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 .
Claim Status
The claims filed 4/20/2026 are examined herein.
Claims 19-38 are pending.
Claims 19, 26, and 33 are independent.
Claims 19-38 are currently amended.
Response to Arguments
Applicant's arguments filed 4/20/2026 have been considered but they are not fully persuasive.
35 U.S.C. 101
Applicant’s arguments with regards to amended claims 19-38 have been considered but are not persuasive.
Applicant argues that the claims do not recite an abstract idea under Step 2A Prong 1 of the Alice/Mayo framework. More specifically, Applicant argues that the claims recite automated, technical system interventions, and that identifying specifically installed software on a remote client device and automatically blocking a digital transaction are not activities that can be performed in the human mind (see Remarks, pg. 9).
The argument is not persuasive. With regards to Applicant’s argument that certain claim limitations cannot be performed in the human mind, the argument is not persuasive because the abstract idea grouping of “Mental Processes” is not identified in the rejection. Furthermore, Applicant’s argued claim limitations are not the only limitations identified as reciting an abstract idea in the rejection. Nevertheless, it is noted that the argued claim limitations do have human analog counterparts. For example, a person looking at another person’s device may identify that they have a ridesharing app installed on that device. Similarly, a human may deny a withdrawal associated with an account based on determination that it would have a negative impact on a credit score. Here, the eligibility of the claims is not self-evident. As such, streamlined analysis is not employed and the full two step analysis is performed. Under Step 2A, Prong 1, the claim limitations identified in the rejection set forth or describe analyzing activity of an entity, generating action recommendations to achieve further resources, determining an impact to a score, and denying a withdrawal. The limitations drawn to these features are considered as reciting the identified abstract idea. The use of a computer and machine learning to perform the abstract idea are additional elements given due consideration under Step 2A Prong 2 and Step 2B.
Applicant further argues that the abstract idea is integrated into a practical application under Step 2A Prong 2 of the framework. More specifically, Applicant argues that the claims have a specific, tangible operational impact that alters the state of the financial processing system and prevents a transaction from executing. Applicant argues that this effects a particular transformation and constitutes control over a system based on real-time application of machine learning (see Remarks, pg. 10)
The argument is not persuasive. The argued tangible operational impact and transformation are simply the results of applying the abstract idea within a computer environment. Altering the state of a transaction does not constitute a particular transformation as described in MPEP 210605(c), nor does it an improvement the functioning of the computer itself. Here, the claims are drawn to applying a model to a dataset which includes activity and profile data, identifying a resource generation opportunity, providing a recommendation, and denying a withdrawal. The additional limitations drawn to applying machine learning models and providing the recommendation or denying a withdrawal in real-time are not indicative of a technical improvement because they are recited in the claims and described in the specification at a high level of generality in a manner which does not convey a technical improvement to one of ordinary skill in the art. Note that use of a computer or other machinery in its ordinary capacity for performing the abstract idea or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. See Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). Here, the recitation of a generic processor/memory/machine learning does not transform the abstract idea into a practical application. The mere implementation on generic computing components, without a technological improvement to the processor/memory/machine learning, does not provide a practical application under Step 2A Prong 2.
With further regards to the machine-learning aspects of the claimed invention, representative claim 19 recites “apply the one or more machine learning models…”. 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 does not integrate a judicial exception into a practical application, as discussed in MPEP § 2106.05(f).
Applicant further argues that the claims recite an inventive concept under Step 2B. Specifically, Applicant argues that the claims recite an inventive concept when considered in ordered combination. Applicant argues that while machine learning models may be known, employing the specific sequence of claimed steps represents a specific, unconventional arrangement of technical elements (see Remarks, pp. 10-11)
The argument is not persuasive. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide generic or conventional computer implementation. Applicant appears to argue that the sequence of steps is novel. However, while the claimed sequence may be novel, the novelty is in the abstract idea itself. Note that an improvement in an abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology and does not provide integration into a practical application. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology. Here, Applicant’s arguments that the claimed invention is novel is not persuasive because a new abstract idea is still an abstract idea. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101. The Supreme Court’s decisions make it clear that judicial exceptions need not be old or long-prevalent, and that even newly discovered or novel judicial exceptions are still exceptions. For example, the mathematical formula in Flook, the laws of nature in Mayo, and the isolated DNA in Myriad were all novel or newly discovered, but nonetheless were considered by the Supreme Court to be judicial exceptions because they were “‘basic tools of scientific and technological work’ that lie beyond the domain of patent protection.” Myriad, 569 U.S. 576, 589, 106 USPQ2d at 1976, 1978 (noting that Myriad discovered the BRCA1 and BRCA1 genes and quoting Mayo, 566 U.S. 71, 101 USPQ2d at 1965); Flook, 437 U.S. at 591-92, 198 USPQ2d at 198 (“the novelty of the mathematical algorithm is not a determining factor at all”); Mayo, 566 U.S. 73-74, 78, 101 USPQ2d 1966, 1968 (noting that the claims embody the researcher's discoveries of laws of nature). The Supreme Court’s cited rationale for considering even “just discovered” judicial exceptions as exceptions stems from the concern that “without this exception, there would be considerable danger that the grant of patents would ‘tie up’ the use of such tools and thereby ‘inhibit future innovation premised upon them.’” Myriad, 569 U.S. at 589, 106 USPQ2d at 1978 79 (quoting Mayo, 566 U.S. at 86, 101 USPQ2d at 1971). See also Myriad, 569 U.S. at 591, 106 USPQ2d at 1979 (“Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry.”). The Federal Circuit has also applied this principle, for example, when holding a concept of using advertising as an exchange or currency to be an abstract idea, despite the patentee’s arguments that the concept was “new”. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15, 112 USPQ2d 1750, 1753-54 (Fed. Cir. 2014). Cf. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) (“a new abstract idea is still an abstract idea”) (emphasis in original).
For the above reasons, the rejection of claims 19-38 under 35 U.S.C. 101 are maintained herein.
Claim Objections
Claims 19, 26, and 33 are objected to because of the following informalities:
The claims recite “an resource”, which is grammatically incorrect.
Appropriate correction is required.
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 19-38 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims are analyzed under the Alice/Mayo two-part test as described in MPEP 2106.
Step 1
Claims 19-38 are directed to a machine, process, or product, and thus fall within the statutory categories of invention. (Step 1: YES).
Step 2A - Prong 1
The Examiner has identified independent system claim 19 as the claim that represents the claimed invention for analysis and is similar to independent method claim 26 and independent product claim 33. Claim 19 recites the limitations of:
19. A system comprising:
at least one processor; and
at least one non-transitory computer-readable storage medium storing instructions that, when executed by the at least one processor, cause the system to:
access activity data for a user account associated with a client device;
access profile data for a user of the client device from a third-party server located remotely from the system;
apply one or more machine learning models to a dataset comprising the activity data clustered with a portion of historical activity data based on similarities to user activity history and the profile data clustered with a portion of the historical profile data based on similarities to user profile history to determine a set of potential user activities for improving a score of the user, wherein the set of potential user activities comprises an resource generation activity;
identify, in real time, at least one resource generation application on the client device associated with the user account; and
based on determining the set of potential user activities comprising the resource generation activity and identifying the at least one resource generation application, generate, in real time, an action recommendation to use the at least one resource generation application; and
determine, utilizing the one or more machine learning models in real time, that a withdrawal associated with the user account would impact the score of the user of the client device; and
automatically deny, in real time, the withdrawal associated with the user account.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as “Certain Methods of Organizing Human Activity”.
The claim limitations delineated in bold above recite a fundamental economic practice, as they set forth or describe analyzing activity of an entity, generating action recommendations to achieve further resources, determining an impact to a score, and denying a withdrawal. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. MPEP 2106.04(a)(2).
The claim limitations delineated in bold above also recite managing personal behavior, as they pertain to analyzing activity of an entity, generating action recommendations to achieve further resources, determining impact to a score, and denying a withdrawal. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as managing personal behavior, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. MPEP 2106.04(a)(2).
The processor and non-transitory computer-readable storage medium in claim 19 is just applying generic computer components to the recited abstract limitations. The recitation of generic computer components in a claim does not necessarily preclude that claim from reciting an abstract idea. Claims 26 and 33 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims recite an abstract idea)
Step 2A - Prong 2
This judicial exception is not integrated into a practical application. In particular, the independent claims recite the additional elements of:
Claim 19: processor, non-transitory computer-readable storage medium
Claim 26: computer-implemented method (preamble)
Claim 33: non-transitory computer-readable storage medium
The computer hardware/software is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. 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 and are at a high level of generality.
The computer hardware/software is recited in conjunction with training and applying a machine learning model. These limitations merely invoke the additional element as a tool to perform the abstract idea. The machine learning model is described at a high level of generality in Applicant’s specification without any meaningful detail about its structure or configuration. As demonstrated by the specification, the claimed invention does not improve machine learning itself, but merely describes the features at a high level of generality as an implementation tool for performing the abstract idea, which includes generating action recommendations to achieve resources based on an analysis of profile and activity data. Here, the disclosure does not provide sufficient detail such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement to the functioning of the computer or to any other technology or technical field. MPEP 2106.04(d)(1). Both the specification and claims only recite the idea of a solution or outcome and fail to recite how the solution to the problem is accomplished. Thus, even considering the limitations drawn to training and applying machine learning models, the use of the computer hardware/software still merely amounts to adding the words “apply it” (or an equivalent) with the judicial exception. MPEP 2106.05(f).
Therefore, claims 19, 26, and 33 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. MPEP 2106.05(f).
Furthermore, no additional element or combination of elements are other than what is well-understood, routine, conventional activity in the field. The additional elements simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, per MPEP 2106.05(d). In particular, it is well-understood, routine, conventional activity previously known to the industry to train a machine learning model to correlate data and to predict outcomes given a set of input data, as evidenced by:
[1] US 2019/0129436 A1 [0015] … For example, as well-known, neural networks, or other machine learning systems, can be trained to produce configured output based on training data provided to the neural network or other machine learning system in a training phase. …
[2] US 2005/0225552 A1 [0154] “The techniques for specifying and training a neural net is well known in the art of artificial intelligence (AI)….Typically, a neural net is specified by defining input and output parameters, number of layers, and number of neurons in each layer. A neural net can be thought of as a trainable nonlinear mapping between input parameters and output variables.”
Accordingly, these additional elements, do not change the outcome of the analysis, when considered separately and as an ordered combination. Thus, claims 19, 26, and 33, are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent Claims
Dependent claims 20-25, 27-32, and 34-38 further define the abstract idea that is present in their respective independent claims 19, 26, and 33 and thus correspond to “Certain Methods of Organizing Human Activity” and hence are abstract for the reasons presented above. The dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the dependent claims are directed to an abstract idea without significantly more.
Thus, claims 19-38 are not patent-eligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Vinay (US 2018/0182029 A1) discloses a system for analyzing risk using machine learning models which may be trained using a data set to generate a risk assessment model that is optimized for metrics commonly used in for financial risk evaluation. The metrics may include Gini and CaptureRate, for example. The system may receive a request for a financial service, and generate a risk assessment by applying the risk assessment model to factors associated with the request. The system may also decide on the request in response to the risk assessment.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC T WONG whose telephone number is (571)270-3405. The examiner can normally be reached 9am-5pm M-F.
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, Michael W Anderson can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERIC T WONG/Primary Examiner, Art Unit 3693
ERIC WONG
Primary Examiner
Art Unit 3693
Prosecution Insights