DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This office action is in response to applicant's communication of July 30, 2025. The rejections are stated below. Claims 1, 3-10, and 12-19 are pending and have been examined.
Response to Amendment/Arguments
2. Applicant’s arguments concerning 35 U.S.C. 102 have been considered but are moot in view of new grounds of rejection. Applicant’s arguments concerning 35 U.S.C. 112b has been considered but is not persuasive.
For a computer-implemented invention, the corresponding structure for a means-plus-function limitation cannot simply be a general-purpose computer or processor. The specification must disclose an algorithm that performs the claimed function. (MPEP § 2183 - How to Determine Whether a Claim Element is a Step-Plus-Function Element or a Means-Plus-Function Element; Aristocrat Techs. Australia Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999)). Because the specification discloses no algorithm, expressed in mathematical formulas, flowcharts, step-by-step instructions, or any other form for performing these functions, the claims are indefinite.
3. Applicant’s arguments with respect to claims 1, 3-10, and 12-19 rejected under 35 U.S.C. 101 have been considered but is not persuasive. Applicant argues “Applicant has amended the claims to recite an application programming interface that allows the system to communicate with different types of computing devices with different types of applications. This constitutes integration of the asserted abstract concepts into a practical application. The use of the API allows an improvement in computer efficiency as it avoids the need for specific interface software for each type of different type of computer device and type of software application”.
The improvement of increased development efficiency by writing one interface (the API) instead of many is an economic and business-oriented benefit. It reduces software development time and cost. It does not, however, improve the functioning or capabilities of the underlying computer or network. The computers on the network continue to operate in their normal, expected manner, sending and receiving data through a standardized interface. The claim does not recite, for example, a specific API structure that reduces processing cycles, conserves memory, or enhances data transmission speeds. The API is "extra-solution activity" that is not integral to the claimed abstract idea but is merely appended to it.
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.
4. Claims 1, 3-10, and 12-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of evaluating and recommending financial products for a customer without significantly more.
5. Claim 10 is directed to a method which is one of the four statutory categories of invention (Step 1: YES).
6. Claim 10 recites a “method to evaluate and recommend financial products for a plurality of customers using …, the method comprising:
generating a plurality of questions related to financial needs of a customer,
communicating the generated plurality of questions through an … operated by the one of the customer, wherein the … generates a set of … to receive the plurality of questions related to financial needs of the customer and collect answers to the plurality of questions; wherein the … allows communication of the generated plurality of questions to any of … operated by each of a plurality of consumers, wherein the …allows communication of answers to the plurality of questions from …;
receiving the collected answers to the plurality of questions for the one of the customers through the …,
storing a plurality of financial products, each of the financial products being offered by a financial institution available for purchase by an eligible customer, and each having a set of parameters that define the eligible customer;
determining a desirability score for each of the plurality of financial products determined by the collected answers to the displayed questions in relation to the parameters; and
outputting a ranking of the plurality of financial products by the determined score”.
7. These limitations describe an abstract idea of evaluating and recommending financial products for a customer and corresponds to Certain Methods of Organizing Human Activity (sales activities or business relations). Accordingly, claim 10 recites an abstract idea (Step 2A: Prong 1: YES).
8. The claim also recites as additional elements such as “computing devices executing different types of software applications, application programming interface (API to a software application executed by the computing device, wherein the software application generates a set of interfaces, wherein API allows communication … different types of computing devices and … software applications” which do no more than implement the abstract idea and/or provide a particular technological environment. Therefore, claim 10 recites an abstract idea without a practical application (Step 2A - Prong 2: NO).
9. Further, as the additional elements of claim 10 do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field. Thus, claim 10 is not patent eligible (Step 2B: NO).
10. Claims 1 and 19 also recite the abstract idea of idea of evaluating and recommending financial products for a customer and corresponds to Certain Methods of Organizing Human Activity (sales activities or business relations) step one of step 2A (MPEP 2106.04). Claim 1 includes the additional elements of “system, computing devices executing different types of software applications, the system comprising: …, a question set generator executed by a processor, an application programing interface (API) allowing communication of the generated plurality of questions from the question set generator to any of the different types of computing devices and different types of software applications, memory, rules engine executed by a processor, and a scoring module executed by a processor”. Claim 19 includes the additional elements of “non-transitory computer-readable storage medium having machine-readable instructions stored thereon, which when executed by a processor, cause the processor, application programming interface (API), software application executed by the computing device, wherein the software application generates generate a set of interfaces”, “wherein API allows communication … different types of computing devices and … software applications. The additional elements do no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. Therefore, as they do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field.
11. Claims 3 and 12 each recite “wherein the … to display the questions on the device” as additional elements. The claim includes “extracting, using the processor”, “API allows access to an application executed on the computing device” and “device” as additional elements. The additional elements do no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. And, as they do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field.
12. Claims 4 and 13 each recite “wherein the … outputs a recommendation based on the ranking of the plurality of financial products” which further define the abstract idea. The claim includes “scoring module engine” as an additional element. The additional element does no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. And, as it does no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, it does not improve computer functionality or improve another technology or technical field.
13. Claims 5 and 14 each recite “wherein the … outputs an explanation of the recommended products” which further define the abstract idea. The claim includes “scoring module engine” as an additional element. The additional element does no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. And, as it does no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, it does not improve computer functionality or improve another technology or technical field.
14. Claims 6 and 15 each recite “wherein the … presents the plurality of questions as a single display of the questions” which further define the abstract idea. The claim includes “application” as an additional element. The additional element does no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. And, as it does no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, it does not improve computer functionality or improve another technology or technical field.
15. Claims 7 and 16 each recite “wherein the … presents each of the plurality of questions singularly, wherein an answer received allows the next question to be displayed” which further define the abstract idea. The claim includes “application” as an additional element. The additional element does no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. And, as it does no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, it does not improve computer functionality or improve another technology or technical field.
16. Claims 8 and 17 each recite “wherein the … displays an input to allow an … for the recommended financial product” which further define the abstract idea. The claim includes “application” as an additional element. The additional element does no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. And, as it does no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, it does not improve computer functionality or improve another technology or technical field.
17. Claims 9 and 18 each recite “wherein the financial products are loan programs and the parameters include interest rate and income” which further define the abstract idea.
Claim Rejections – 35 USC §112
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.
18. Claims 1 and 2-9 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Lack of Algorithm
19. Claim 1 recites “a rules engine executed by a processor, determining a desirability score … in relation to the parameters”. However, the specification does not provide details on the algorithm or methodology used by the "rules engine" to calculate the score. In other words, the algorithms or steps/procedures taken to perform the function must be described with sufficient details so that one of ordinary skill in the art would understand how the inventor intended the functions to be performed. (MPEP 2181 IV: MPEP 2161 01 I). Claims 3-9 stand rejected based on dependence to claim 1.
Claim Rejections – 35 USC §112
The following is a quotation of the first paragraph 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.
20. Claims 1 and 2-9 are 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 pre-AIA the applicant regards as the invention.
Means-Plus-Function
21. Claim 1 recites:
“a question set generator... that generates a plurality of questions... and collects answers…; a rules engine... determining a desirability score…, scoring module... outputting a ranking”.
The claim limitations above do not use the word “means” but are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations use generic placeholders, that are coupled with functional language, “acts”, without reciting sufficient structures to perform the recited functions and the generic placeholders are not preceded by structural modifiers.
These claim limitations invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181. Claims 3-9 stand rejected based on dependence to claim 1.
Claim Rejections - 35 USC § 103
22. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
23. Claims 1, 3-10, and 12-19 are rejected under 35 U.S.C. 103(a) as being unpatentable over Hyde et al. [US Pub No. 2017/0243278 A1] in view of Lister et al. [US Pub No. 2021/0090165 A1].
24. Regarding claim 1, Hyde discloses a system evaluating and recommending financial products for a customers using different types of computing devices executing different types of software applications, the system comprising:
a question set generator executed by a processor that generates a plurality of questions related to financial needs of one of the customers of the plurality of customers, and collects answers to the plurality of questions for the one of the customers operating a computing device executing a software application (0027-0029, 0045-0046, 0060-0062, 0064-0068, 0070-0072);
a memory storing a plurality of financial products, each of the financial products having a set of parameters (Figure 5, 0092-0093, 0095-0096, 0147);
a rules engine executed by a processor, determining a desirability score for each of the plurality of financial products determined by the collected answers to the displayed questions in relation to the parameters (0030-0031, 0048, 0095-0097); and
a scoring module executed by a processor, outputting a ranking of the plurality of financial products by the determined score (0030, 0051-0052, 0060, 0065, 0068, 0070-0071, 0088, 0161, 0165).
Hyde does not disclose however Lister teaches an application programing interface (API) allowing communication of the generated plurality of questions from the question set generator to any of the different types of computing devices and different types of software applications operated by each of the plurality of consumers, wherein the API allows communication of answers to the plurality of questions from any of the different types of computing devices and different types of software applications, the API communicating the plurality of questions to software application executed by the computer device and communicating the answers to the question set generator (0018, 0033, 0040, 0051).
Hyde does not disclose however Lister teaches a memory storing a plurality of financial products (0038-0039), each of the financial products being offered by a financial institution available for purchase by an eligible customer, and each having a set of parameters that define the eligible customer (0048-0049, 0062, 0079). Before the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to modify the disclosure of Hyde to include the teachings of Lister. The rationale to combine the teachings would be a need for accurately and quickly quoting a customer's eligibility for a credit card product.
25. Regarding claim 10, Hyde discloses a method to evaluate and recommend financial products for a plurality of customers using different types of computing devices executing different types of software applications, the method comprising:
generating a plurality of questions related to financial needs of a customer (0027-0029, 0045-0046, 0060-0062, 0064-0068, 0070-0072);
receiving the collected answers to the plurality of questions for the one of the customers through the API (0027-0029, 0045-0046, 0060-0062, 0064-0068, 0070-0072).
storing a plurality of financial products, each of the financial products (Figure 5, 0092-0093, 0095-0096, 0147);
determining a desirability score for each of the plurality of financial products determined by the collected answers to the displayed questions in relation to the parameters (0030-0031, 0048, 0095-0097); and
outputting a ranking of the plurality of financial products by the determined score (0030, 0051-0052, 0060, 0065, 0068, 0070-0071, 0088, 0161, 0165).
Hyde does not disclose however Lister teaches communicating the generated plurality of questions through an application programing interface (API) to a software application executed by the computing device operated by the one of the customer, wherein the software application generates a set of interfaces to receive the plurality of questions related to financial needs of the customer and collect answers to the plurality of questions, wherein the API allows communication of the generated plurality of questions to any of a plurality of different types of computing devices and different types of software applications operated by each of a plurality of consumers, wherein the API allows communication of answers to the plurality of questions from any of the different types of computing devices and different types of software applications (0018, 0033, 0040, 0051).
Hyde does not disclose however Lister teaches being offered by a financial institution available for purchase by an eligible customer, and each having a set of parameters that define the eligible customer (0048-0049, 0062, 0079). Before the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to modify the disclosure of Hyde to include the teachings of Lister. The rationale to combine the teachings would be a need for accurately and quickly quoting a customer's eligibility for a credit card product.
26. Regarding claim 19, Hyde discloses a non-transitory computer-readable medium having machine-readable instructions stored thereon, which when executed by a processor, cause the processor to:
generate a plurality of questions related to financial needs of a customer (0027-0029, 0045-0046, 0060-0062, 0064-0068, 0070-0072);
store a plurality of financial products, each of the financial products having a set of parameters (Figure 5, 0092-0093, 0095-0096, 0147);
determine a desirability score for each of the plurality of financial products determined by the collected answers to the displayed questions in relation to the parameters (0030-0031, 0048, 0095-0097); and
output a ranking of the plurality of financial products by the determined score (0030, 0051-0052, 0060, 0065, 0068, 0070-0071, 0088, 0161, 0165).
Hyde does not disclose however Lister teaches communicating the generated plurality of questions through an application programing interface (API) to a software application executed by the computing device operated by the one of the customer, wherein the software application generates a set of interfaces to receive the plurality of questions related to financial needs of the customer and collect answers to the plurality of questions, wherein the API allows communication of the generated plurality of questions to any of a plurality of different types of computing devices and different types of software applications operated by each of a plurality of consumers, wherein the API allows communication of answers to the plurality of questions from any of the different types of computing devices and different types of software applications (0018, 0033, 0040, 0051).
Hyde does not disclose however Lister teaches being offered by a financial institution available for purchase by an eligible customer, and each having a set of parameters that define the eligible customer (0048-0049, 0062, 0079). Before the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to modify the disclosure of Hyde to include the teachings of Lister. The rationale to combine the teachings would be a need for accurately and quickly quoting a customer's eligibility for a credit card product.
27. Regarding claims 3 and 12, Hyde discloses wherein the API allows access to an application executed on the computing device to display the questions on the device (0202).
28. Regarding claims 4 and 13, Hyde discloses wherein the recommendation engine outputs a recommendation based on the ranking of the plurality of financial products (0030, 0051-0052, 0060, 0065, 0068, 0070-0071, 0088, 0161, 0165).
29. Regarding claims 5 and 14, Hyde discloses wherein the recommendation engine outputs an explanation of the recommended products (0028-0029, 0052, 0066, 0072, 0074, 0079-0080).
30. Regarding claims 6 and 15, Hyde discloses wherein the application presents the plurality of questions as a single display of the questions (0027-0029, 0045-0046, 0060-0062, 0064-0068, 0070-0072).
31. Regarding claims 7 and 16, Hyde discloses wherein the application presents each of the plurality of questions singularly, wherein an answer received allows the next question to be displayed (0062).
32. Regarding claims 8 and 17, Hyde discloses wherein the application displays an input to allow an application for the recommended financial product (0027-0029, 0045-0046, 0060-0062, 0064-0068, 0070-0072).
33. Regarding claims 9 and 18, Hyde discloses wherein the financial products are loan programs and the parameters include interest rate and income (0027, 0030-0031, 0047).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN T POE whose telephone number is (571)272-9789. The examiner can normally be reached on Monday-Friday 9:30am through 6pm 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, Calvin Hewitt can be reached on 571-272-6709. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/K.T.P/Examiner, Art Unit 3692 /KEVIN T POE//DANIEL S FELTEN/Primary Examiner, Art Unit 3692