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 .
Response to Amendment
This action is in response to the submission filed 10 October 2025 for application 18/471,659. Claim 1 has been canceled. Claims 2, 4, 6, 7, 9, 11, 12, 14, and 16 have been amended. Currently, claims 2-16 are pending and have been examined.
The objection to claims 6, 11, and 16 has been withdrawn in view of the amendments made.
The §112(b) rejection of claims 2-16 has been withdrawn in view of the amendments made.
Response to Arguments
Applicant’s arguments, see pages 7-9, filed 13 October 2025, in regards to rejections under 35 U.S.C. § 103, with respect to the feature “by subtracting the probability risk associated with a parent node from the probability risk associated with a child parent node” as recited in independent claim 2 (and similarly in independent claims 7 and 12) that neither combination of the cited references teach or suggest all the elements of amended claim 2.
Examiner’s response: Applicant’s arguments have been fully considered but are moot because the new ground of rejection (citing new reference Moore et al (Cached Sufficient Statistics for Efficient Machine Learning with Large Datasets, 1998) for teaching the new limitation) does not rely on any reference combination applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Hence the rejection of claim 2 (and similarly claims 7 and 12) is maintained along with the rejection of the other claims as they are dependent on one of the independent claims as shown in the detailed rejection below.
Applicant’s arguments, see page 10, filed 13 October 2025, in regards to rejections under 35 U.S.C. § 101, Applicant argues that the Office Action rejected Claims 2-16 under 35 U.S.C. § 101 as allegedly directed to an abstract idea without significantly more. While Applicant respectfully disagrees with the rejection of Claims 2-16, in order to advance prosecution, Applicant has amended independent Claims 2, 7, and 12. Applicant respectfully requests that the Office reconsider and withdraw the rejections under 35 U.S.C. § 101.
Examiner’s response: Applicant’s arguments have been fully considered but are not persuasive. Examiner disagrees that the rejection can be withdrawn because firstly even upon reconsideration the limitations that were amended are still identified as abstract ideas under Step 2A, prong 1 as shown in the detailed rejection below. Secondly, Applicant has failed to provide any explanation or reasons about which limitations of the rejection Applicant disagrees with. Hence, the rejection is maintained.
Claim Objections
Claim 4 is objected to because of the following informalities: The phrase “… for the determining a parent decision node …” on line 3 is awkwardly worded. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 2-16 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 recites the limitation "…the probability risk …” in line 14. There is insufficient antecedent basis for this limitation in the claim. Claims 3 - 6 depend on claim 2 and therefore inherit the same rejection.
Claim 7 recites the limitation "…the probability risk …” on Page 3 (last but one line). There is insufficient antecedent basis for this limitation in the claim. Claims 8 - 11 depend on claim 7 and therefore inherit the same rejection.
Claim 12 recites the limitation "…the probability risk …” on Page 5 (lines 10 and 11). There is insufficient antecedent basis for this limitation in the claim. Claims 13 - 16 depend on claim 12 and therefore inherit the same rejection.
Also, claim 2 is indefinite because on Page 2 (line 15), it is unclear as to what the phrase “… a child parent node…” means? What node does it refer to? Is it the child node or the parent node? Or is there any other special meaning for a “child parent node”? Hence, it is indefinite. Or perhaps it is a typo. But for the purposes of examination, Examiner is treating it as a “child node”. Claims 3 - 6 depend on claim 2 and therefore inherit the same rejection.
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 2 - 16 are rejected under 35 U.S.C. 101 because the claimed invention is directed towards abstract ideas without significantly more.
Regarding claims 2 - 6:
According to the first step (Step 1) of the 101 analysis, claims 2 - 6 are directed to a system (manufacture) and falls within one of the four statutory categories (i.e., process, machine, manufacture, or composition of matter).
Regarding claim 2:
In the next step (Step 2A, prong 1) of the analysis, the limitations of:
assign each decision node in a tree-based decision model to an adverse action code, the tree-based decision model using one or more factors to determine a fraud score for a transaction;
assign a probability of risk for each adverse action code;
determine, for the tree-based decision model, a difference in the probability of risk between child nodes and respective parent nodes beginning with a cell in the tree-based decision model associated with the probability of risk for the transaction by subtracting the probability risk associated with a parent node from the probability risk associated with a child parent node;
for each of the decision nodes having an adverse action code, associated with the one or more factors used to determine the fraud score for the transaction update the probability of risk based on the difference;
determine a parent decision node associated with a greatest positive difference in risk;
determine the adverse action code associated with the determined parent decision node;
associate the determined adverse action code with a highest contributing factor of the one or more factors affecting the fraud score for the transaction;
The above limitations, under the broadest reasonable interpretation, the above limitations are process steps that cover mental processes including an observation, evaluation, judgment or opinion that could be performed in the mind or with the aid of pencil and paper but for the recitation of a generic computer component. If a claim, under its broadest reasonable interpretation, covers a mental process but for the recitation of generic computer components, then it falls within the “Mental Process” grouping of abstract ideas.
In the next step (Step 2A, prong 2) of the analysis, the limitations:
A risk determination system, the risk determination system comprising: a non-transitory data storage configured to store computer executable instructions for a risk determination system;
a hardware processor programmed to execute the computer executable instructions in the non-transitory data storage to cause the risk determination system to:
and populate one or more templates with adverse action code information;
and a client computing device comprising one or more client computing applications and a user interface, the one or more client computing applications configured to receive the populated one or more templates.
The above limitations are considered to be additional elements and it does not integrate the abstract idea into a practical application because the additional element is recited so generically (no details whatsoever are provided other than that it is a risk determination system that comprises a non-transitory data storage configured to store computer executable instructions for a risk determination system; a hardware processor programmed to execute the computer executable instructions in the non-transitory data storage to cause the risk determination system to: populate one or more templates with adverse action code information; and a client computing device comprising one or more client computing applications and a user interface, the one or more client computing applications configured to receive the populated one or more templates) that it represents no more than mere instructions to apply the judicial exception on a computer. As discussed in MPEP 2106.05(f), mere instructions to implement an abstract idea on a computer as a tool to perform an abstract idea is not indicative of integration into a practical application.
In the same step (Step 2A, prong 2) of the analysis, the limitation of:
cause the client computing device to display the adverse action code information on the user interface.
is considered to be an additional element and as recited represents insignificant extra-solution activity that is data output, because it is a mere nominal or tangential addition to the claim and is therefore not indicative of integration into a practical application. See MPEP 2106.05(g).
In the last step (Step 2B), the additional element does not amount to significantly more than the judicial exceptions. As explained with respect to Step 2A Prong Two, a risk determination system that comprises a non-transitory data storage configured to store computer executable instructions for a risk determination system; a hardware processor programmed to execute the computer executable instructions in the non-transitory data storage to cause the risk determination system to: populate one or more templates with adverse action code information; and a client computing device comprising one or more client computing applications and a user interface, the one or more client computing applications configured to receive the populated one or more templates is at best the equivalent of merely adding the words “apply it” to the judicial exception. See MPEP 2106.05(f). Mere instructions to apply an exception cannot provide an inventive concept and does not amount to significantly more than the judicial exception.
In the same step (Step 2B), the limitation of: cause the client computing device to display the adverse action code information on the user interface, amounts to insignificant extra solution activity because it is a mere nominal or tangential addition to the claim, amounting to mere data output (see MPEP 2106.05(g)). The courts have similarly found limitations directed to displaying a result, recited at a high level of generality, to be well-understood, routine, and conventional. See (MPEP 2106.05(d)(II), "presenting offers and gathering statistics.", “determining an estimated outcome and setting a price”). These limitations therefore remain insignificant extra-solution activity even upon reconsideration, and do not amount to significantly more. Even when considered in combination, these additional elements represent mere instructions to apply an exception and insignificant extra-solution activity, which cannot provide an inventive concept. The claim is not patent eligible.
Regarding claim 3:
In the next step (Step 2A, prong 2) of the analysis, the limitation:
wherein the tree-based decision model comprises at least one of: a random forest model or a gradient boosted model.
is considered to be an additional element and it does not integrate the abstract idea into a practical application because the additional element is recited so generically (no details whatsoever are provided other than that the risk determination system wherein the tree-based decision model comprises at least one of: a random forest model or a gradient boosted model) that it represents no more than mere instructions to apply the judicial exception on a computer. As discussed in MPEP 2106.05(f), mere instructions to implement an abstract idea on a computer as a tool to perform an abstract idea is not indicative of integration into a practical application.
In the last step (Step 2B) of the analysis, the additional element does not amount to significantly more than the judicial exceptions. As explained with respect to Step 2A Prong Two, risk determination system wherein the tree-based decision model comprises at least one of: a random forest model or a gradient boosted model is at best the equivalent of merely adding the words “apply it” to the judicial exception. See MPEP 2106.05(f). Mere instructions to apply an exception cannot provide an inventive concept and does not amount to significantly more than the judicial exception. The claim is not patent eligible.
Regarding claim 4:
In the step (Step 2A, prong 1) of the analysis, the limitation:
wherein parent decision nodes associated with differences in the probability of risk that are equal to zero or negative are not considered for the determining a parent decision node associated with the greatest difference in risk.
under the broadest reasonable interpretation, the above limitations is a step that covers mental processes including an observation, evaluation, judgment or opinion that could be performed in the mind or with the aid of pencil and paper but for the recitation of a generic computer component. If a claim, under its broadest reasonable interpretation, covers a mental process but for the recitation of generic computer components, then it falls within the “Mental Process” grouping of abstract ideas.
In the next step (Step 2A, prong 2) of the analysis, it does not integrate into a practical application because it does not add any additional elements that integrate the abstract idea into practical application.
In the last step (Step 2B) of the analysis, it does not add any additional elements that amount to significantly more than the abstract idea and thus fails to add an inventive concept. The claim is not patent eligible.
Regarding claim 5:
In the step (Step 2A, prong 1) of the analysis, the limitation:
wherein an absolute value of the difference in the probability of risk between child nodes and respective parent nodes is used to update the probability of risk.
under the broadest reasonable interpretation, the above limitations is a step that covers mental processes including an observation, evaluation, judgment or opinion that could be performed in the mind or with the aid of pencil and paper but for the recitation of a generic computer component. If a claim, under its broadest reasonable interpretation, covers a mental process but for the recitation of generic computer components, then it falls within the “Mental Process” grouping of abstract ideas.
In the next step (Step 2A, prong 2) of the analysis, it does not integrate into a practical application because it does not add any additional elements that integrate the abstract idea into practical application.
In the last step (Step 2B) of the analysis, it does not add any additional elements that amount to significantly more than the abstract idea and thus fails to add an inventive concept. The claim is not patent eligible.
Regarding claim 6:
In the step (Step 2A, prong 1) of the analysis, the limitations:
determine a next decision node associated with a next greatest difference in risk, the next greatest difference in risk being less than the greatest difference in risk and greater than other differences in risk that are associated with other decision nodes;
calculate the adverse action code associated with the next decision node;
and associate the calculated adverse action code with a next contributing factor of the one or more factors affecting the fraud score for the transaction.
under the broadest reasonable interpretation, the above limitations is a step that covers mental processes including an observation, evaluation, judgment or opinion that could be performed in the mind or with the aid of pencil and paper but for the recitation of a generic computer component. If a claim, under its broadest reasonable interpretation, covers a mental process but for the recitation of generic computer components, then it falls within the “Mental Process” grouping of abstract ideas.
In the next step (Step 2A, prong 2) of the analysis, it does not integrate into a practical application because it does not add any additional elements that integrate the abstract idea into practical application.
In the last step (Step 2B) of the analysis, it does not add any additional elements that amount to significantly more than the abstract idea and thus fails to add an inventive concept. The claim is not patent eligible.
Regarding claims 7 - 11:
According to the first step (Step 1) of the 101 analysis, claims 7 - 11 are directed to a computer-implemented method (process) and falls within one of the four statutory categories (i.e., process, machine, manufacture, or composition of matter).
Regarding claim 7:
In the next step (Step 2A, prong 1) of the analysis, the limitations of:
assigning each decision node in a tree-based decision model to an adverse action code, the tree-based decision model using one or more factors to determine a fraud score for a transaction;
assigning a probability of risk for each adverse action code;
determining, for the tree-based decision model, a difference in the probability of risk between child nodes and respective parent nodes beginning with a cell in the tree-based decision model associated with the probability of risk for the transaction by subtracting the probability risk associated with a parent node from the probability risk associated with a respective child node;
for each of the decision nodes having an adverse action code associated with the one or more factors used to determine the fraud score for the transaction, updating the probability of risk based on the difference;
determining a parent decision node associated with a greatest positive difference in risk;
determining the adverse action code associated with the determined parent decision node;
associating the determined adverse action code with a highest contributing factor of the one or more factors affecting the fraud score for the transaction;
The above limitations, under the broadest reasonable interpretation, the above limitations are process steps that cover mental processes including an observation, evaluation, judgment or opinion that could be performed in the mind or with the aid of pencil and paper but for the recitation of a generic computer component. If a claim, under its broadest reasonable interpretation, covers a mental process but for the recitation of generic computer components, then it falls within the “Mental Process” grouping of abstract ideas.
In the next step (Step 2A, prong 2) of the analysis, the limitations:
A computer-implemented method for determining action codes in a tree- based decision model, the computer-implemented method comprising, as implemented by one or more computing devices within a risk determination system configured with specific executable instructions:
populating one or more templates with adverse action code information;
The above limitations are considered to be additional elements and it does not integrate the abstract idea into a practical application because the additional element is recited so generically (no details whatsoever are provided other than that it is a computer-implemented method for determining action codes in a tree- based decision model, the computer-implemented method comprising, as implemented by one or more computing devices within a risk determination system configured with specific executable instructions and populating one or more templates with adverse action code information) that it represents no more than mere instructions to apply the judicial exception on a computer. As discussed in MPEP 2106.05(f), mere instructions to implement an abstract idea on a computer as a tool to perform an abstract idea is not indicative of integration into a practical application.
In the same step (Step 2A, prong 2) of the analysis, the limitation of:
receiving at a client computing device the populated one or more templates;
is considered to be an additional element and as recited represent insignificant extra-solution activity because it is mere data gathering. See MPEP 2106.05(g), discussing limitations that the Federal Circuit has considered to be insignificant extra-solution activity.
In the same step (Step 2A, prong 2) of the analysis, the limitation of:
displaying the adverse action code information on a user interface associated with the client computing device.
is considered to be an additional element and as recited represents insignificant extra-solution activity that is data output, because it is a mere nominal or tangential addition to the claim and is therefore not indicative of integration into a practical application. See MPEP 2106.05(g).
In the last step (Step 2B), the additional element does not amount to significantly more than the judicial exceptions. As explained with respect to Step 2A Prong Two, a computer-implemented method for determining action codes in a tree- based decision model, the computer-implemented method comprising, as implemented by one or more computing devices within a risk determination system configured with specific executable instructions and populating one or more templates with adverse action code information is at best the equivalent of merely adding the words “apply it” to the judicial exception. See MPEP 2106.05(f). Mere instructions to apply an exception cannot provide an inventive concept and does not amount to significantly more than the judicial exception.
In the same step (Step 2B), the limitation of: receiving at a client computing device the populated one or more templates, which is recited at a high level of generality and amounts to extra-solution activity of receiving data i.e. pre-solution activity of gathering data for use in the claimed process. The courts have found limitations directed to obtaining information electronically, recited at a high level of generality, to be well-understood, routine, and conventional (see MPEP 2106.05(d)(II), “receiving or transmitting data over a network”, "electronic record keeping," and "storing and retrieving information in memory"). These limitations therefore remain insignificant extra-solution activity even upon reconsideration, and do not amount to significantly more.
In the same step (Step 2B), the limitation of: displaying the adverse action code information on a user interface associated with the client computing device, amounts to insignificant extra solution activity because it is a mere nominal or tangential addition to the claim, amounting to mere data output (see MPEP 2106.05(g)). The courts have similarly found limitations directed to displaying a result, recited at a high level of generality, to be well-understood, routine, and conventional. See (MPEP 2106.05(d)(II), "presenting offers and gathering statistics.", “determining an estimated outcome and setting a price”). These limitations therefore remain insignificant extra-solution activity even upon reconsideration, and do not amount to significantly more. Even when considered in combination, these additional elements represent mere instructions to apply an exception and insignificant extra-solution activity, which cannot provide an inventive concept. The claim is not patent eligible.
Regarding claim 8:
In the next step (Step 2A, prong 2) of the analysis, the limitation:
wherein the tree-based decision model comprises at least one of: a random forest model or a gradient boosted model.
is considered to be an additional element and it does not integrate the abstract idea into a practical application because the additional element is recited so generically (no details whatsoever are provided other than that the computer-implemented method uses the tree-based decision model comprises at least one of: a random forest model or a gradient boosted model) that it represents no more than mere instructions to apply the judicial exception on a computer. As discussed in MPEP 2106.05(f), mere instructions to implement an abstract idea on a computer as a tool to perform an abstract idea is not indicative of integration into a practical application.
In the last step (Step 2B) of the analysis, the additional element does not amount to significantly more than the judicial exceptions. As explained with respect to Step 2A Prong Two, the computer-implemented method wherein the tree-based decision model comprises at least one of: a random forest model or a gradient boosted model is at best the equivalent of merely adding the words “apply it” to the judicial exception. See MPEP 2106.05(f). Mere instructions to apply an exception cannot provide an inventive concept and does not amount to significantly more than the judicial exception. The claim is not patent eligible.
Regarding claim 9:
In the step (Step 2A, prong 1) of the analysis, the limitation:
wherein parent decision nodes associated with differences in the probability of risk that are equal to zero or negative are not considered for determining a parent decision node associated with the greatest difference in risk.
under the broadest reasonable interpretation, the above limitations is a step that covers mental processes including an observation, evaluation, judgment or opinion that could be performed in the mind or with the aid of pencil and paper but for the recitation of a generic computer component. If a claim, under its broadest reasonable interpretation, covers a mental process but for the recitation of generic computer components, then it falls within the “Mental Process” grouping of abstract ideas.
In the next step (Step 2A, prong 2) of the analysis, it does not integrate into a practical application because it does not add any additional elements that integrate the abstract idea into practical application.
In the last step (Step 2B) of the analysis, it does not add any additional elements that amount to significantly more than the abstract idea and thus fails to add an inventive concept. The claim is not patent eligible.
Regarding claim 10:
In the step (Step 2A, prong 1) of the analysis, the limitation:
wherein an absolute value of the difference in the probability of risk between child nodes and respective parent nodes is used to update the probability of risk.
under the broadest reasonable interpretation, the above limitations is a step that covers mental processes including an observation, evaluation, judgment or opinion that could be performed in the mind or with the aid of pencil and paper but for the recitation of a generic computer component. If a claim, under its broadest reasonable interpretation, covers a mental process but for the recitation of generic computer components, then it falls within the “Mental Process” grouping of abstract ideas.
In the next step (Step 2A, prong 2) of the analysis, it does not integrate into a practical application because it does not add any additional elements that integrate the abstract idea into practical application.
In the last step (Step 2B) of the analysis, it does not add any additional elements that amount to significantly more than the abstract idea and thus fails to add an inventive concept. The claim is not patent eligible.
Regarding claim 11:
In the step (Step 2A, prong 1) of the analysis, the limitations:
determining a next decision node associated with a next greatest difference in risk, the next greatest difference in risk being less than the greatest difference in risk and greater than other differences in risk that are associated with other decision nodes;
calculating the adverse action code associated with the next decision node;
and associating the calculated adverse action code with a next contributing factor of the one or more factors affecting the fraud score for the transaction.
under the broadest reasonable interpretation, the above limitations is a step that covers mental processes including an observation, evaluation, judgment or opinion that could be performed in the mind or with the aid of pencil and paper but for the recitation of a generic computer component. If a claim, under its broadest reasonable interpretation, covers a mental process but for the recitation of generic computer components, then it falls within the “Mental Process” grouping of abstract ideas.
In the next step (Step 2A, prong 2) of the analysis, it does not integrate into a practical application because it does not add any additional elements that integrate the abstract idea into practical application.
In the last step (Step 2B) of the analysis, it does not add any additional elements that amount to significantly more than the abstract idea and thus fails to add an inventive concept. The claim is not patent eligible.
Regarding claims 12 - 16:
According to the first step (Step 1) of the 101 analysis, claims 12 - 16 are directed to a Non-transitory computer readable medium storing computer executable instructions thereon, the computer executable instructions when executed cause a risk determination system to at least (manufacture) and falls within one of the four statutory categories (i.e., process, machine, manufacture, or composition of matter).
Regarding claim 12:
In the next step (Step 2A, prong 1) of the analysis, the limitations of:
assign each decision node in a tree-based decision model to an adverse action code, the tree-based decision model using one or more factors to determine a fraud score for a transaction;
assign a probability of risk for each adverse action code;
determine, for the tree-based decision model, a difference in the probability of risk between child nodes and respective parent nodes beginning with a cell in the tree-based decision model associated with the probability of risk for the transaction by subtracting the probability risk associated with a parent node from the probability risk associated with a respective child node;
for each of the decision nodes having an adverse action code, associated with the one or more factors used to determine the fraud score for the transaction update the probability of risk based on the difference;
determine a parent decision node associated with a greatest positive difference in risk;
determine the adverse action code associated with the determined parent decision node;
associate the determined adverse action code with a highest contributing factor of the one or more factors affecting the fraud score for the transaction;
The above limitations, under the broadest reasonable interpretation, the above limitations are process steps that cover mental processes including an observation, evaluation, judgment or opinion that could be performed in the mind or with the aid of pencil and paper but for the recitation of a generic computer component. If a claim, under its broadest reasonable interpretation, covers a mental process but for the recitation of generic computer components, then it falls within the “Mental Process” grouping of abstract ideas.
In the next step (Step 2A, prong 2) of the analysis, the limitations:
Non-transitory computer readable medium storing computer executable instructions thereon, the computer executable instructions when executed cause a risk determination system to at least:
and populate one or more templates with adverse action code information;
The above limitations are considered to be additional elements and it does not integrate the abstract idea into a practical application because the additional element is recited so generically (no details whatsoever are provided other than that it is a Non-transitory computer readable medium storing computer executable instructions thereon, the computer executable instructions when executed cause a risk determination system to at least: populate one or more templates with adverse action code information; and a client computing device comprising one or more client computing applications and a user interface, the one or more client computing applications configured to receive the populated one or more templates) that it represents no more than mere instructions to apply the judicial exception on a computer. As discussed in MPEP 2106.05(f), mere instructions to implement an abstract idea on a computer as a tool to perform an abstract idea is not indicative of integration into a practical application.
In the same step (Step 2A, prong 2) of the analysis, the limitation of:
receiving at a client computing device the populated one or more templates;
is considered to be an additional element and as recited represent insignificant extra-solution activity because it is mere data gathering. See MPEP 2106.05(g), discussing limitations that the Federal Circuit has considered to be insignificant extra-solution activity.
In the same step (Step 2A, prong 2) of the analysis, the limitation of:
display the adverse action code information on the user interface associated with the client computing device.
is considered to be an additional element and as recited represents insignificant extra-solution activity that is data output, because it is a mere nominal or tangential addition to the claim and is therefore not indicative of integration into a practical application. See MPEP 2106.05(g).
In the last step (Step 2B), the additional element does not amount to significantly more than the judicial exceptions. As explained with respect to Step 2A Prong Two Non-transitory computer readable medium storing computer executable instructions thereon, the computer executable instructions when executed cause a risk determination system to at least: populate one or more templates with adverse action code information; is at best the equivalent of merely adding the words “apply it” to the judicial exception. See MPEP 2106.05(f). Mere instructions to apply an exception cannot provide an inventive concept and does not amount to significantly more than the judicial exception.
In the same step (Step 2B), the limitation of: receiving at a client computing device the populated one or more templates, which is recited at a high level of generality and amounts to extra-solution activity of receiving data i.e. pre-solution activity of gathering data for use in the claimed process. The courts have found limitations directed to obtaining information electronically, recited at a high level of generality, to be well-understood, routine, and conventional (see MPEP 2106.05(d)(II), “receiving or transmitting data over a network”, "electronic record keeping," and "storing and retrieving information in memory"). These limitations therefore remain insignificant extra-solution activity even upon reconsideration, and do not amount to significantly more.
In the same step (Step 2B), the limitation of: display the adverse action code information on the user interface associated with the client computing device, amounts to insignificant extra solution activity because it is a mere nominal or tangential addition to the claim, amounting to mere data output (see MPEP 2106.05(g)). The courts have similarly found limitations directed to displaying a result, recited at a high level of generality, to be well-understood, routine, and conventional. See (MPEP 2106.05(d)(II), "presenting offers and gathering statistics.", “determining an estimated outcome and setting a price”). These limitations therefore remain insignificant extra-solution activity even upon reconsideration, and do not amount to significantly more. Even when considered in combination, these additional elements represent mere instructions to apply an exception and insignificant extra-solution activity, which cannot provide an inventive concept. The claim is not patent eligible.
Regarding claim 13:
In the next step (Step 2A, prong 2) of the analysis, the limitation:
wherein the tree-based decision model comprises at least one of: a random forest model or a gradient boosted model.
is considered to be an additional element and it does not integrate the abstract idea into a practical application because the additional element is recited so generically (no details whatsoever are provided other than that the risk determination system wherein the tree-based decision model comprises at least one of: a random forest model or a gradient boosted model) that it represents no more than mere instructions to apply the judicial exception on a computer. As discussed in MPEP 2106.05(f), mere instructions to implement an abstract idea on a computer as a tool to perform an abstract idea is not indicative of integration into a practical application.
In the last step (Step 2B) of the analysis, the additional element does not amount to significantly more than the judicial exceptions. As explained with respect to Step 2A Prong Two, risk determination system wherein the tree-based decision model comprises at least one of: a random forest model or a gradient boosted model is at best the equivalent of merely adding the words “apply it” to the judicial exception. See MPEP 2106.05(f). Mere instructions to apply an exception cannot provide an inventive concept and does not amount to significantly more than the judicial exception. The claim is not patent eligible.
Regarding claim 14:
In the step (Step 2A, prong 1) of the analysis, the limitation:
wherein parent decision nodes associated with differences in the probability of risk that are equal to zero or negative are not considered for determining a parent decision node associated with the greatest difference in risk.
under the broadest reasonable interpretation, the above limitations is a step that covers mental processes including an observation, evaluation, judgment or opinion that could be performed in the mind or with the aid of pencil and paper but for the recitation of a generic computer component. If a claim, under its broadest reasonable interpretation, covers a mental process but for the recitation of generic computer components, then it falls within the “Mental Process” grouping of abstract ideas.
In the next step (Step 2A, prong 2) of the analysis, it does not integrate into a practical application because it does not add any additional elements that integrate the abstract idea into practical application.
In the last step (Step 2B) of the analysis, it does not add any additional elements that amount to significantly more than the abstract idea and thus fails to add an inventive concept. The claim is not patent eligible.
Regarding claim 15:
In the step (Step 2A, prong 1) of the analysis, the limitation:
wherein an absolute value of the difference in the probability of risk between child nodes and respective parent nodes is used to update the probability of risk.
under the broadest reasonable interpretation, the above limitations is a step that covers mental processes including an observation, evaluation, judgment or opinion that could be performed in the mind or with the aid of pencil and paper but for the recitation of a generic computer component. If a claim, under its broadest reasonable interpretation, covers a mental process but for the recitation of generic computer components, then it falls within the “Mental Process” grouping of abstract ideas.
In the next step (Step 2A, prong 2) of the analysis, it does not integrate into a practical application because it does not add any additional elements that integrate the abstract idea into practical application.
In the last step (Step 2B) of the analysis, it does not add any additional elements that amount to significantly more than the abstract idea and thus fails to add an inventive concept. The claim is not patent eligible.
Regarding claim 16:
In the step (Step 2A, prong 1) of the analysis, the limitations:
determine a next decision node associated with a next greatest difference in risk, the next greatest difference in risk being less than the greatest difference in risk and greater than other differences in risk that are associated with other decision nodes;
calculate the adverse action code associated with the next decision node;
and associate the calculated adverse action code with a next contributing factor of the one or more factors affecting the fraud score for the transaction.
under the broadest reasonable interpretation, the above limitations is a step that covers mental processes including an observation, evaluation, judgment or opinion that could be performed in the mind or with the aid of pencil and paper but for the recitation of a generic computer component. If a claim, under its broadest reasonable interpretation, covers a mental process but for the recitation of generic computer components, then it falls within the “Mental Process” grouping of abstract ideas.
In the next step (Step 2A, prong 2) of the analysis, it does not integrate into a practical application because it does not add any additional elements that integrate the abstract idea into practical application.
In the last step (Step 2B) of the analysis, it does not add any additional elements that amount to significantly more than the abstract idea and thus fails to add an inventive concept. The claim is not patent eligible.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2, 3, 5-8, 10-13, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Robida et al (US 7711636 B2) in view of Xiong et al (US 20160127319 A1) and further in view of Moore et al (Cached Sufficient Statistics for Efficient Machine Learning with Large Datasets, 1998).
Regarding claim 2:
Robida teaches: A risk determination system, the risk determination system comprising: a non-transitory data storage configured to store computer executable instructions for a risk determination system ([Column 4, Lines 38-47] The computing system 100 includes, for example, a personal computer that is IBM, Macintosh, or Linux/Unix compatible. In one embodiment, the exemplary computing system 100 includes a central processing unit ("CPU") 105, which may include a conventional microprocessor. The computing system 100 further includes a memory 130, such as random access memory ("RAM") for temporary storage of information and a read only memory ("ROM") for permanent storage of information, and a mass storage device 120, such as a hard drive, diskette, or optical media storage device);
a hardware processor programmed to execute the computer executable instructions in the non-transitory data storage to cause the risk determination system to ([Column 4, Lines 38-42] The computing system 100 includes, for example, a personal computer that is IBM, Macintosh, or Linux/Unix compatible. In one embodiment, the exemplary computing system 100 includes a central processing unit ("CPU") 105, which may include a conventional microprocessor):
assign each decision node in a tree-based decision model to an adverse action code ([Column 20, Lines 16-27] Although the embodiment of FIG. 16 begins the process of allocating adverse action codes at the final segment to which the individual is assigned and moves upward through the segmentation hierarchy, it is understood that the process of allocating adverse action codes to segments may be performed in the opposite direction, or in any other order. In one embodiment, adverse action code allotment begins at the first segmentation level, with the entire population segment 310 (FIG. 7), for example, and then moves to the children nodes, such as to the previous bankruptcy segment 410, then to the higher risk segment 510, and then to the higher bankruptcy risk segment 610),
assign a probability of risk for each adverse action code ([Column 18, Lines 62-67] For example, an adverse action code for an individual assigned to the higher bankruptcy risk segment 610 (FIG. 7) may indicate that the individual was assigned to the higher bankruptcy risk segment. Additionally, the individual assigned to the higher bankruptcy risk segment 610 may also receive an adverse action code indicating that [column 19, Lines 1-2] the individual was assigned to a higher risk segment, for example, the higher risk segment 510);
determine, for the tree-based decision model, a difference in the probability of risk between child nodes and respective parent nodes beginning with a cell in the tree-based decision model associated with the probability of risk for the transaction ([Column 6, Lines 7-15] A segmentation structure may include multiple segments arranged in a tree configuration, wherein certain segments are parents, or children, of other segments. A segment hierarchy includes the segment to which an individual is assigned and each of the parent segments to the assigned segment. FIG. 7, described in detail below, illustrates a segmentation structure having multiple levels of segments to which individuals may be assigned. [Column 18, Lines 13-19] In certain embodiments, adverse action code may indicate that a final risk score is less than the maximum partly because of the segment, or segment hierarchy, to which the individual was assigned. However, for different individuals, the actual affect of being assigned in a particular segment or in a segment hierarchy on the final risk score may be significantly different. [Column 20, Lines 6-11] Thus, the process of determining a percentage drop of the final risk score due to a penalty for assignment to a particular segment and allotment of adverse action codes based on the determined percentage may be performed for each segment in the segmentation hierarchy for the individual. [Column 20, Lines 56-67] Continuing to a block 1720, an adverse action code related to being assigned to the previous bankruptcy segment is allotted if the ratio of the penalty for assignment to the previous bankruptcy segment to the difference between the highest available final risk score and the actual final risk score is larger than a predetermined ratio. In the example of FIG. 17, the penalty for assignment to the previous bankruptcy segment is 20 and the difference between the highest final risk score and the actual final risk score is 50 (for example, 100-50=50). Thus, the determined ratio is 40%. In this example, one adverse action code is allotted to indicate segmentation to the previous bankruptcy segment if the ratio is greater than [Column 21, Lines 1-3] 12.5%. Because the determined ratio of 40% is greater than 12.5%, an adverse action code is assigned to indicate segmentation to the previous bankruptcy segment);
for each of the decision nodes having an adverse action code, update the probability of risk based on the difference ([Column 20, Lines 34-52] FIG. 17 is one embodiment of a flowchart illustrating an exemplary process of allocating adverse action codes to various segments in a segment hierarchy. FIG. 17 also includes an example of application of the general formulas described in the flowchart using exemplary data related to an exemplary individual. In the example illustrated in FIG. 17, it is assumed that the highest final risk score possible for an individual is 100, the penalty for being assigned to the previous bankruptcy segment 410 (FIG. 7) is 20, and the penalty for assignment to the higher bankruptcy risk segment 610 is 15. Thus, in the example discuss