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 .
The following is a Final Office Action in response to communications received February 26, 2026. No Claim(s) have has been canceled. No Claims have been amended. No new claims have been added. Therefore, claims 1-21 are pending and addressed below.
Priority
Applicant No. 18454467 filed 08/23/2023 is a continuation of 16435967 filed 06/10/2019 now Patent No. 11,797,962.
Applicant Name/Assignee: Toronto-Dominion Bank
Inventor(s): Jones, Christopher; Chalifoux, Marc; Knechtel, Sara
Response to Arguments
Claim Objections
Applicant’s argument is persuasive. The examiner withdraws the objection.
Claim Interpretation
The interpretation of the limitation “regulating frequencies of performing message scan operations for different recipients by prioritizing message scan operations to identify, by conducting optical character recognition and based on delegated access to query the message account at the message server using the authentication credential, a first resource request message from a frequently paid recipient and among a plurality of messages associated with the message account at the message server” has been updated in response to applicant’s argument and further consideration of the specification. See updated Claim Interpretation below.
Claim Rejections - 35 USC § 101
Applicant's arguments filed 02/26/2026 have been fully considered but they are not persuasive.
Applicant traverses the 101 rejection arguing, the limitations integrate any alleged abstract idea into a practical application. Specifically, applicant argues the limitations similar to example 37 (relocation of Icons) under the USPTO 101 guidance which recite atypical icon arrangement by the rearrangement of Icons in a GUI based on user interaction. Applicant recites the limitations arguing the claimed regulating frequencies of performing message scan operations for different recipients by prioritizing scan operations to identify a first resource request from a frequently paid recipient among a plurality of messages and obtaining a resource parameter to device proposed resource transfer to recipient where the transfer request alert is generated and transmitted for requesting a delay in resource transfer…, are arranged in time based on prioritization identification of certain frequent resource request message. The arrangement of alerts transmitted is similar to the re-arranging of icons of example 37, since the prioritizing message scan operations to identify first resource request message and the delaying until nearer due date associated with resource request message reduces transaction failure with respect to the prioritized resource request message providing technical improvement to the claimed system. Applicant’s argument is not persuasive. Example 37, provided an improvement to GUI technology by providing a process which changed the arrangement of icons which previously did not have an automatic icon arrangement function so that the most used icons are located where they can be easily accessed. This is not the case of the current application. The claimed additional elements beyond the abstract idea include system comprising a communication module, one or more processors coupled to the communication module, a memory coupled to the one or more processors, a client device and scanning means. The regulating frequencies performing scan operations to identify prioritizing a first resource request from a frequently paid recipient among a plurality of messages does not improve the claimed system or any of its underlying technology (e.g. communication module, one or more processors coupled to the communication module, a memory coupled to the one or more processors, a client device), solve a problem rooted in the technology, provide a process where the technology achieves an unexpected result or any other indications of patent eligibility under step 2A. The regulating frequencies performing scan operations to identify prioritizing a first resource request from a frequently paid recipient among a plurality of messages does not improve upon the technical process of “scan operations”, rather the combination of processes as argued by the applicant is directed toward “prioritizing message scan operations to identify first resource request message and the delaying until nearer due date associated with resource request message reduces transaction failure” which is mitigation of risk. Example 37 is not analogous, the rejection is maintained.
In the remarks applicant points to the specification para 0058-0059, 0073, 0094 and 0123, emphasizing the operation “generate a transfer request alert for display for notifying the user …of the bill payment notification email….ameliorating the need for the user …to review a plurality of messages for identifying resource request message seeking resource transfers”, “processor …configured a proposed resource transfer based on the previously identified resource request message…”, system/method “may define a proposed resource transfer based on identified resource request …”. Applicant argues the limitations in light of the specification, provides a solution that is a technical modification to computer implementation to modify the system in a manner that provides a practical application. The claimed “regulating frequencies of performing message scan operations for different recipients by prioritizing message scan operations to identify …and based on delegated access to query the message account …using authentication credential a first resource request message from a frequently paid recipient among a plurality of messages associated with the message account…” and generating/transmitting …a transfer alert …and for requesting confirmation to delay …proposed resource transfer …until nearer to a due date…” is a practical application. This is because the claimed subject matter as a whole integrate any alleged abstract idea into a practical application. The claimed specific manner of identifying resource request and generating transfer request alert provides improvement over prior systems. The examiner respectfully disagrees with the premise of applicant’s argument. The claimed system or any of the other underlying technology is not modified by “the regulating frequencies of performing message scan operations for different recipients by prioritizing message scan operations to identify …and based on delegated access to query the message account …using authentication credential a first resource request message from a frequently paid recipient among a plurality of messages associated with the message account…”. The regulating/determining (the spec ¶ 0093) frequencies of scanning operations that are prioritized- are not for the purpose of improving technology, but instead to identify resource request messages from frequently paid recipients. The specification discloses that the purpose for applying conditions on scanning a plurality of messages is to identify a certain group/class of payees to implement a resource transfer process (see ¶0086 wherein the specification discloses scan to identify names/identifier messages associated with payees in a list of bill payee, ¶ 0091 wherein the specification discloses prioritizing scan operations to identify resource request messages from frequently paid recipient entities, scan operations to identify resource request messages from less frequently paid recipient entities). The specification discloses para 0093 the processor conducting operations to identify new resource request messages based on a predetermined schedule where the time stamp record determines the frequency that the processor may execute operations for identifying new resource request messages. Accordingly, the specification makes clear that the regulating/determining is for identifying new resource request messages or the prioritizing operations to identify resource request messages from frequently paid recipient entities and not for improving any particular technological technique or any underlying technology. The examiner maintains the claimed limitations “regulating” (e.g. determining) of the frequency the processor executes operations and prioritizing scan operations to identify request messages based on frequently paid recipients is not patent eligible under step 2A prong 2, because the claimed process merely applies the scanning operation to identify resource request messages and not any of the listing provided for indications of patent eligibility under step 2A prong 2. The rejection is maintained.
In the remarks applicant points to specification para 0040, 0058-0059, para 0078, para 0085, para 0094 and para 0119. Applicant emphasizes the specification discloses generate resource transfers based on identified bill payment notification; identify resource request messages; processor proposed resource transfer based on previously identified resource request message to address a need for the user to configured bill payment by reviewing bill payment; conduct OCR, MPEP 2106.05(a)II and points to Patent ‘911 in Weisner v Google LLC, arguing that the priority as claimed in light of these guidance recite a practical application under step 2A prong 2. Applicant’s argument is not persuasive, the specification as recited, MPEP 2106.05(a)II do not reverse the analysis above. With respect to Weisner v Google, See response above. The rejection is maintained.
In the remarks applicant argues the based on the arguments above, independent claims 1, 12 and 20 are patent eligible. Applicant’s argument is not persuasive, see response above. The rejection is maintained.
Claim Rejections - 35 USC § 103
In light of the new claim interpretation with respect to the limitation “regulating frequencies of performing message scan operations for different recipients by prioritizing message scan operations to identify…” is persuasive. The examiner withdraws the rejection.
Claim Interpretation
Claim 1 recites the limitation “regulating frequencies of performing message scan operations for different recipients by prioritizing message scan operations to identify, by conducting optical character recognition and based on delegated access to query the message account at the message server using the authentication credential, a first resource request message from a frequently paid recipient and among a plurality of messages associated with the message account at the message server”.
The examiner is updating the Claim interpretation of the previous Office action to reflect interpretation of the specification in light of applicant’s 103 arguments.
The specification discloses:
[0085] The processor may identify a resource request message (e.g., bill payment notification e-mail, or the like) among a plurality of messages ( e.g., global set of e-mail messages associated with the e-mail account of the transferor entity) based on optical character recognition r image recognition operations using one or more defined criteria. For instance, the processor may query or scan the plurality of messages to identify keyword expressions, such as "Statement Balance", "Minimum Payment", or "Due Date" to identify bill payment notification related emails
[0086] In some examples, the defined criteria may be based on a list of bill payees. For instance, the client record 126 of the user of the client device 110 may include a list of pre-configured payee names or identifiers. The processor may query or scan the plurality of messages to identify the payee name or payee identifier, such as "Toronto-Dominion Bank", "institution number 004", or the like. Thus, the user of the client device 110 may setup a list of desired payees to which resources may be transferred to and the processor may identify messages that may be associated with the payees included in the list.
[0091] In some examples, the processor may identify a resource request message based on an ordered or sorted payee list. For example, a transferor entity may regularly transfer resources for paying a payee more frequently than another payees. Accordingly, the processor may streamline operations by prioritizing message scan operations to identify resource request messages from frequently paid recipient entities and conducting message scan operations to identify resource request messages from less frequently paid recipient entities at a later time.
[0093] In some examples, a time/date stamp associated with recent operations for
identifying resource request messages may be recorded at the client record 126. Accordingly, based
on the stored time/date stamps, the processor may conduct operations to identify new resource
request messages based on a predetermined schedule (e.g., hourly, daily, weekly, monthly, etc.). In
10 some examples, the time/date stamp record may determine the frequency that the processor may
execute operations for identifying new resource request messages. That is, the processor may
conduct operations to identify new resource request messages newer than the stored time/date
stamp.
Note the specification does not suggest or disclose with respect to the “scan” a process where the velocity of scanning of messages is regulated or controlled. Rather the specification discloses the scanning of messages are used to identify “payee name”, “payee identifier”, “keyword” . The specification discloses “prioritizing message scan operations” to identify request messages from either frequently paid recipients and/or less frequently paid recipients. The specification further discloses the processor identifying new request messages based on a schedule using time/date stamp record determining the frequencies the processor executes operations for identifying new resource request messages.
Therefore, in light of the specification, the examiner is interpreting the language “regulating” to be analogous to “determining/evaluating” frequencies of performing message scanning operations for identifying messages. The examiner is interpreting the language “prioritizing” according to its common definition (designate something as more important), where the “prioritizing message scans” is analogous to when evaluating messages scanned designating as prioritized (e.g. important) the messages identified as resource request message from a frequently paid recipient and among a plurality of messages associated with the message account at the message server. Therefore, the limitation “regulating frequencies of performing message scan operations for different recipients by prioritizing message scan operations to identify…” is being examined by the interpretation “regulating (evaluating/determining) frequencies of performing message scan operations for different recipients and the limitation “prioritizing message scan operations to identify “ to be designating as more important the scanned messages identified as … “a first resource request message from a frequently paid recipient and among a plurality of messages associated with the message account at the message server”
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 1-18 and 20-21 are rejected under 35 U.S.C. § 101 because the instant application is directed to non-patentable subject matter. Specifically, the claims are directed toward at least one judicial exception without reciting additional elements that amount to significantly more than the judicial exception. The rationale for this determination is in accordance with the guidelines of USPTO, applies to all statutory categories, and is explained in detail below.
In reference to Claims 1-10:
STEP 1. Per Step 1 of the two-step analysis, the claims are determined to include a system, as in independent Claim 1 and the dependent claims. Such systems fall under the statutory category of "machine." Therefore, the claims are directed to a statutory eligibility category.
STEP 2A Prong 1. The claimed invention is directed to an abstract idea without significantly more. System claim 1 recites functional processes 1) receive authentication credential 2) associating credential with records 3) regulating frequencies of message scan operations conducting OCR to identify resource request message from a frequency paid recipient among a plurality of messages 4) obtaining resource parameter 5) generating and transmitting transfer request alert 6) delaying until near due date associated with resource request message, allocation of a resource in response to receiving input 7) conducting subsequent message scan to identify second resource request message after a period of time. The claimed limitations which under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computing system to perform the operations that can reasonably be performed using mental processes. This is because the receiving credentials, regulating frequencies of performing message, obtaining resource parameter by OCR operations and conducting message scan operation to identify second request mimics mental processes of observation, the associating authentication credential with record and in response to receiving input delaying allocation operation mimics mental process of analysis and decision. The limitation “generating and transmitting request alert” is a process of communication of result which, where the data interpretation is perceptible only in the human mind. That is, other than reciting one or more system processors, nothing in the claim precludes the limitations from being reasonably performed using mental processes. Therefore, the limitations, mimic human thought processes of observation, evaluation and opinion, and communication of result which, where the data interpretation is perceptible only in the human mind. See In re TLl Commc'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. latric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016)
The specification makes clear that the focus of the invention is the abstract idea of managing resource remitted to providers (¶ 0003) and not on an improvement to technology and/or a technical field. The Specification is titled “Configuring Data Transfers Based on Electronic Messages,” and discloses, in the Background section, a service provider may generate and transmit an invoice, resource request message, which summarizes details of the transaction including account number, statement balance and payment due date” (Spec. ¶ 0003). The Specification describes a process for data transfers based on electronic messages (Spec ¶ 0025). When considered as a whole the claimed subject matter is directed toward resource transfer and allocation. Such concepts can be found in the abstract category of commercial interactions/activities. These concepts are enumerated in Section I of the 2019 revised patent subject matter eligibility guidance published in the federal register (84 FR 50) on January 7, 2019) is directed toward abstract category of mental processes mathematical concepts and methods of organizing human activity.
STEP 2A Prong 2: The identified judicial exception is not integrated into a practical application because the claims recite a process by a system to 1) receive authentication credential -insignificant extra solution activity 2) associating credential with records –directed toward business process of authorization a business process 3) regulating frequencies of message scan operations conducting OCR to identify resource request message from a frequency paid recipient among a plurality of messages – directed toward supervising and analyzing commercial activity data 4) obtaining resource parameter-insignificant extra solution activity 5) generating and transmitting transfer request alert – insignificant extra solution activity 6) delaying until near due date associated with resource request message, allocation of a resource in response to receiving input – directed toward a commercial activity of applying a business procedure for allocation of a resource 7) conducting subsequent message scan to identify second resource request message after a period of time-analyzing data to identify business related data. The functions are is recited at a high-level of generality such that it amounts to no more than applying the exception using generic computer components. Taking the claim elements separately, the operation performed by the system at each step of the process is purely in terms of results desired and devoid of implementation of details. The recited steps 1) receiving authentication credential, obtaining resource parameter and generating/transmitting transfer request alert is mere data gathering and transmission recited at a high level of generality and thus are insignificant extra solution activity.
The combination of limitations 1-4 is directed toward receiving/obtaining data which is applied to associated credentials with records and supervising the frequencies of message scan operations using the received authentication credentials- which is being performed at a high level of generality performed by one or more processors amounting to no more than mere instructions to apply the business process implemented on an abstract idea. The combination of limitations 1-4 and 5-7 is directed toward generating an transfer request alert and delaying resource allocation based on a received input and conducting additional message scans- which is a business process. The “one or more” processors are generally applied without limiting how the processors perform the recited operations. These limitations only recite outcomes of the abstract business process without any details as to technical implementation. Furthermore, these “outcomes” are not directed toward any underlying technology for improvement or to provide solutions to technical problems. Instead the claim limitations merely link the abstract idea to a generic computer system being applied to perform the judicial exception. When the claims are taken as an ordered combination, the combination of limitations are not directed toward any technical process or technological technique or technological solution to a problem rooted in technology.
Technology is not integral to the process as the claimed subject matter is so high level that any generic programming could be applied and the functions could be performed by any known means. Furthermore, the claimed functions do not provide an operation that could be considered as sufficient to provide a technological implementation or application of/or improvement to this concept (i.e. integrated into a practical application).
In addition, when the claims are taken as a whole, as an ordered combination, the combination of steps not integrate the judicial exception into a practical application as the claim process fails to impose meaningful limits upon the abstract idea. . This is because the claimed subject matter fails to provide additional elements or combination or elements to apply or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception. The functions recited in the claims recite the concept of receiving authentication credentials, associating credentials with records, regulating/supervising frequencies of message request scans/receptions, obtaining resource parameters to define resource transfer (invoice) and generating an alert including the resource parameter (invoice) delaying resource allocation due date in response to receiving input confirmation and conducing subsequent message scans which is a process directed toward a business practice.
The claim provides no technical details regarding how the recited operations are performed. Instead, similar to the claims at issue in Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332 (Fed. Cir. 2017), “the claim language . . . provides only a result-oriented solution with insufficient detail for how a computer accomplishes it. Our law demands more.” Intellectual Ventures, 850 F.3d at 1342 (citing Elec. Power Grp. LLC v Alstom, S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016)).
The integration of elements do not improve upon technology or improve upon computer functionality or capability in how computers carry out one of their basic functions. The integration of elements do not provide a process that allows computers to perform functions that previously could not be performed. The integration of elements do not provide a process which applies a relationship to apply a new way of using an application. The instant application, therefore, still appears only to implement the abstract idea to the particular technological environments apply what generic computer functionality in the related arts. The steps are still a combination made to manage resource data messages and responses and does not provide any of the determined indications of patent eligibility set forth in the 2019 USPTO 101 guidance. The additional steps only add to those abstract ideas using generic functions, and the claims do not show improved ways of, for example, an particular technical function for performing the abstract idea that imposes meaningful limits upon the abstract idea. Moreover, Examiner was not able to identify any specific technological processes that goes beyond merely confining the abstract idea in a particular technological environment, which, when considered in the ordered combination with the other steps, could have transformed the nature of the abstract idea previously identified. 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 claim is directed to an abstract idea.
STEP 2B; The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to concepts of the abstract idea into a practical application. The additional elements recited in the claim beyond the abstract idea beyond the abstract idea include a system comprising a communication module, one or more processors coupled to the communication module and a memory coupled to the one or more processors where the processors performing the operations of “receiving”, “associating”, “regulating frequencies of performing messages”, “obtaining parameters”, “generating/transmitting parameters”, “delaying allocation of resource” and “conducting message scan operation scans”.
Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer one or more processors to perform the operations of “receiving”, “associating”, “regulating frequencies of performing messages”, “obtaining parameters”, “generating/transmitting parameters”, “delaying allocation of resource” and “conducting message scan operation scans” ----are some of the most basic functions of a computer.. When the claims are taken as a whole, as an ordered combination, the combination of steps does not add “significantly more” by virtue of considering the steps as a whole, as an ordered combination. All of these computer functions are generic, routine, conventional computer activities that are performed only for their conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) Absent a possible narrower construction of the terms ““receiving”, “associating”, “regulating frequencies of performing messages”, “obtaining parameters”, “generating/transmitting parameters”, “delaying allocation of resource” and “conducting message scan operation scans” ... are functions can be achieved by any general purpose computer without special programming. None of these activities are used in some unconventional manner nor do any produce some unexpected result. In short, each step does no more than require a generic computer to perform generic computer functions.
As to the data operated upon, "even if a process of collecting and analyzing information is 'limited to particular content' or a particular 'source,' that limitation does not make the collection and analysis other than abstract." SAP America, Inc. v. Invest Pic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Applicant’s claimed functions add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis modification-transmission is equally generic and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited as an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and monitoring). The ordering of the steps is therefore ordinary and conventional. The analysis concludes that the claims do not provide an inventive concept because the additional elements recited in the claims do not provide significantly more than the recited judicial exception.
According to 2106.05 well-understood and routine processes to perform the abstract idea is not sufficient to transform the claim into patent eligibility. As evidence the examiner provides:
The specification discloses:
[0041] Reference is made to FIG. 1, which illustrates, in block diagram form, a system 100 for configuring data transfers based on electronic messages, in accordance with an example of the present application. A recipient entity may be a goods and/or services provider for a consumer (e.g., a transferor entity). The recipient entity may periodically generate invoices or statements for goods/ services rendered. The recipient entity may also transmit resource request messages, such as e-mail notifications, containing summary information (e.g., amount due, account number, etc.) to a transferor entity. It may be understood that resource request messages may be provided using
other messaging formats or via other communication systems.
[0042] The system 100 includes a client device 110, a resource server 120, and a message server 130. In some examples, the system 100 may also include a recipient device 140. The system 100 includes a network 150. The client device 110, the resource server 120, the message server 130, and the recipient device 140 may be configured to communicate over the network 150 with one another or with any other similar computing device. The network 150 may include one or a combination of interconnected wired or wireless networks, including the Internet, local area networks, wireless area networks, or the like.
[0046] The client device 110 includes one or more processors, memory, and a communication module for providing communications capabilities with other computing devices. The client device 110 may be configured to receive input or provide output for interacting with the transferor entity. For example, the client device 110 may include an exchange application 112 having processor executable instructions stored in memory that, when executed, cause a processor to conduct operations described herein. In some examples, the exchange application 112 may be a
mobile banking application associated with the resource server 120 (e.g., banking institution server). The exchange application 112 may receive input from a transferor entity. For example, the exchange application 112 may receive authentication credentials for accessing a banking account or may receive user input for conducting actions associated with resource request messages or other actions associated with a client record of the transferor entity. The exchange application 112 may provide a user interface allowing the transferor entity to access or manage a banking account or may provide a user interface to display notifications and to accept user input in response to the
displayed notifications.
The instant application, therefore, still appears to only implement the abstract ideas to the particular technological environments using what is generic components and functions in the related arts. The claim is not patent eligible.
The remaining dependent claims—which impose additional limitations—also fail to claim patent-eligible subject matter because the limitations cannot be considered statutory. In reference to claims 2-10 and 21 these dependent claim have also been reviewed with the same analysis as independent claim 1. Dependent claim 2 is directed toward identification of resource request message based on list of domain names sorted by payment frequencies- business process. Dependent claim 3 is directed toward adding new domain name associated with resource request message to a list of domain names associated with the client record when not in list of domain names-business process. Dependent claim 4 is directed toward establishes baseline threshold for a future message scan – business process. Dependent claim 5 is directed toward request message corresponds to bill notification – business process. Dependent claim 6 is directed toward client record includes data- business process. Dependent claim 7 is directed toward message identified based on recipient name associated with list of geographically grouped recipients- business process. Dependent claim 8 is directed toward message includes identifying message includes account number- business process. Dependent claim 9 is directed toward record includes data- business process. Dependent claim 10 is directed toward transfer request alert generated- business process. Dependent 21 is directed toward well understood technology.
The dependent claim(s) have been examined individually and in combination with the preceding claims, however they do not cure the deficiencies of claim 1. Where all claims are directed to the same abstract idea, “addressing each claim of the asserted patents [is] unnecessary.” Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 7 Ass ’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014). If applicant believes the dependent claims 2-10 and 21 are directed towards patent eligible subject matter, they are invited to point out the specific limitations in the claim that are directed towards patent eligible subject matter.
In reference to Claims 11-18:
STEP 1. Per Step 1 of the two-step analysis, the claims are determined to include a method, as in independent Claim 11 and the dependent claims. Such methods fall under the statutory category of "process." Therefore, the claims are directed to a statutory eligibility category.
STEP 2A Prong 1. The steps of Method claim 11 corresponds to functions of system claim 1. Therefore, claim 11 has been analyzed and rejected as being directed toward an abstract idea of the categories of concepts directed toward mental processes and methods of organizing human activity previously discussed with respect to claim 1.
STEP 2A Prong 2: The steps of Method claim 1 corresponds to functions of system claim 1. Therefore, claim 11 has been analyzed and rejected as failing to provide limitations that are indicative of integration into a practical application, as previously discussed with respect to claim 1.
STEP 2B; The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to concepts of the abstract idea into a practical application. Except for the “by the optical character recognition” process applied to obtain parameters, the claim limitations do not recite any additional elements beyond the abstract idea. The steps of Method claim 11 corresponds to system functions of claim 1. Therefore, claim 11 has been analyzed and rejected as failing to provide additional elements that amount to an inventive concept –i.e. significantly more than the recited judicial exception. Furthermore, as previously discussed with respect to claim 1, the limitations when considered individually, as a combination of parts or as a whole fail to provide any indication that the elements recited are unconventional or otherwise more than what is well understood, conventional, routine activity in the field.
The remaining dependent claims—which impose additional limitations—also fail to claim patent-eligible subject matter because the limitations cannot be considered statutory. In reference to claims 12-18 these dependent claim have also been reviewed with the same analysis as independent claim 11. Dependent claim 12 is directed toward identification of first message based on list of domain names sorted- business process. Dependent claim 13 is directed toward adding new domain name associated with resource request message to a list of domain names associated with the client record when not in list of domain names-business process. Dependent claim 14 is directed toward recording timestamp in record and establishing baseline threshold – business process. Dependent claim 15 is directed toward request message corresponds to bill notification – business process. Dependent claim 16 is directed toward client record includes data- business process. Dependent claim 17 is directed toward message identified based on recipient name associated with list of geographically grouped recipients- business process. Dependent claim 18 is directed toward message includes identifying message includes account number- business process.
The dependent claim(s) have been examined individually and in combination with the preceding claims, however they do not cure the deficiencies of claim 1. Where all claims are directed to the same abstract idea, “addressing each claim of the asserted patents [is] unnecessary.” Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 7 Ass ’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014). If applicant believes the dependent claims 11-18 are directed towards patent eligible subject matter, they are invited to point out the specific limitations in the claim that are directed towards patent eligible subject matter.
In dependent claim 20:
STEP 1. Per Step 1 of the two-step analysis, the claims are determined to include a non-transitory computer-readable storage medium, as in independent Claim 20. Such mediums fall under the statutory category of "manufacture." Therefore, the claims are directed to a statutory eligibility category.
STEP 2A Prong 1. The instructions of medium claim 20 corresponds to functions of system claim 1. Therefore, claim 20 has been analyzed and rejected as being directed toward an abstract idea of the categories of concepts directed toward mental processes and methods of organizing human activity previously discussed with respect to claim 1.
STEP 2A Prong 2: The instructions of medium claim 20 corresponds to functions of system claim 1. Therefore, claim 20 has been analyzed and rejected as failing to provide limitations that are indicative of integration into a practical application, as previously discussed with respect to claim 1.
STEP 2B; The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to concepts of the abstract idea into a practical application. Except for the recitation of “non-transitory computer-readable storage medium storing instructions and “by the optical character recognition” process applied to obtain parameters, the claim limitations do not recite any additional elements beyond the abstract idea. The steps of Method claim 11 corresponds to system functions of claim 1. Therefore, claim 11 has been analyzed and rejected as failing to provide additional elements that amount to an inventive concept –i.e. significantly more than the recited judicial exception. Furthermore, as previously discussed with respect to claim 1, the limitations when considered individually, as a combination of parts or as a whole fail to provide any indication that the elements recited are unconventional or otherwise more than what is well understood, conventional, routine activity in the field.
In connection with the Beauregard claim, the Federal Circuit held that even though the claim is directed to a manufacture, the claim is not "truly drawn to a specific" computer readable medium, but rather is directed toward the method of managing messages for resource allocation. Simply reciting the use of a computer to execute an algorithm that can be performed entirely in the human mind will not change the analysis. The current claim is analogous to a Beauregard claim is then treated as a method claim. This claim was determined not to meet the Alice/May 2A and 2B test. Although the claim altered data, "[t]he mere manipulation or reorganization of data, however, does not satisfy the transformation prong." Furthermore, the "incidental use" of a computer did not allow the claim to meet the Alice 2A or 2B requirements. The court noted that even though the method may require the use of a computer, methods that can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas "even when performed by a computer". Accordingly, the claimed medium has not met its burden to demonstrate that claim 2 is "truly drawn to a specific" computer readable medium, rather than to the underlying method of credit card fraud detection. To be sure, after Abele, we have held that, as a general matter, programming a general purpose computer to perform an algorithm "creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software." In re Alappat, 33 F.3d 1526, 1545 (Fed.Cir. 1994). But we have never suggested that simply reciting the use of a computer to execute an algorithm that can be performed entirely in the human mind falls within the Alappat rule.
US Pub No. 2004/0243512 A1 by Wallach
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Pub No. 2020/0067861 A1 by Leddy et al; US Pub No. 2013/0268839 A1 by Lefebvre et al; CA-2199243-C by Dimitroff; CA-2255933-C by Vaudreuil; CA-2757644-A1 by Vasten.
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 MARY M GREGG whose telephone number is (571)270-5050. The examiner can normally be reached M-F 9am-5pm.
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/MARY M GREGG/Examiner, Art Unit 3695
/CHRISTINE M Tran/Supervisory Patent Examiner, Art Unit 3695
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