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, 25, 27-33 and 35-41 were amended or newly added in the Applicant’s filing on 8/07/2025.
Claims 23, 26 and 34 were cancelled in the Applicant’s filing on 8/07/2025.
This office action is being issued in response to the Applicant's filing(s) on 8/07/2025.
3. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/07/2025 has been entered.
4. Minor Objections
Claim 21 is objected to because of the following informalities: lack of antecedent basis.
Claim 21 recites a method comprising:
transmitting, by the first digital platform, a second API call instruction to the at least one second computer, the second API call instruction programming the second digital platform to transfer the at least one existing digital object from the second digital platform to the first digital platform.
However, there is no earlier recitation of a second computer in Claim 21. Submitted claim amendments removed references to a second computer. Examiner assumes that Claim 21 is supposed to reference the second digital platform.
Claim 21 is objected to because of the following informalities: missing word.
Claim 21 recites a method comprising:
creating, by the first digital platform, based on the at least one user-selection and the object relationship information, at least one new digital object associated with the user first digital platform.
Examiner assumes that Claim 21 is supposed to read as a method comprising:
creating, by the first digital platform, based on the at least one user-selection and the object relationship information, at least one new digital object associated with the user on the first digital platform.
Appropriate correction is requested.
5. 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, 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 alternate 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. In other words, if the prior art structure is capable of performing the intended use, then it meets the claim.
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 emboldened 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:
transmitting, by the first digital platform, in response to the migration authorization request, a first application programming interface (API) call instruction to the second digital platform, the first application programming interface (API) call instruction programming the second digital platform to identify the at least one existing digital object associated with the at least one user.
The intended use or purpose of the data (i.e., the instruction) 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 to identify the at least one existing digital object associated with the at least one user. While the intended purpose of the programming may be to identify the at least one existing digital object associated with the at least one user, the method claim does not recite that the second digital platform actively performs the method step of identifying the at least one existing digital object associated with the at least one user.
As such, claim elements (i.e., the instructions contained within the programming) 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 35 has similar issues.
Claim 21 recites a method comprising:
logging, by the first digital platform, into the second digital platform using at least one credential received from the at least one user.
Method claims are defined by the method steps being actively performed, not method steps performed in the past (i.e., received from the at least one user). 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 35 has similar issues.
Claim 21 recites a method comprising:
transmitting, by the first digital platform, a second API call instruction to the at least one second computer, the second API call instruction programming the second digital platform to transfer the at least one existing digital object from the second digital platform to the first digital platform.
The intended use or purpose of the data (i.e., the instruction) 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 to transfer the at least one existing digital object from the second digital platform to the first digital platform. While the intended purpose of the programming may be to transfer the at least one existing digital object from the second digital platform to the first digital platform, the method claim does not recite that the second digital platform actively performs the method step of transferring the at least one existing digital object from the second digital platform to the first digital platform.
As such, claim elements (i.e., the instructions contained within the programming) 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 35 has similar issues.
Claim 21 recites a method comprising:
automatically transmitting, by the first digital platform, via the portal, after completion of transferring the at least one digital object, a third API call instruction to the second digital platform the third API call instruction programming the second digital platform to terminate the at least one existing digital object with the second digital platform.
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 “after completion of transferring … ” in Claim 21 suggests that there remains the possibility that the contingent limitations are not performed as the condition(s) precedent is not met. For example, the transferring of the at least one digital object is not completed. 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 21 recites a method comprising:
automatically transmitting, by the first digital platform, via the portal, after completion of transferring the at least one digital object, a third API call instruction to the second digital platform the third API call instruction programming the second digital platform to terminate the at least one existing digital object with the second digital platform.
The intended use or purpose of the data (i.e., the instruction) 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 to terminate the at least one existing digital object with the second digital platform. While the intended purpose of the programming may be to terminate the at least one existing digital object with the second digital platform, the method claim does not recite that the second digital platform actively performs the method step of terminating the at least one existing digital object with the second digital platform.
As such, claim elements (i.e., the instructions contained within the programming) 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 35 has similar issues.
Claim 22 recites a method comprising confirming, by the first digital platform, through an application programming interface (API) to the second digital platform that the second digital platform supports migrating at least one existing digital object.
Under the broadest reasonable interpretation, if the first and second digital platforms can communicate via an API, as in Claim 21, that is confirmation that that the second digital platform supports migrating the plurality digital objects (i.e., supports communicating data between said platforms).
Claim 36 has 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 and existing 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) 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 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 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.
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.
The intended use or purpose of the displayed information 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. If the prior art structure is capable of performing the intended use or fulfilling said purpose (i.e., for direct visual comparison with the new account types and new account information that the first digital platform offers the at least one user.), then it meets the claim. See MPEP §2114(II), citing Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987).
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 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 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 generating another UI for provision to the at least one user. While the intended purpose of the generated UI may be for provision to the at least one user, the method claim does not recite actively performing the method step of providing the UI to the at least one user.
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.
Method claims are defined by the method steps being actively performed, not the functions that system elements are configured to perform.
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).
6. 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], the first … instruction [instructing] the second [entity] to identify 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 …, the second … instruction [instructing] the second [entity] to transfer the at least one existing … object from the second [entity] to the first [entity];
mapping, by the first [entity] the at least one existing … object to the at least one new … object; and
… transmitting, by the first [entity] … after a completion of transferring the at least one existing … object, a third … instruction to the second [entity], the third … instruction [instructing] the second [entity] to terminate the association of the at least one existing … object and the second [entity].
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(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 (i) adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, (ii) adding insignificant extra-solution activity to the judicial exception, and/or (iii) generally linking the use of judicial exception to a particular technological environment or field of use. 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.
7. Claim Rejections - 35 USC § 112(A)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 27, 28 and 39 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 27, 28 and 39 recite method steps performed utilizing “inter-platform APIs,” structural elements which are not recited in the specification.
Examiner notes that “inter-platform APIs” would imply that the APIs are enabling communication between the digital platforms. However, Claim 28 appears to be utilizing the “inter-platform APIs” to communicate with the user, the user operating a computing device, a device separate and distinct from the digital platforms.
Examiner notes that APIs are sets of rules and tools that allow different software applications to communicate, exchange data, and share functionalities, acting as digital bridges between applications. However, Claim 28 recites that the “inter-platform APIs” displays information which is outside the functionality of APIs.
Appropriate correction is requested.
8. Claim Rejections - 35 USC § 112(B)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 24 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 24 recites a method wherein the at least one new digital object comprises at least one new user relationship comprising new account terms and existing 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.
The new user relationship comprises new account terms AND existing account terms. The new user relationship is defined by new account terms AND existing (i.e., the old) account terms? If so, how are they compared because both account terms, new and existing account terms, are both active account terms for the new digital object. As written, you are just adding additional account terms to the new digital object.
Appropriate correction is requested.
9. Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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), the first instruction programming the second digital platform (old financial institution) to identify 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);
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 migrated account). (see fig. 5 and 17; para. 119-124);
transmitting, by the first digital platform (migration server), a second instruction to the at least one second computer (old financial institution), the second instruction programming the second digital platform to transfer (migrate) the at least one existing digital object (account) 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. 124); and
transmitting, by the first digital platform (migration server), via the portal, after completion of transferring the at least one digital object (account), a third instruction to the second digital platform (old financial institution) the third instruction programming the second digital platform (old financial institution) to terminate (close) the at least one existing digital object (account) with the second digital platform. (see fig. 23; para. 128 and 131).
Johnston does not explicitly teach a method wherein the first digital platform performs the migration functions and receives the digital object. Johnston teaches a method wherein one digital platform (migration server) performs the migration function and a second digital platform (financial institution) receives the digital object. (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 at 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 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 explicitly teach a method wherein the transmission of the third instruction to terminate an existing digital object is automatic.
However, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to have modified Johnston by performing the method step automatically or via automated means. See MPEP §2144.04 (III).
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 at 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.
Regarding Claims 22, Johnston discloses a method comprising:
confirming, by the at least one first digital platform, through an interface to the second digital platform that the at least one second digital platform supports migrating the at least one existing digital object. (see fig. 12-14; para. 10); and
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 at 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 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) and existing 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 via accessing an inter-platform interface 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).
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 at 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 Claim 28, Johnston discloses a method wherein the inter-platform interfaces 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 to the at least one user. (see fig. 18; para. 54).
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 at 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 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 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. (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 the 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 at 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 at 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.
10. Response to Arguments
Applicant's arguments filed 8/07/2025 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. 12-14.
The Examiner respectfully disagrees.
Examiner notes that, despite the applicant’s assertion that the claimed invention does not recite a judicial exception, no rationale or reasoning is provided.
The Applicant performs an element-by-element analysis of the claim limitations repeatedly stating that the claimed invention involves “a specific unconventional arrangement” of elements and “is in the communication domain,” but the Examiner uncertain what the Applicant is trying to convey. See Arguments, pp. 12-14.
Even if the claimed invention involves “a specific unconventional arrangement” of elements and “is in the communication domain” does not prevent the claimed invention from reciting an abstract idea under Step 2A Prong One.
Applicant further argues:
In view of the above element-by-element analysis, applicant respectfully submits that claim 21 does not recite any of the judicial exceptions enumerated in the 2019 PEG. For instance, the claim does not recite any mathematical relationships, formulas, or calculation. Instead the claim recites data and instruction communications among a first digital platform, a second digital platform and a computing device, as well as computer operations by the first digital platform. See Arguments, p. 14 – emphasis added.
The first digital platform, the second digital platform and the computing device are additional claim elements, claim elements recited in addition to the abstract idea. Additional claim elements are analyzed in Step 2A Prong Two, to determine whether any additional elements in the claim integrate the abstract idea into a practical application, not in Step 2A Prong One to determine whether the claimed invention recites an abstract idea. See MPEP §2106.05(f)(2).
The claimed invention does recite computer operations performed by the first digital platform. However, 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.
Similar to FairWarning, the claimed invention appears to be "merely implement[ing] an old practice in a new environment" by updating the practice to a new computerized environment, and thus is patent-ineligible subject matter. See FairWarning, 120 USPQ2d 1293, 1269 (Fed. Cir. 2016).
Applicant further argues:
Further, the claim does not recite a mental process because at least the communications performed by the first digital platform, the second digital platform and the computing device cannot be practically performed in the human mind. 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.”
Examiner notes that claims that recite limitations “that cannot practically be performed in the human mind” are not mental processes. See MPEP §2106.04(a)(2)(III)(A). For example, a limitation that cannot be practically performed in the human mind is “detecting suspicious activity by using network monitors and analyzing network packets” and “rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask, where the method required the manipulation of computer data structures (e.g., the pixels of a digital image and a two-dimensional array known as a mask) and the output of a modified computer data structure.” See MPEP §2106.04(a)(2)(III)(A). The examples provided require a computer. A computer is inherent to the underlying process (e.g., there is no network traffic, data packets or pixels without a computer). This is not the case with the claimed invention.
Applicant further argues:
Finally, the claim does not recite any method of organizing human activity such as a fundamental economic concept or managing interactions between people. As detailed above, the claim recited data and instruction communications and computer operations that do not involve human activity at all. Therefore, the now amended claim 21 is not directed to a judicial exception. See Arguments, p. 14.
The Examiner respectfully disagrees.
The claimed invention recites that the digital object being migrated between platforms is a financial account and that the platforms are financial institutions. See Claim 24, 25, 27, 28 and 30. If the claimed invention recites the migration of a financial account between financial institutions, the claimed invention recites (i) a fundamental economic concept and (ii) managing of interactions between people (i.e., financial institutions).
2B Prong Two
The Applicant argues:
Step 2A, Prong 2: Integrated into a Practical Application: for the same reason detailed above with respect to Step 2A, Prong 1, claim 21 claims to a practical application of communicating a digital object between two digital platforms. See Arguments, p. 15.
The Examiner respectfully disagrees.
The “practical” in “practical application” of the §101 Guidelines is more than the dictionary definition of “practical” - “of or concerned with the actual doing or use of something rather than with theory and ideas.” In fact, "[t]he Supreme Court and Federal Circuit have identified a number of considerations as relevant to the evaluation of whether the claimed additional elements demonstrate that a claim is directed to patent-eligible subject matter." See MPEP §2106.04(d). The claimed invention does not satisfy any of the identified considerations indicative that an additional element (or combination of elements) has integrated the exception into a practical application.
Regarding Step 2A Prong Two of the §101 Guidelines, MPEP §2106.04(d) recites:
Limitations the courts have found indicative that an additional element (or combination of elements) may have integrated the exception into a practical application include:
An improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §2106.04(d)(1) and 2106.05(a);
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP §2106.04(d)(2);
Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP §2106.05(b);
Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 106.05(c); and
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP §2106.05(e).
Neither the claims nor the specification indicates that the additional elements (i.e., computer elements) have integrated the abstract idea into a practical application under any of the five categories for indicating a practical integration.
MPEP §2106.04(d) recites:
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f); [and]
Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
Examiner asserts that the additional elements amount to merely (1) including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, or alternatively, (2) merely links the use of a judicial exception to a particular technological environment or field of use.
Step 2B
Applicant further argues:
Step 2B, Inventive Concept: for the same reason detailed above with respect to Step 2A, Prong 1, claim 21 claims to inter-workings of two digital platforms, a portal and a computing device. Such inter-workings are significantly more than conventional implementation of the computer technology. See Arguments, p. 15.
The Examiner respectfully disagrees.
To qualify as “significantly more” than the abstract idea, computer implementation must involve more than performance of “well-understood, routine, [and] conventional activities” previously known in the computer industry. However, the functions performed by the computer system in the claimed invention are well-understood, routine and conventional computer functions.
The claimed invention may be applying those computer functions in a novel and/or non-obvious way to enable the abstract idea but the computer functions, the underlying computer functions, are well-understood, routine and conventional computer functions. Therefore, the additional claim limitations do not amount to “significantly more” than 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., terminating the digital object).
11. Conclusion
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.
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/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692 December 6, 2025