DETAILED ACTION
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 .
Disposition of Claims
Claims 1-20 are pending in the instant application. No claims have been added. No claims have been cancelled. Claim 1 has been amended. The rejection of the pending claims is hereby made final.
Response to Remarks
101
Regarding the rejection of the pending claims under 35 USC 101, as stated in the prior Office Action, the examiner has considered Applicant’s arguments and amendments, but does not find them to be persuasive. 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 (see at least MPEP 2106.05(a) Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316, 120 USPQ2d 1353, 1359 (Fed. Cir. 2016). The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception. See MPEP § 2106.04(d) (discussing Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303-04, 125 USPQ2d 1282, 1285-87 (Fed. Cir. 2018)). Thus, it is important for examiners to analyze the claim as a whole when determining whether the claim provides an improvement to the functioning of computers or an improvement to other technology or technical field.
Examples that the courts have indicated may show an improvement in computer-functionality:
i. A modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage, DDR Holdings, 773 F.3d at 1258-59, 113 USPQ2d at 1106-07;
ii. Inventive distribution of functionality within a network to filter Internet content, BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350-51, 119 USPQ2d 1236, 1243 (Fed. Cir. 2016);
iii. A method of rendering a halftone digital image, Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859, 868-69, 97 USPQ2d 1274, 1380 (Fed. Cir. 2010);
iv. A distributed network architecture operating in an unconventional fashion to reduce network congestion while generating networking accounting data records, Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300-01, 120 USPQ2d 1527, 1536-37 (Fed. Cir. 2016);
v. A memory system having programmable operational characteristics that are configurable based on the type of processor, which can be used with different types of processors without a tradeoff in processor performance, Visual Memory, LLC v. NVIDIA Corp., 867 F.3d 1253, 1259-60, 123 USPQ2d 1712, 1717 (Fed. Cir. 2017);
vi. Technical details as to how to transmit images over a cellular network or append classification information to digital image data, TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 614-15, 118 USPQ2d 1744, 1749-50 (Fed. Cir. 2016) (holding the claims ineligible because they fail to provide requisite technical details necessary to carry out the function);
vii. Particular structure of a server that stores organized digital images, TLI Communications, 823 F.3d at 612, 118 USPQ2d at 1747 (finding the use of a generic server insufficient to add inventive concepts to an abstract idea);
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viii. A particular way of programming or designing software to create menus, Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241, 120 USPQ2d 1844, 1854 (Fed. Cir. 2016);
ix. A method that generates a security profile that identifies both hostile and potentially hostile operations, and can protect the user against both previously unknown viruses and "obfuscated code," which is an improvement over traditional virus scanning. Finjan Inc. v. Blue Coat Systems, 879 F.3d 1299, 1304, 125 USPQ2d 1282, 1286 (Fed. Cir. 2018);
x. An improved user interface for electronic devices that displays an application summary of unlaunched applications, where the particular data in the summary is selectable by a user to launch the respective application. Core Wireless Licensing S.A.R.L., v. LG Electronics, Inc., 880 F.3d 1356, 1362-63, 125 USPQ2d 1436, 1440-41 (Fed. Cir. 2018);
xi. Specific interface and implementation for navigating complex three-dimensional spreadsheets using techniques unique to computers; Data Engine Techs., LLC v. Google LLC, 906 F.3d 999, 1009, 128 USPQ2d 1381, 1387 (Fed. Cir. 2018); and
xii. A specific method of restricting software operation within a license, Ancora Tech., Inc. v. HTC America, Inc., 908 F.3d 1343, 1345-46, 128 USPQ2d 1565, 1567 (Fed. Cir. 2018).
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It is important to note that in order for a method claim to improve computer functionality, the broadest reasonable interpretation of the claim must be limited to computer implementation. That is, a claim whose entire scope can be performed mentally, cannot be said to improve computer technology. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 120 USPQ2d 1473 (Fed. Cir. 2016). As currently recited, the pending claims recite initiating notifications corresponding to the processing of a transaction, which can be performed mentally, in conjunction with a generic computing device and common computer elements. For at least the reasoning provided above, the rejection of the pending claims under 35 USC 101 is hereby maintained and made final.
102
Applicant’s arguments and amendments have been considered by the examiner and have been addressed in the new grounds of rejection presented below.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (an abstract idea) without significantly more.
Under step 1 of MPEP 2106 Guidelines, it must be considered whether the claims are directed to one of the four statutory classes of invention. In the instant case, claims 1-20 are directed to a method and system for predicting issues associated with a closing process of an entity, each of which falls within one of the four statutory categories of inventions (process/apparatus). Accordingly, the claims will be further analyzed under revised step 2 of MPEP 2106.04:
Under revised step 2A (prong 1) of MPEP 2106 Guidelines, it must be considered whether the claims are “directed to” an abstract idea by referring to the groupings of subject matter. Under MPEP 2106 Guidelines, certain methods of organizing human activity include fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
Regarding representative independent claim 14, the claim sets forth a method for providing transaction notifications, in the following limitations:
receiving a first transaction record generated by a first device with respect to a second device;
processing the received first transaction record in conjunction with a transaction execution application executing on the second device;
receiving one or more notifications corresponding to the processing of the first transaction record in conjunction with the second device; and
initiating, based on at least one of the one or more notifications, one or more operations with respect to the first device.
The above-recited limitations set forth an arrangement to provide a user with potential issues associated with a closing This arrangement amounts to certain methods of organizing human activity associated with sales activities and commercial interactions involving authenticating a customer prior to resuming a transaction to mitigate fraudulent transactions. Such concepts have been considered ineligible certain methods of organizing human activity by the Courts (See 2019 Revised Patent Subject Matter Eligibility Guidance).
The revised Step 2A (prong 2) of the MPEP 2106 guidelines, is the next step in the eligibility analyses and looks at whether the abstract idea is integrated into a practical application. This requires an additional element or combination of additional elements in the claims to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception.
In this instance, the claims recite the additional elements such as:
a first device;
a second device
However, these elements do not amount to an improvement in the functioning of a computer or any other technology or technical field, apply the judicial exception with, or by use of, a particular machine, or apply or use 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.
In addition, the recitations above are recited at a high level of generality and also do not amount to an improvement in the functioning of a computer or any other technology or technical field, apply the judicial exception with, or by use of, a particular machine, or apply or use 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.
Independent claims and dependent claims also fail to recite elements which amount to an improvement in the functioning of a computer or any other technology or technical field, apply the judicial exception with, or by use of, a particular machine, or apply or use 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. For example, independent claims and dependent claims are directed to the abstract idea itself and do not amount to an integration according to any one of the considerations above.
Step 2B is the next step in the eligibility analyses and evaluates whether the claims recite additional elements that amount to an inventive concept (i.e., “significantly more”) than the recited judicial exception. According to Office procedure, revised Step 2A overlaps with Step 2B, and thus, many of the considerations need not be re-evaluated in Step 2B because the answer will be the same.
In Step 2A, several additional elements were identified as additional limitations:
a first device;
a second device
These additional limitations, including the limitations in the independent claims and dependent claims, do not amount to an inventive concept because they were already analyzed under Step 2A and did not amount to a practical application of the abstract idea.
For these reasons, the claims are rejected under 35 U.S.C. 101. The rejection of the pending claims is hereby made final.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hoang et al (US 2018/0158116) in view of Barnes et al (US 2019/0220851).
Regarding claim 1, the prior art discloses a system comprising: a processing device (see at least paragraph [0081] to Hoang et al); and a memory coupled to the processing device (see at least paragraph [0081] to Hoang et al) and storing instructions that, when executed by the processing device, cause the system to perform one or more operations comprising: receiving a first transaction record generated by a first device with respect to a second device (see at least paragraphs [0045] and [0047] to Hoang et al); processing the received first transaction record in conjunction with a transaction execution application executing on the second device (see at least paragraph [0040] to Hoang et al); receiving one or more notifications corresponding to the processing of the first transaction record in conjunction with the second device (see at least paragraph [0076] to Hoang et al).
Hoang et al does not appear to explicitly disclose initiating, based on at least one of the one or more received notifications that correspond to the processing of the first transaction record in conjunction with the second device, one or more operations with respect to the first device (see at least paragraph [0077] to Hoang et al).
Barnes et al discloses an event based payment-processing system and method, further comprising initiating, based on at least one of the one or more received notifications that correspond to the processing of the first transaction record in conjunction with the second device, one or more operations with respect to the first device (see at least paragraph [0070] to Barnes et al).
The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). The examiner submits that the combination of the teaching of the payment and invoice systems integration system and method, as disclosed by Hoang et al and the event based payment-processing system and method as taught by Barnes et al, could have been readily and easily implemented, with a reasonable expectation of success. As such, the aforementioned combination is found to be obvious to try, given the state of the art at the time of filing.
Regarding claim 2, the prior art discloses the system of claim 1, wherein the first transaction record comprises one or more parameters originating from the first device (see at least paragraph [0091] Hoang et al).
Regarding claim 3, the prior art discloses the system of claim 1, wherein receiving the first transaction record further comprises storing the first transaction record (see at least paragraph [0028] Hoang et al).
Regarding claim 4, the prior art discloses the system of claim 1, wherein processing the received first transaction record comprises parsing the first transaction record in relation to one or more aspects of a configuration of the second device (see at least paragraph [0016] Hoang et al).
Regarding claim 5, the prior art discloses the system of claim 1, wherein processing the received first transaction record further comprises initiating one or more operations based on aspects of the processing of the received first transaction record (see at least paragraph [0063] Hoang et al).
Regarding claim 6, the prior art discloses the system of claim 1, wherein processing the received first transaction record further comprises associating the first transaction record with a second notification (see at least paragraph [0076] Hoang et al).
Regarding claim 7, the prior art discloses the system of claim 1, wherein at least one of the one or more notifications corresponds to a routing of the first transaction record (see at least paragraph [0076] Hoang et al).
Regarding claim 8, the prior art discloses the system of claim 1, wherein at least one of the one or more notifications corresponds to an operation initiated with respect to the first transaction record (see at least paragraph [0076] Hoang et al).
Regarding claim 9, the prior art discloses the system of claim 1, wherein at least one of the one or more notifications comprises a selectable prompt (see at least paragraph [0076] Hoang et al).
Regarding claim 10, the prior art discloses the system of claim 1, wherein initiating one or more operations comprises initiating one or more operations further based on one or more inputs originating from one or more sensors (see at least paragraph [0089] Hoang et al).
Regarding claim 11, the prior art discloses the system of claim 1, wherein initiating one or more operations comprises initiating one or more operations further based on one or more inputs originating from one or more sensors of the first device (see at least paragraph [0089] Hoang et al).
Regarding claim 12, the prior art discloses the system of claim 1, wherein initiating one or more operations comprises initiating one or more operations further based on one or more inputs originating from one or more sensors of the second device (see at least paragraph [0081] Hoang et al).
Regarding claim 13, the prior art discloses the system of claim 1, wherein initiating one or more operations comprises initiating one or more operations further based on one or more inputs originating from one or more sensors of a third device (see at least paragraph [0081] Hoang et al).
Claims 14-20 each contain recitations substantially similar to those addressed above and, therefore, are likewise rejected.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The examiner has considered all references listed on the Notice of References Cited, PTO-892.
The examiner has considered all references cited on the Information Disclosure Statement submitted by Applicant, PTO-1449.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TALIA F CRAWLEY whose telephone number is (571)270-5397. The examiner can normally be reached on Monday thru Thursday; 8:30 AM-4:30 PM EST.
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, Fahd A Obeid can be reached on 571-270-3324. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TALIA F CRAWLEY/ Primary Examiner, Art Unit 3627
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