim 33 recites a method comprising:
(iii) presenting a second list of accounts that the at least one user has at the second digital platform at least one second entity such that accounts on the second list are displayed as selectable items, wherein selection of an account from the second list selects the account for potential migration.
Method claims are defined by the method steps being actively performed, not the functions that system elements are configured to perform (i.e., selection of an account from the second list selects the account for potential migration).
4. Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 21, 22, 24, 25, 27-33 and 35-41 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
STEP 1
The claimed invention falls within one of the four statutory categories of invention (i.e., process, machine, manufacture and composition of matter). See MPEP §2106.03.
The claim(s) recite(s) a method and/or computer-readable medium containing instructions, when executed, causes a computer to perform a method comprising:
receiving, by a first [entity], from … at least one user …, a migration authorization request comprising an instruction to migrate at least one existing … object associated with a second [entity] to the first [entity];
transmitting, by the first [entity], in response to the migration authorization request, a first … instruction to the second [entity];
identifying, by the second [entity], based on the first … instruction, the at least one existing … object being associated with the at least one user;
… using at least one credential received from the at least one user;
obtaining, by the first [entity], object relationship information of the at least one existing … object from the second [entity] …;
transmitting, by the first [entity], the object relationship information and at least one and at least one displaying instruction causing the … display at least one … element associated with the object relationship information;
receiving, by the first [entity], … at least one user-selection of the at least one … element;
creating, by the first [entity], based on the at least one user-selection and the object relationship information, at least one new … object associated with the user on the first [entity];
transmitting, by the first [entity], a second … instruction …, to the second [entity];
mapping, by the first [entity] the at least one existing … object to the at least one new … object;
receiving, by the first [entity], … after a completion of transferring the at least one existing object … a third … instruction to the second [entity];
terminating, by the second [entity], based on the third … instruction, the association of the at least one existing object … with the second [entity]; and
receiving, by the first [entity], from the second [entity], a replay confirming that the termination has been complete.
These limitations, as drafted, under its broadest reasonable interpretation, covers a series of steps instructing how to transfer financial accounts between financial service providers which is a fundamental economic practice, a sub-category of certain method(s) of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(A).
Additionally, these limitations, as drafted, under its broadest reasonable interpretation, covers a series of steps instructing a person how to transfer user relationships between entities which qualifies as managing personal behavior or relationships or interactions between people, a subcategory of certain methods of organizing human activity, an enumerated grouping of abstract ideas. MPEP §2106.04(a)(2)(II)(C).
Additionally, these limitations, as drafted, under its broadest interpretation, covers a series of steps that can be practically performed in the human mind (e.g., observations, evaluations, judgments and opinions) which are mental process, a second enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(III).
Examiner notes that “’collecting information, analyzing it, and displaying certain results of the collection and analysis,’ where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind” is a mental process. See MPEP §2106.04(a)(2)(III)(A) citing Electric Power Group v. Alstom, SA. (Fed. Cir. 2016).
Accordingly, the claimed invention recites an abstract idea.
STEP 2A – PRONG TWO
The claimed invention recites additional elements (i.e., computer elements) of computer(s) and computing device(s) (Claim(s) 21 and 35), digital object(s) (Claim(s) 21 and 35), digital platform(s) (Claim(s) 21 and 35), a portal (Claim(s) 21 and 35), a user interface with user interface element(s) (Claim(s) 21 and 35), digital representation(s) (Claim(s) 21 and 35) and API call instruction(s) (Claim(s) 21 and 35).
The claimed invention does not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field; improvements to the functioning of the computer itself; are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; are not applying the judicial exception with or by use of a particular machine; are not effecting a transformation or reduction of a particular article to a different state or thing; and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §2106.04(d).
The additional elements are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. See MPEP §2106.05(f). Alternately, the additional elements amount to no more than generally linking the exception to a particular technological environment or field of use. See MPEP §2106.05(h). Accordingly, these additional element(s), when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Accordingly, the claimed invention is directed to an abstract idea without a practical application.
STEP 2B
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer. See MPEP §2106.07(a)(II). The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
DEPENDENT CLAIMS
Dependent Claim(s) 22, 24, 25, 27-33 and 36-41 recite claim limitations that further define the abstract idea recited in respective independent Claim(s) 21 and 35. As such, the dependent claims are also grouped an abstract idea utilizing the same rationale as previously asserted against the independent claims.
Dependent Claim(s) recite additional elements (i.e., computer elements) electronic access (Claim(s) 27).
In each case, the additional element(s) are recited at a high level of generality such that these additional element(s) amount to no more than mere instructions to apply the exception using a generic computer component.
The dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the judicial exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination utilizing the same rationale as previously asserted against the independent claims.
Accordingly, the dependent claim(s) are also not patent eligible.
Appropriate correction is requested.
5. Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 21, 22, 24, 25, 27-33 and 35-41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnston (US PG Pub. 2015/0142660) in view of Milligan (US PG Pub. 2014/0279410).
Regarding Claim 21, Johnston discloses a computer-implemented method, comprising:
receiving, by a first digital platform (migration server), via a portal (online portal, administrative portal and internet-based portal), from at least one user interface (UI) of at least one computing device (client device) associated with at least one user, a migration authorization request comprising an instruction to migrate at least one existing digital object (account) associated with a second digital platform (old financial institution) to the first digital platform (new financial institution). (see fig. 1 and 12-22; para. 2, 46, 48, 98 and 125).
transmitting, by the first digital platform (migration server), in response to the migration authorization request, a first instruction to the second digital platform (old financial institution). (see fig. 8 and 15; para. 90 and 119);
identifying, by the second digital platform (old financial institution), based on the first instruction, the at least one existing digital object (old or existing accounts) associated with the at least one user. (see fig. 8 and 15; para. 90 and 119);
programmatically logging, by the first digital platform (migration server), into the second digital platform (old financial institution) using at least one credential received from the at least one user. (see para. 116-118);
obtaining, by the first digital platform (migration server), object relationship information (via accessing accounts) of the at least one existing digital object (account) from the second digital platform after the logging in. (see para. 116-118);
transmitting, by the first digital platform (migration server), the object relationship information (e.g., Deerwood Bank x1234) and at least one displaying instruction to the at least one computing device, the at least one displaying instruction causing the at least one UI to display at least one UI element associated with the object relationship information. (see fig. 15; para. 119-121);
receiving, by the first digital platform (migration server), from the at least one computing device, at least one user-selection of the at least one UI element (buttons or text-entry fields). (see fig. 5 and 17; para. 119-124);
creating, by the first digital platform (migration server), based on the at least one user- selection (add button) and the object relationship information, at least one new digital object (new account) on the first digital platform (migration server). (see fig. 5 and 17; para. 119-124);
transmitting, by the first digital platform (migration server), a second instruction to the second digital platform (old financial institution). (see para. 95);
transferring, by the second digital platform (old migration server), based on the second instruction, at least one existing digital object (accounts or funds) from the second digital platform (old financial institution) to the first digital platform (new financial institution). (see para. 95);
mapping, by the first digital platform (migration server), the at least one existing digital object (account) to the at least one new digital account (account). (see para. 95 and 124);
automatically transmitting, by the first digital platform (migration server), via the portal, after a completion of transferring the at least one existing digital object (account), a third instruction to the second digital platform (old financial institution). (see fig. 23; para. 128 and 131); and
terminating (closing), by the second digital platform (old financial institution), based on the third instruction, the association of the at least one existing digital object (account) with the second digital platform (old financial institution). (see fig. 23; para. 128 and 131).
Johnston does not explicitly teach a method wherein the first digital platform performing the migration of accounts also receives the digital object (i.e., the new financial institution). Although, Johnston does teach a method wherein the digital platform performs the migration function and transmits the digital object (i.e., the old financial institution). (see fig. 1 and 12-22; para. 2, 46, 48, 98 and 125).
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Johnston by integrating two component claim elements contained in Johnston (i.e., a migration server and a new financial institution) into one integrated claim element wherein each component claim element continues to serve the same function. In the integration, each component claim element, would merely have performed the same function as it did previously, and one of ordinary skill in the art at the effective filing date of the invention would have recognized that the results of the integration were predictable. see MPEP §2144.04 (VI)(B).
Johnston does not teach a method wherein communications occur via an API and the instructions comprise an API instruction call.
Milligan discloses a method wherein communications occur via an API and the instructions comprise an API instruction call. (see para. 32 and 36).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Johnston by incorporating APIs, as disclosed by Milligan, as communication via APIs is a standard and conventional technology enabling computer communication.
Johnston does not teach a method comprising receiving, by the first digital platform, from the second digital platform, a response to confirm that transferring the at least one digital object is complete; or receiving, by the first digital platform, from the second digital platform, a reply confirming that the termination has been complete.
Milligan discloses a method comprising:
receiving, from the second digital platform (old financial institution), a response to confirm that transferring the at least one digital object (securities) is complete. (see para. 52); and
receiving, from the second digital platform (old financial institution), a reply confirming that the termination (closing) has been complete. (see para. 52).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Johnston and Milligan by incorporating issuance of confirmations, as disclosed by Milligan, to all parties to the transaction, user and first digital platform, thereby keeping all parties informed about the status of the pending transactions. -
Regarding Claims 22, Johnston discloses a method comprising:
receiving, by the first digital platform (migration server) a confirmation that the second digital platform (old financial institution) supports migrating the at least one existing digital object. (see fig. 12-14; para. 10).
Regarding Claim 24, Johnston discloses a method wherein the at least one new digital object comprises at least one new user relationship comprising new account terms (account type), wherein the new account terms are compared against the existing account terms in a comparison view comprising one or more of a fee, an interest rates, an account type (account type), and one or more terms associated with each account being compared. (see fig. 15-16; para. 119-121 and 128)
Regarding Claim 25, Johnston discloses a method wherein the at least one new user relationship comprises one or more new accounts, account types, account information and the account terms, and the migration of the at least one existing digital object comprises an account migration. (see fig. 15-16; para. 119-121 and 128).
Regarding Claim 27, Johnston discloses a method comprising:
determining, via a direct electronic access of one or more existing accounts by the first digital platform, at least one recurring transaction among a plurality of charges of the one or more existing accounts. (see fig. 18; para. 54); and
automatically initiating a transfer process related to transferring the at least one recurring transaction to at least one respective new account, the transfer process comprising one or both of: (i) displaying the at least one recurring transaction to the at least one user with an interactive element that enables the at least one user to migrate the at least one recurring transaction to the at least one respective new account. (see fig. 18; para. 54).
Regarding Claim 28, Johnston discloses a method comprising returning existing account types and associated existing account information, via the portal provided by the first digital platform, for direct visual comparison with the new account types and new account information that the first digital platform offers to the at least one user. (see fig. 18; para. 54).
Regarding Claim 29, Johnston discloses a method comprising:
generating, for provision to the at least one user, another UI configured to:
(i) display one or more UI elements configured to receive identifying information regarding the at least one user (see fig. 10, 12 and 13; para. 9-11).; and
(ii) confirm, upon submission of the identifying information, an actual identity of the at least one user based on analysis of the identifying information. (see fig. 10, 12 and 13; para. 9-11).
Regarding Claim 30, Johnston discloses a method comprising providing, to the at least one user (i) a list of financial institutions from which migrations of accounts to a first entity are possible, and (ii) one or more interactive UI elements that enable the at least one user to select at which of the financial institutions on the list that the at least one user has one or more existing accounts. (see fig. 12-15).
Regarding Claim 31, Johnston discloses a method wherein the UI element comprises an initial screen comprising a list of all of second entities on the second digital platform regarding which account migration to the first platform is supported, wherein selection of the second entity from the list automatically navigates the at least one user to a second screen having fields to receive login access credentials of the at least one user for accessing the second entity online. (see fig. 12-15; para. 61).
Regarding Claim 32, Johnston discloses a method comprising:
confirming that the transferred at least one object has been transferred, including generating a new UL, for transmission to the at least one user, confirming that a one or more new accounts have been opened and that the at least one existing digital object has been transferred. (see fig. 25; para. 106).
Regarding Claim 33, Johnston discloses a method comprising:
performing an account acquisition process, by an interface associated with the at least one first computer associated with the first digital platform, including:
(i) receiving a first list of entities (old financial entity) at which at least one existing account of the at least one user is held. (see fig. 12);
(ii) determining at least one second entity, from the first list of entities, regarding which the first digital platform supports account migration. (see fig. 12; para. 61); and
(iii) presenting a second list of accounts that the at least one user has at the second digital platfrom such that accounts on the second list are displayed as selectable items, wherein selection of an account from the second list selects the account for potential migration. (see para. 10).
Johnston does not teach a method wherein communications occur via an API.
Milligan discloses a method wherein communications occur via an API. (see para. 32 and 36).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Johnston and Milligan by incorporating APIs, as disclosed by Milligan, as communication by computer systems via APIs are standard and conventional technology enabling computer communication.
Regarding Claims 35-40, such claims recite substantially similar limitations as claimed in previously rejected claims and, therefore, would have been obvious based upon previously rejected claims.
Regarding Claim 41, Johnston does not teach a computer-readable medium wherein the first or the second digital platform is internet cloud-based.
Milligan discloses the first or second digital platform (servers) is internet cloud-based (a cloud-based server). (see para. 34).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Johnston and Milligan by incorporating cloud-based technology, as disclosed by Milligan, as cloud-based computer configurations are a standard and conventional computer configuration.
6. Response to Arguments
Applicant's arguments filed 4/27/2026 have been fully considered but they are not persuasive.
§101 Rejection
Step 2A Prong One
Applicant argues that the claimed invention does not recite a judicial exception and, as such, satisfies Step 2A Prong One of the §101 Guidelines. See Arguments, pp. 14-15.
Specifically, the Applicant argues:
Applicant's now pending Claim 21 does not recite a mental process. A human mind cannot practically perform programmatic log-in of one digital platform into another, transmit API call instructions that cause a remote platform to identify, transfer, and terminate a digital object, or receive machine responses confirming completion of transfer and termination. See Arguments, p. 14.
The Examiner respectfully disagrees.
MPEP § 2106.04(a)(2)(III)(C) recites:
In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification. For instance, examiners should review the specification to determine if the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite a mental process.
The claimed invention recites a mental process even though the claimed invention recites that the mental process is being performed on a computer. The claims merely recite that the “concept is performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept.”
Applicant further argues:
Thus, Applicant's pending claim 21 could not be properly characterized as a method of organizing human activity merely because the migrated digital object may correspond to an account in certain embodiments. The claim language at issue is directed to how heterogeneous computer platforms interoperate through credential-based access, API-mediated control, structured object retrieval, and post-transfer termination confirmation. See Arguments, p. 14.
The Examiner respectfully disagrees.
During examination, claims are to be “given their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005).
If the specification recites embodiments wherein the migrated digital object corresponds to an account then, under the broadest reasonable interpretation, the claimed digital object may be interpreted as an account for §101 analysis.
Additionally, Applicant argues that the claimed invention is “is directed to how heterogeneous computer platforms interoperate through credential-based access, API-mediated control, structured object retrieval, and post-transfer termination confirmation.”
“[D]irected to” is not the proper standard for analysis under Step 2A Prong One of the §101 Guidelines.
MPEP §2106.04(a) recites:
Examiners should determine whether a claim recites an abstract idea by (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas listed above. The groupings of abstract ideas, and their relationship to the body of judicial precedent, are further discussed in MPEP § 2106.04(a)(2).
The proper standard under Step 2A Prong One of the §101 Guidelines is whether the claims recite an abstract idea. The claims recite an abstract idea, specifically the claims recite a method and system to transfer accounts (i.e., objects) between financial institutions (i.e., digital platforms) which is a fundamental economic practice, and management of personal behavior or relationships or interactions between people.
Step 2A Prong Two
Applicant argues that the claimed invention recites a practical application, specifically “an improvement in the functioning of a computer, or an improvement to other technology or technical field,” and, as such, satisfies Step 2A Prong Two of the §101 Guidelines. See Arguments, pp. 15-16.
Specifically, the Applicant argues:
Even if the Office were to maintain that Applicant now clarified claim 21 is directed to so- called "abstract concept" at a high level, Applicant now clarified claim 21 integrates any such concept into a practical application. The claim does not seek to monopolize the idea of account migration in the abstract. Instead, it recites a specific implementation that controls inter-platform communications to accomplish remote identification, remote transfer, mapping of transferred objects to newly created objects, and automatic termination only after transfer completion has been confirmed. That ordered combination imposes meaningful limits on the claim and ties it to a concrete technological solution for cross-platform migration and closure. See Arguments, p. 15 – emphasis added.
The Examiner respectfully disagrees.
MPEP §2106.05(a) recites:
If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. – emphasis added.
The specification does not provide any evidence that there is a technical problem (i.e., a technology-based problem) to be solved. For example, the specification does not provide any evidence that existing and conventional technology was not capable of cross-platform migration and closure but for the claimed technology-based solution.
Additionally, the specification does not provide any evidence that the claimed invention results in an improvement to the functioning of a computer, or an improvement to conventional technology or technological processes. For example, the specification does not provide any evidence that the functionality of a computer or conventional technology has been improved, or their technological capabilities have been expanded beyond their existing capabilities.
Applicant further argues:
The Specification confirms this technical implementation in FIGS. 4-6 and para. [046], [048], [053], and [059]-[060], which describe an automated portal that obtains credentials, accesses external APIs, retrieves relationship information, issues transfer requests, confirms successful transfer, and then initiates and confirms termination so that the legacy relationship can be closed and further charges avoided. This is precisely the type of computer-network functionality that is evaluated as a practical application, not a mere instruction to "apply" an abstract idea on generic computers. See Arguments, pp. 15-16 – emphasis added.
The Examiner respectfully disagrees.FairWarning IP, LLC v. Iatric System, Inc. (Fed. Cir. 2016) stated:
FairWarning appears to argue that, under a correct construction, the district court would have understood the term audit log data to “exist[] in the computer environment after at least one of [the] transactions or activities … are executed in the computer environment by an authorized user.” Id. at 30 (emphases omitted). The implication of this construction, FairWarning argues, would be that “the ′500 patent is necessarily rooted in computer technology.” Id. But this is the same argument we dismissed above, cloaked as claim construction. Simply requiring computer implementation of an otherwise abstract-idea process, as in FairWarning would require of the claim, does not make the claims patent eligible. See FairWarning IP, LLC v. Iatric System, Inc., 120 USPQ2d 1293, 1299 (Fed. Cir. 2016) – emphasis added.
As in FairWarning, computer implementation (i.e., technical implementation) of an otherwise abstract idea (i.e., migration of accounts between financial institutions) does not necessarily make the claims patent eligible under §101.
Applicant further argues:
The pending claim 21 is therefore analogous to claims found patent eligible such as Enfish and SRI, where the claims were directed to specific improvements in computer-related functionality and network operations. Here, claim 21 recites a specific technological improvement that utilizes a defined inter-platform protocol flow that causes discrete digital platforms to perform concrete operations in a required sequence and to return completion messages confirming those operations. See Arguments, pp. 15-16 – emphasis added.
The Examiner respectfully disagrees.
The court in Electric Power Group LLC v. Alstom SA (Fed. Cir. 2016) stated:
The claims here are unlike the claims in Enfish. There, we relied on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on “abstract ideas” (in Alice, as in so many other § 101 cases, the abstract ideas being the creation and manipulation of legal obligations such as contracts involved in fundamental economic practices). Enfish, 822 F.3d at 1335-36; see Alice, 134 S. Ct. at 2358-59. That distinction, the Supreme Court recognized, has common-sense force even if it may present line-drawing challenges because of the programmable nature of ordinary existing computers. In Enfish, we applied the distinction to reject the § 101 challenge at stage one because the claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement—a particular database technique—in how computers could carry out one of their basic functions of storage and retrieval of data. Enfish, 822 F.3d at 1335-36; see Bascom, 2016 U.S. App. LEXIS 11687, 2016 WL 3514158, at *5; cf. Alice, 134 S. Ct. at 2360 (noting basic storage function of generic computer). The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. see Electric Power Group LLC v. Alstom SA, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016) – emphasis added.
The claimed invention is not an improvement to computer technology or computer functionality. Rather, the claimed invention is applying a computer’s existing capabilities to implement a particular abstract idea. As in Electric Power Group, the focus of the claimed invention is not on an improvement in computers as tools but on improving an abstract idea (i.e., migrating accounts between financial institutions) that uses computers as tools.
Step 2B
Applicant argues that the additional elements amount to “significantly more” than the abstract idea and, as such, satisfies Step 2B of the §101 Guidelines. See Arguments, pp. 16.
The Examiner respectfully disagrees.
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to no more than mere instructions to apply the exception using generic computer components. The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
§103 Rejection
The §103 Rejection has been rewritten and the prior art remapped to account for the newly amended claim language.
Examiner also directs the Applicant to the Claim Interpretation section, as the Applicant argues claim limitations that, based upon the broadest reasonable interpretation, are not required to be performed (e.g., the confirmations being non-functional descriptive material).
Additionally, as Applicant’s arguments pertain to the claimed sequence of transmissions and communications between the digital platforms that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Johnston and Milligan to change the order for performance of the method steps as the change of order fails to produce a new or unexpected result. see MPEP §2144.04 (IV)(C).
7. Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON M. BORLINGHAUS whose telephone number is (571)272-6924. The examiner can normally be reached M-F 9-5.
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, RYAN D. DONLON can be reached on (571)270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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.
/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692 August 22, 2026
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