Examiner thanks attorney for amendment to advance prosecution
AIA
DETAILED ACTION
The claims 1-20 examined. Effective date 02/1/2024
Amended 1 11 19
Canceled none
New none
Applicant(s):
Wells Fargo
Inventor(s):
Ramsay Huntley
Judson Murchie
Timothy Craig Seagren
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
The pending claims are rejected under 35 USC 101.
The claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The claim(s) is/are directed to one or more abstract idea(s). The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the abstract idea(s).
Step 1: (MPEP 2106.03)
The claims and dependents are directed to statutory classes (1 machine 11 process 19 article of manufacture). The claims herein are directed to subject matter which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
Step 2A, Prong One: Evaluating whether the claim(s) recite(s) a judicial exception -- law of nature, natural phenomenon, abstract idea. (MPEP 2106.04).
CLAIM 1 (independent claims 11 and 19 similar)
A system comprising:
O a processing circuit comprising memory and one or more processors, the processing circuit configured to:
O receive, from a graphical user interface (GUI) presented on a user device, a request associated with an offer
O select one or more models based on the request and a first transaction instrument
and a second transaction instrument by:
- determining a desired output of the one or more models and
- identifying, based on the request and the first transaction instrument and the
second transaction instrument, at least one of the one or more models that generates the desired
output with an accuracy exceeding a threshold, wherein the one or more models comprise at least
one of a machine learning model, a statistical model, or a pattern recognition model
-model, using the at least one of the one or more models, the request with the first
transaction instrument and the second transaction instrument to generate a first amount and a
second amount for the offer based on a category of the offer, wherein the first amount corresponds
to [[a]] the first transaction instrument and the second amount corresponds to [[a]] the second
transaction instrument
O generate a first amount and a second amount for the offer based on a category of the offer, wherein the first amount corresponds to a first transaction instrument and the second amount corresponds to a second transaction instrument
O generate and provide, to the GUI of the user device, an interface for display comprising the first amount in association with the first transaction instrument, the second amount in association with the second transaction instrument, an actionable element, and content associated with the offer
O receive, from a merchant computing system, a transaction request corresponding to at least one of the first transaction instrument or the second transaction instrument, wherein the transaction request comprises transaction information associated with the offer and
O authorize the transaction request for either the first amount based on the transaction request corresponding to the first transaction instrument or the second amount based on the transaction request corresponding to at least one of the first transaction instrument or the second transaction instrument.
bold = judicial exception ‘apply it’ via additional element, generic, generally applied
The pending claims: rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim recites an abstract idea,
Certain Methods of Organizing Human Activity
The claims are directed to Certain Methods of Organizing Human Activity such as
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)
Now, this abstract idea is computer-implemented.
Collecting info, analyzing it, displaying certain results. Elec. Power Group(CAFC 2016)
DEPENDENT CLAIMS
Dependent claims 2-10 12-18 20 are the computer implemented idea of independent claims 1/11/19 plus the idea of Collecting info, analyzing it, displaying certain results. Elec. Power Group (CAFC 2016)
Dependent claims
2 12 19 idea itself
3 13 idea itself
4 14 idea itself
5 15 idea itself
6 16 idea itself
7 17 idea itself
8 18 and 9 idea itself + additional element of mere display step MPEP 2106.05g update the interface
10 idea itself plus + additional element of Collecting info, analyzing it, displaying certain results. Elec. Power Group (CAFC 2016)
Step 2A, Prong Two: Identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and then evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. Prong Two distinguishes claims that are "directed to" the recited judicial exception from claims that are not "directed to" the recited judicial exception. (MPEP 2106.04).
The claim says one is to take the idea and “apply it” with generic elements generally applied.
This judicial exception is not integrated into a practical application. In particular, the claim only recites an additional element. The additional element -- recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of ranking information based on a determined amount of use) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The additional element MPEP 2106.05 is mere applying the idea on a computer. See MPEP 2105, 2106
The 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. Accordingly, these additional elements do not integrate the abstract idea into a practical application for lack of any meaningful limits on practicing the abstract idea. The additional elements present only a particular technological environment.
The additional elements are not sufficient to amount to significantly more than the judicial exception because the claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, and do not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. The limitations (those beyond the abstract idea) do not improve the technical field that the abstract idea limitations invoke. Moreover, these generic limitations do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment, not meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. See Alice Corp p 16 of slip op. noting that none of the hardware recited "offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment', that is implementation via computers" (citing Bilski 561 US at 610).
Step 2B: Identifying whether there are any additional elements (features/limitations/steps) recited in the claim beyond the judicial exception(s), and then evaluating those additional elements individually and in combination to determine whether they contribute an inventive concept (i.e., amount to significantly more than the judicial exception(s)). (MPEP 2106.05)
The additional elements present only a particular technological environment.
The claim recites additional elements. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element amounts to no more than mere instructions to apply the exception using a generic computer component. See MPEP 21056.05 Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
During prosecution, applicant has an opportunity and a duty to amend ambiguous claims to clearly and precisely define the metes and bounds of the claimed invention. The claim places the public on notice of the scope of the patentee’s right to exclude. See, e.g., Johnson & Johnston Assoc. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1052, 62 USPQ2d 1225, 1228 (Fed. Cir. 2002) (en banc). As stated in Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (CAFC 2008):
“We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation”
Response to Remarks
Applicant amendment remarks fully considered but not persuasive.
Applicant says not directed to abstract idea.
Examiner
The claims are directed to Certain Methods of Organizing Human Activity such as
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)
As to applicant argument that
Improvement to technology or technical field
Examiner
Unfortunately Applicant simply uses a computer as a tool to organize human activity
Convenience and accuracy (remarks p15) are inherent in use of a computer.
The convenience and accuracy (remarks p14 bottom) is why computers are used, ubiquitous.
Applicant did not improve a field but simply invoked a computer as a tool, just as in Alice clearing trades by computer, or in Bilski computer implemented trading a call with a put.
Examiner did not assert well-understood, conventional, routine thus remarks p7 while interesting and probably relevant to many other cases, are not applicable to this case.
POINT OF CONTACT
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BREFFNI X BAGGOT whose telephone number is (571)272-7154. The examiner can normally be reached M-F 8a-10a, 12p-6p.
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BREFFNI BAGGOT
Primary Examiner
Art Unit 3621
/BREFFNI BAGGOT/Primary Examiner, Art Unit 3621
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