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 .
DETAILED ACTION
The following Non-Final office action is in response to applicant’s RCE with claims amendments/Remarks filed on 11/06/2025.
Priority Date: Prov. (10/02/2023).
Claim Status:
Amended claims:1, 8-10, and 17
Canceled Claims: 3, 7, 12,and 16
Added claims: 21-23, and 24
Pending claims : 1-2, 4-6, 8-11, 13-15, and 17-24
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 1-2, 4-6, 8-11, 13-15, and 17-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
In particular, claims are directed to a judicial exception (Abstract idea) without significantly more.
When considering subject matter eligibility under 35 U.S.C. 101, (Step-1) it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. (Step-2A) If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, (Step-2B) it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself.
Examples of abstract ideas grouping include: (a) Mental processes; (b) Certain methods of organizing human activities [ i. Fundamental Economic Practice; ii. Commercial or Legal Interaction; iii. Managing Personal behavior or Relations between People]; and (c) Mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. (2014).
Analysis is based on the 2019 Revised Patent Eligibility Guidance (2019 PEG)-(see MPEP § 2106.04(II) and 2106.04(d).
[Step-1] The claims are directed to a system/method/machine, which are a statutory category of invention.
Claim 1 (exemplary) recites a series of steps for Authorizing user device accessing account Fraud Prevention.
[Step-2A]-Prong 1:The claim 1 is then analyzed to determine whether it is directed to a judicial exception:
The claim 1 recites the limitations to:
receive, via a user …, a login request for an account associated with a user and a geolocation of the user…;
determine whether the geolocation of the user … falls outside of one or more first known customer geographic regions or one or more first known user device locations by:
retrieving (i) one or more known user device locations in which the user previously authenticated the user device, and (ii) a plurality of known customer geographic regions associated with the account from a database, and
comparing the geolocation of the user … against the one or more first known user device locations and the plurality of known customer geographic regions;
responsive to determining that the geolocation is not outside of the one or more first known customer geographic regions or the one or more first known user device locations, authorize the user … to access the account of the user based on the login request;
responsive to determining the geolocation of the user falls outside of the one or more first known customer geographic regions or the one or more first known user device locations:
select and transmit, via one or more machine learning models, one or more step-up authentication methods based on determined accessibility constraints associated with the geolocation of the user … and the login request;
receive, via the user …, first step-up authentication information using the one or more step-up authentication methods; and
responsive to determining that the first step-up authentication information matches a known first step-up authentication information, authorize the user … to access the account of the user.
The claimed method/system/machine simply describes series of steps for Authorizing user Device accessing Account Fraud Prevention.
These limitations, as drafted, are processes that, under its broadest reasonable interpretation (BRI), covers performance of the limitations via human commercial or business or transactional activities/interactions, but for the recitation of generic computer components. That is, other than reciting one or more processors, devices and computer network nothing in the claim precludes the limitations from practically being performed by organizing human business activity. For example, without the structure elements language, the claim encompasses the activities that can be performed manually between the users and a third party. These limitations are directed to an abstract idea because they are business interaction/sale activity that falls within the enumerated group of “certain methods of organizing human activity” in the 2019 PEG.
[Step-2A]-Prong 2:
Next, the claim is analyzed to determine if it is integrated into a practical application. The claim recites additional limitation of using one or more servers/processors, devices and computer network to perform the steps. The processor in the steps is recited at a high level of generality, i.e., as a generic processor performing a generic computer function of processing data. This generic processor limitation is no more than mere instructions to apply the exception using generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to the abstract idea.
[Step-2B]
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept).
As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a processor (using the processor as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the processor at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at or provide an inventive concept.
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea, and the claim is not patent eligible. The analysis above applies to all statutory categories of invention including independent claims 8, and 17.
Furthermore, the dependent claims 2, 4-6, 9-11, 13-15, and 18-24 do not resolve the issues raised in the independent claims. The dependent claims 2, 4-6, 9-11, 13-15, and 18-24 are directed towards:
using claims (2, 9), one or more step-up authentication methods comprise verification with a near field communication enabled card, mobile application verification, email verification, or verification with NFC enabled card receiving portion of the user device, and
claims (4-6,9-11, 13-15, 19-20), silent mobile authentication, the silent mobile authentication comprising: receiving a telephone number of the user device, and determining whether the telephone number matches a phone number associated with the user; sending an email to an email address of the user, the email comprising a request to authorize access of the account by the user device; receiving a response from the email address to the request to authorize access of the account; responsive to determining that the response denies access of the account by the user device, deny the user device to access to the account of the user; and responsive to determining that the response authorizes access of the account by the user device, authorize the user device to access the account of the user; and the user device is authorized to access the account of the user for a predetermined period of time, and
claims (21-24 [new]), wherein receiving the geolocation of the user device comprises estimating the location of the user device using an internet protocol (IP) address of the user device, GPS, and one or more machine learning models.
These limitations are also part of the abstract idea identified in claim 1, and are similarly rejected under same rationale.
Accordingly, the dependent claims 2, 4-6, 9-11, 13-15, and 18-24 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Claim Rejections - 35 USC § 103
The following is a quotation of AIA 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.
Claims 1-2, 4-6, 8-11, 13-15, and 17-24 are rejected under 35 U.S.C. 103 as being unpatentable over Brian Piel et al (US 20200193443 A1). in views of Jim Newman et al (US 2012/0030083 A1), Michael H. Chang et al (US 11,562,362 B1).
Ref claim 1, Piel discloses a fraud prevention system comprising:
one or more processors; and memory in communication with the one or more processors and storing instructions that, when executed by the one or more processors, are configured to cause the fraud prevention system (Abst: An adoptive Authentication [AA] computer device…) to:
receive, via a user device, a login request for an account associated with a user and a geolocation of the user device (para [0005]; via An Adoptive Authentication [AA] computer device…transaction authentication services …a transaction geographic location… [0054]; via in supervised machine learning, a processing element…geolocation information…or other data…);
[[determine whether the geolocation of the user … falls outside of one or more first known customer geographic regions or one or more first known user device locations by: retrieving (i) one or more known user device locations in which the user previously authenticated the user device, and (ii) a plurality of known customer geographic regions associated with the account from a database, and comparing the geolocation of the user device against the one or more first known user device locations and the plurality of known customer geographic regions;]]
responsive to determining that the geolocation is not outside of the one or more first known customer geographic regions or the one or more first known user device locations, authorize the user device to access the account of the user based on the login request; responsive to determining the geolocation of the user falls outside of the one or more first known customer geographic regions or the one or more first known user device locations (para [0027]; via an Adoptive Authentication [AA] computer device…cardholder authentication types…a transaction geographic location…authentication request…);
select and transmit, via one or more machine learning models, [[one or more step-up authentication methods based on determined accessibility constraints ]] associated with the geolocation of the user device and the login request (para [0054]; via in supervised machine learning, a processing element…geolocation information…or other data…);
receive, via the user device. first step-up authentication information using one or more step-up authentication methods (para [0027]; via an Adoptive Authentication [AA] computer device…cardholder authentication types…a transaction geographic location…authentication request of the candidate cardholder authentication type…[0028]; via data matches transaction amount range….); and
responsive to determining that the first step-up authentication information matches a known first step-up authentication information, authorize the user device to access the account of the user (para [0035]; via the AA computer device…a risk-based decision [RBD]…may score the transaction as a low risk…device information, account information …cardholder to further authenticate…[0036]; via an authentication challenge…as a 3-D SECURE protocol [3DS]…cardholder account and transmits an authentication response…[0040]; via …the authentication request may be based on transaction amount… [0069]; via …a system or network for the transfer of money…[0073], Fig.1, an AA computer system 100, and an AA computer device 110… a multi-party payment card processing system ……[0114]; via AA computer device 110 transmit the one or more authentications to the client system 220 [Fig.2]…).
Piel does not explicitly disclose the step to determine whether the geolocation of the user device falls outside of one or more first known customer geographic regions or one or more first known user device locations by: retrieving (i) one or more known user device locations in which the user previously authenticated the user device, and (ii) a plurality of known customer geographic regions associated with the account from a database, and comparing the geolocation of the user device against the one or more first known user device locations and the plurality of known customer geographic regions.
However, Newman being in the same field of invention discloses the step to determine whether the geolocation of the user … falls outside of one or more first known customer geographic regions or one or more first known user device locations by: retrieving (i) one or more known user device locations in which the user previously authenticated the user device, and (ii) a plurality of known customer geographic regions associated with the account from a database, and comparing the geolocation of the user device against the one or more first known user device locations and the plurality of known customer geographic regions (para [0019];Fig.1; via an e-commerce system 100/merchants 60, customers 80 and a fraud detection service provider 90 [“FDSP”]…[0027], Fig. 2; via data depository…and customer devices…[0041]; via the geolocation…identified using an IP address…or may be provided by GPS incorporated into the customer devices 108A/B…include a country, region, city, latitude, longitude, and /or ZIP code identified using an IP address/attributes and properties of customer devices [implied determinng & comparing location-regions of user devices],…).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the features mentioned by Piel to include the disclosures as taught by Newman to facilitate fund transfer with Geo-location-regions of user device for Fraud Prevention.
Piel does not explicitly disclose the step of: one or more step-up authentication methods based on determined accessibility constraints.
However, Chang being in the same field of invention discloses the step of: one or more step-up authentication methods based on determined accessibility constraints (Col. 16, lines 37-69; Figs. 1-3 via Turning to a denied transaction process at 320…system 102 will, if applicable, transmit to the user device 104 a set of step-up authentication steps/ actions, taken by the user 20…).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the features mentioned by Piel to include the disclosures as taught by Chang to facilitate with step-up authentication method for fraud prevention.
Ref claim 2, Piel discloses the fraud prevention system of claim 1, wherein the one or more step-up authentication methods comprise verification with a near field communication enabled card, mobile application verification, email verification, or combinations thereof, and wherein the one or more step-up authentication methods comprise verification with the near field communication enabled card when the near field communication enabled card contacts a near field communication receiving portion of the user device (para [0069]; via …a system or network for the transfer of money…[0073], FIG.1, via an AA computer system 100, and an AA computer device 110… a multi-party payment card processing system [implied including NFC enabled cards]…[0114]; via AA computer device 110 transmit the one or more authentications to the client system 220 [FIG.2]…).
Claim 3 (Canceled).
Ref claim 4, Piel discloses the fraud prevention system of claim 2, wherein the one or more step-up authentication methods further comprise silent mobile authentication, the silent mobile authentication comprising: receiving a telephone number of the user device, and determining whether the telephone number matches a phone number associated with the user. (para [0073], Fig.1, an AA computer system 100, and an AA computer device 110… a multi-party payment card processing system …[0114]; via AA computer device 110 transmit the one or more authentications to the client system 220 [Fig.2]…).
Ref claim 5, Piel discloses the fraud prevention system of claim 2, wherein the one or more step-up authentication methods further comprise mobile application verification, the mobile application verification comprising: sending a notification to a known user device of the user, the notification comprising a request to authorize access of the account by the user device; receiving a response from the known user device to the request to authorize access of the account; responsive to determining that the response denies access of the account by the user device, deny the user device to access to the account of the user; and responsive to determining that the response authorizes access of the account by the user device, authorize the user device to access the account of the user (para [0036]; via an authentication challenge…as a 3-D SECURE protocol [3DS]…cardholder account and transmits an authentication response…[0040]; via …the authentication request may be based on transaction amount…[0114]; via AA computer device 110 transmit the one or more authentications to the client system 220 [Fig.2]…).
Ref claim 6, Piel discloses the fraud prevention system of claim 2, wherein the one or more step-up authentication methods further comprise email verification, the email verification comprising:
sending an email to an email address of the user, the email comprising a request to authorize access of the account by the user device; receiving a response from the email address to the request to authorize access of the account; responsive to determining that the response denies access of the account by the user device, deny the user device to access to the account of the user; and responsive to determining that the response authorizes access of the account by the user device, authorize the user device to access the account of the user (para [0036]; via an authentication challenge…as a 3-D SECURE protocol [3DS]…cardholder account and transmits an authentication response…[0040]; via …the authentication request may be based on transaction amount…[0114]; via AA computer device 110 transmit the one or more authentications to the client system 220 [Fig.2]…).
Claim 7 (Canceled).
Claim 8 [Amended] recites similar limitations to claim 1 and thus rejected using the same art and rationale in the rejection of claim 1 as set forth above.
Ref claim 9 [Amended], Piel discloses the fraud prevention system of claim 8, further comprising instructions configured to cause the system to:
receive, via the user device, a funds transfer request; determine whether the funds transfer request exceeds an amount threshold; responsive to determining that the funds transfer request exceeds the amount threshold: transmit a request for second step-up authentication information to the user device; receive, via the user device, the second step-up authentication information using the one or more step-up authentication methods; determine whether the second step-up authentication information matches known second step-up authentication information (para [0035]; via the AA computer device…a risk-based decision [RBD]…may score the transaction as a low risk…device information, account information …cardholder to further authenticate…); and
responsive to determining that the second step-up authentication information matches known second step-up authentication information, authorize the user device to transfer funds in the account of the user (para [0036]; via an authentication challenge…as a 3-D SECURE protocol [3DS]…cardholder account and transmits an authentication response…[0040]; via …the authentication request may be based on transaction amount…[0114]; via AA computer device 110 transmit the one or more authentications to the client system 220 [Fig.2]…).
Ref claim 10 [Amended], Piel discloses the fraud prevention system of claim 8, further comprising instructions configured to cause the system to:
determine whether a second step-up authentication method is required, wherein determining whether a second step-up authentication method is required comprises: receiving, via the user device, an action request; determining whether the action request is associated with additional step-up authentication; responsive to determining that the action request is associated with additional step-up authentication: transmitting a request for second step-up authentication information to the user device (para [0035]; via the AA computer device…a risk-based decision [RBD]…may score the transaction as a low risk…device information, account information …cardholder to further authenticate…);
receiving, via the user device, the second step-up authentication information using the one or more step-up authentication methods; determining whether the second step-up authentication information matches known second step-up authentication information; responsive to determining that the second step-up authentication information matches known second step-up authentication information, generating a score level based on the action request and the used step-up authentication method (para [0035]; via the AA computer device…a risk-based decision [RBD]…may score the transaction as a low risk…device information, account information …cardholder to further authenticate…);
determining whether to authorize the action request by comparing the score level to a predetermined threshold; responsive to determining that the score level is above the predetermined threshold, denying the action request; and responsive to determining that the score level is equal to or below the predetermined threshold, authorizing the action request (para [0036]; via an authentication challenge…as a 3-D SECURE protocol [3DS]…cardholder account and transmits an authentication response…[0040]; via …the authentication request may be based on transaction amount…[0114]; via AA computer device 110 transmit the one or more authentications to the client system 220 [Fig.2]…).
Claim 11 is rejected as per the reasons set forth in claim 2.
Claim 12 (Canceled)
Claims 13-15 are rejected as per the reasons set forth in claims 4-6 respectively.
Claim 16 (Canceled)
Ref claim 17 [Amended], Piel discloses a method for preventing fraud, comprising:
receiving a login request for an account associated with a user and a geolocation of a user device of the user; determining the geolocation of the user device falls outside of a known customer geographic region; determining, using one or more machine learning models, a security risk level of an action associated with the login request; transmitting a request for step-up authentication information to the user device;(as in Claim 1)
selecting, and transmitting, via the one or more machine learning models, one or more first step-up authentication methods from among one or more second step-up authentication methods, wherein the one or more machine learning models are trained to select the one or more first step-up authentication methods based on at least one of: (i) the geolocation of the user device, (ii) a country associated with the account, (iii) the login request, or (iv) the security risk level of the action associated with the login request (para [0005]; via An Adoptive Authentication [AA] computer device…transaction authentication services …a transaction geographic location… [0054]; via in supervised machine learning, a processing element…geolocation information…or other data…);
receiving step-up authentication information using the one or more first step-up authentication methods comprising at least silent mobile authentication; determining whether the step-up authentication information matches known step-up authentication information; and responsive to determining that the step-up authentication information matches known step-up authentication information, authorizing the user device to access the account of the user (as in claim 1).
Claim 18 is rejected as per the reasons set forth in claim 9.
Claims 19-20 are rejected as per the reasons set forth in claims 2-3 respectively.
Ref claims 21-22, Piel did not explicitly disclose the fraud prevention system of claim 1,
but Newman discloses, wherein receiving the geolocation of the user device comprises estimating the location of the user device using an internet protocol (IP) address of the user device, and further receiving a global positioning system (GPS) signal via the user device (para [0019]; Fig.1; via an e-commerce system 100/merchants 60, customers 80 and a fraud detection service provider 90 [“FDSP”]…[0027], Fig. 2; via data depository…and customer devices…[0041]; via the geolocation…identified using an IP address…or may be provided by GPS incorporated into the customer devices 108A/B…include a country, region, city, latitude, longitude, and /or ZIP code identified using an IP address/attributes and properties of customer devices,…).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the features mentioned by Piel to include the disclosures as taught by Newman to facilitate fund transfer with Geo-location-regions by GPS and IP address of user devices for Fraud Prevention.
Ref claim 23, Piel discloses the method of claim 17, wherein the one or more machine learning models are further trained to select the one or more first step-up authentications methods based on data representing successful and unsuccessful authentication methods (para [0005]; via An Adoptive Authentication [AA] computer device…transaction authentication services …a transaction geographic location…[0054]; via in supervised machine learning, a processing element…geolocation information…or other data …[0112]; via AA computer device 110 generates 712, a model /authentications for cardholder 120…).
Ref to claim 24, (New) discloses the fraud prevention system of claim 1, further comprising instructions configured to cause the fraud prevention system to:
responsive to authorizing the user device to access the account of the user: receive, via the user device, a funds transfer request; determine whether the funds transfer request exceeds an amount threshold; and responsive to determining that the funds transfer request exceeds the amount threshold: transmit a request for a second step-up authentication information to the user device; (para [0005]; via An Adoptive Authentication [AA] computer device…transaction authentication services …a transaction geographic location… [0054]; via in supervised machine learning, a processing element…geolocation information…or other data…);
receive, via the user device, the second step-up authentication information using the one or more step-up authentication methods; (as in claim 1);
determine whether the second step-up authentication information matches known second step-up authentication information; and responsive to determining that the second step-up authentication information matches known second step-up authentication information, authorize the user device to transfer funds into the account of the user…(para [0114]; via AA computer device 110 transmit the one or more authentications to the client system 220 [Fig.2]…).
Response to Arguments
Applicant's arguments filed on 11/06/2025 have been fully considered and they are deemed to be non-persuasive:
Response to Applicant’s arguments with respect to the 35 USC 103 rejection is addressed in the above rejection.
Applicant's arguments filed with respect to the 35 USC 101 rejection of the previous action have been fully considered but they are not persuasive.
Applicant argues further in substance that "The claims are Not Directed to an Abstract Idea and the claims Recite ‘Significantly More’ than abstract idea” and noted PEG-2019 [Step-2A-Prong One-Prong two & Step-2B].
Applicant also cited analogy with the court cases such as, Core Wireless, EnFish, Thales, Finjan and Berkheimer memo.
In addition to 101 rejections Applicant noted about 103 rejections with applied prior arts.
In response:
Examiner respectfully disagrees. Updated claim analysis as a whole including amended features are provided above/again based on the latest Revised Patent Eligibility Guidance [2019-PEG>Step 2A-Prong 1 & Prong 2-Step-2B].
APPLICANT’s REMARKS:
“As of the January 27, 2025 Office Action, Claims 1-20 are pending in the Application, and all are rejected. Applicant thanks the Examiner for the careful consideration and examination given to the Application. Applicant submits this Response solely to facilitate prosecution….;…;…;
After entry of this Response, Claims 1-2, 4-6, 8-11, 13-15, and 17-24 are pending in the Application, with Claims 1, 8-10, and 17 amended, original Claims 4-6, 13-15, and 18-20, and Claims 2, 11, and 21-23 previously presented. Claim 16 is cancelled without prejudice or disclaimer and Claim 24 is newly added. Applicant amends certain claims in this Response to clarify the currently claimed embodiments of the invention….;…;…;
Applicant believes that the Application is allowable for at least the following reasons.”(Noted).
Examiner Interview:
“Applicant thanks Examiner Ali for the interview conducted on August 11, 2025.…;…;…;…should any questions remains.” (Noted).
All Claims… under 35 U.S.C. § 101:
Applicant argues, that, “Regarding the rejection of Claims 1-20 as allegedly being directed to an abstract idea, and specifically falling into the category of a "method of organizing human activity" (Office Action p. 5), Applicant respectfully disagrees and submits that Claims 1-20 , 4-6, 8-11, and 13-23 are directed to patent eligible subject matter…;…;…;…;
Applicant submits that pending claims …;… judicial exception. Accordingly, Applicant respectfully requests withdrawal of the § 101 rejection of Claims 1-20.”
A. Claims 1-20 … and 13-23 …Under USPTO Step 2A:
“Because They Do Not Recite a Judicial Exception…;…;…;
1. Claims 1-2…13-23 Are Patent Eligible Because They Do Not Fall Under the Groupings of Abstract Idea Enumerated in the 2019 Revised Guidelines….;…; Court cases, such as, Core Wireless, EnFish, Thales, Finjan, etc. …;…;…;…;
A somewhat recent decision of the Board is instructive in this case. In Ex Parte Fanaru, the Board overturned an examiner's rejection of claims based on patent eligibility. Appeal No….;…;…;…;
2. Claims 1-2…13-23 Are Patent Eligible Because They Recite a Practical Application. Even assuming arguendo that the instant claims do fall into one of the enumerated groupings of abstract ideas, which Applicant does not concede, …;…;
For at least the above reasons, Claims 1-2…13-23 are patent eligible at either Prong One or Prong Two of the 2019 PEG and October Update.”
In Response A: Examiner Disagrees:
Under Alice-Step (2A)-Prong 1: A method for deriving financial information from authenticating accounts for funds transfer is akin to the abstract idea subject matter grouping of: (Certain Methods of Organizing Human Activity as ‘Fundamental economic practice to Managing personal behavior or relationships or interactions between people including, teaching, and following rules or instructions). As such, the claims include an abstract idea. The specific limitations of the invention are identified to encompass the abstract idea include: (receiving …a login request…the account from a database…;determinng…geographic regions by; retrieving…geographic regions…location; and comparing…customer geographic regions;…transmitting…; receiving…; determining...;transmitting…;receiving… funds transfer request;…authorizing the user…to transfer funds in the accounts of the user.) As stated above, this abstract idea falls into the subject matter grouping (b) of: (Certain Methods of Organizing Human Activity as ‘Fundamental economic practice to Managing personal behavior or relationships or interactions between people including social activities, teaching, and following rules or instructions’).
Under Alice-Step (2A)-Prong 2: When considered individually and in combination, the instant claims do not integrate the exception into a practical application because the steps of:
receiving …a login request…the account from a database…;determinng…geographic regions by; retrieving…geographic regions…location; and comparing…customer geographic regions;…transmitting…; receiving…; determining...;transmitting…;receiving…funds transfer request;…authorizing the user…to transfer funds in the accounts of the user,
do not apply, rely on, or use the judicial exception in a manner that imposes a meaningful limitation on the judicial exception (i.e. the abstract idea).
The instant recited claims including additional elements (i.e. “receiving …a login request…the account from a database…;determinng…regions by; retrieving…; and comparing…customer geographic regions;…transmitting…; receiving…; determining...;transmitting…;receiving…a funds transfer request;…authorizing …to transfer funds in the accounts of the user.”)
do not improve the functioning of the computer or improve another technology or technical field nor do they recite meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The limitations merely use a generic computing technology (Specification [0004-5]: processor, memory, instructions, storage medium, and electrical communication) as tools to perform an abstract idea or merely add insignificant extra-solution activity to the judicial exception. (MPEP § 2106.05 (f) (g)). Therefore, the claims are directed to an abstract idea.
Moreover, applicant cited Court cases as analogy, such as:
In Core Wireless Licensing S.A.R.L., v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018), the claimed invention involves a graphical user interface (GUI) for mobile devices that displays an application summary of each application on the main menu while those applications are in an unlaunched state. The claims to computing devices were held patent eligible because the court concluded that they are directed to an improved user interface for electronic devices, not to the abstract idea of an index. In particular, the claims contain precise language delimiting the type of data to be displayed and how to display it, thus improving upon conventional user interfaces to increase the efficiency of using mobile devices.
In Enfish v. Microsoft, the United States Court of Appeals for the Federal Circuit reversed the district court's decision and deemed the discussed claims as patent-eligible stating, "the district court oversimplified the self-referential component of the claims and downplayed the invention's benefits" and decision… that "the self-referential table recited in the claims on appeal is a specific type of data structure designed to improve the way a computer stores and retrieves data in memory" which is "directed to a specific implementation of a solution to a problem in the software arts." In Enfish, the claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement-a particular database technique-in how computers could carry out one of their basic functions of storage and retrieval of data. See also details in re TLI Communication LLC.
In Thales Visionix, Inc. (“TVI”) appeals from the U.S. Court of Federal Claims (“Claims Court”) judgment on the pleadings holding that claims 1–5, 11–13, 20, 22–26, 32–34, and 41 of U.S. Patent No. 6,474,159 (“’159 patent”) are directed to patent-ineligible subject matter. Thales Visionix, Inc. v. United States, 122 Fed. Cl. 245, 257(2015). The US claims court [We] hold that the ’159 patent claims at issue in this appeal are not directed to an abstract idea. The claims specify a particular configuration of inertial sensors and a particular method of using the raw data from the sensors in order to more accurately calculate the position and orientation of an object on a moving platform. The mathematical equations are a consequence of the arrangement of the sensors and the unconventional choice of reference frame in order to calculate position and orientation. Far from claiming the equations themselves, the claims seek to protect only the application of physics to the unconventional configuration of sensors as disclosed. As such, these claims are not directed to an abstract idea and thus the claims survive Alice step one. Because we find the claims are not directed to an abstract idea, we need not proceed to step two. Alice, 134 S. Ct. at 2355; The claims are patent eligible under 35 U.S.C. § 101. And
In Finjan Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018), the claimed invention involves a method of virus scanning that scans an application program, generates a security profile identifying any potentially suspicious code in the program, and links the security profile to the application program. The claims were held patent eligible because the court concluded that the claimed method recites specific steps that accomplish a result that realizes an improvement in computer functionality. In particular, the method generates a security profile that identifies both hostile and potentially hostile operations, and can protect the user against both previously unknown viruses and "obfuscated code." This is an improvement over traditional virus scanning, which only recognized the presence of previously-identified viruses. The method also enables more flexible virus filtering and greater user customization.
In contrast, the instant claims provide a generically computer-implemented solution to a business-related or economic problem (account authentication for funds transfer), and are thus incomparable to the claims at issue in court cases such as Core Wireless, EnFish, Thales, and Finjan.
Applicant also cited, In Ex Parte Fanaru, the Board decision:
In response to applicant’s argument, recitation, “A very recent Patent… (PTAB)…”, A PTAB decision does not represent Office policy and moreover a PTAB decision is fact specific to the case being decided.
B. Claims 1-2…13-23 are Patent Eligible Under USPTO Step 2B:
“Because; They Recite a Combination of Elements that Is Significantly More than an Abstract Idea.
Regardless, even if the claims are directed to an abstract idea, which the Applicant does not concede, they are patent eligible because they recite an inventive concept…;…;…;…;the second step of the Alice/Mayo test (USPTO Step 2B) evaluates whether "the additional elements recited in the claims provide[]'significantly more' than the [allegedly] recited judicial exception…;…;…;
The Federal Circuit established in Berkheimer that "[t]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact" that "must be proven by clear and convincing evidence." 881 F.3d at 1368 (citing Microsoft Corp. v. i4i Ltd. P' ship, 564 U.S. 91, 95 (2011)).
"[A]n examiner should conclude that an element (or combination of elements) represents well- understood, routine, conventional activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry." USPTO Berkheimer Memorandum at 3 (emphasis in original). …;…;…;…;
Accordingly, Applicant respectfully requests that the Examiner withdraw the patent eligibility rejections of Claims 1-2, 4-6, 8-11, 13-15, and 17-23.”
In Response B: Examiner Disagrees:
Under Alice-Step (2B): Additionally, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements (Claims: e.g., processor, trained machine learning models, equations, instructions, memory, electrical communication, and storage medium) amount to no more than generally linking the use of the judicial exception to a particular technological environment or merely using generic components as tool to perform an abstract idea. In conclusion, merely “linking/applying” the exception using generic computer components does not constitute ‘significantly more’ than the abstract idea. (MPEP § 2106.05 (f) (h)). Therefore, the claims are not patent eligible under 35 USC 101.
Regarding 101 rejection Applicant stated that, “USPTO Berkheimer Memorandum at 3 (emphasis in original)…;”
However, under step 2B, an additional element is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing [any one of four evidences] of Berkheimer case-memo.
Examiner notes that the rejection identifies the computing functions required to carry out the claimed steps as being “transmitting and receiving digital data, and storing data in a record.” These functions fall within the functions identified by the MPEP.
For example, MPEP 2106.05([d][II]) identifies, “receiving, retrieving, determinng or transmitting data over a network,” “performing repetitive calculations,” “electronic record keeping,” and “storing and retrieving information in memory”, “electronically scanning or extracting data”, recording, identifying and presenting offers”, determining an estimated outcomes…” and “arranging, sorting, eliminating information”, as having recognized as being well-understood, routine and conventional functions.
Examiner further notes that the steps recited in the claims, such as receiving, retrieving, determining, transmitting, authorizing, evaluating [e.g. Analyzing]. And initiating [e.g. presenting offers], are recognized by the court as well-understood, routine, conventional activity or as insignificant extra-solution activity (see MPEP [d][II]).
Moreover, merely applying instructions by reciting the computing structure as a tool to implement the claimed limitations (see MPEP 2106.05[f]) or merely linking the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05[h]), does not serve to provide significantly more than the abstract idea.
All Claims …under 35 U.S.C. § 103:
“Claims 1-20 stand rejected under 35 U.S.C. § 103 as allegedly being unpatentable over U.S. Publication No. 2020/0193443 to Piel ("Piel") in view of U.S. Publication No. 2012/0030083 to Newman et al. ("Newman"), and U.S. Publication No. 2020/0120127 to Tyers et al. ("Tyers").
Applicant submits that Piel fails to disclose or render obvious at least "retrieving (i) one or more known user device locations in which the user previously authenticated the user device, and (ii) a plurality of known customer geographic regions associated with the account from a database," as recited …;…;
Newman, discloses that a "geolocation may be provided by Global Positioning Systems ("GPS") incorporated into the customer devices 108A"…;…; Tyers, cited for allegedly disclosing a "funds transfer request exceeds the amount threshold" (see Office Action, p. 23), also fails to cure the deficiencies of Piel and Newman.
…;…;…;…;
In view of the above, Applicant respectfully submits that these rejections under § 103 are moot and believes all claims to be in condition for allowance. Accordingly, Applicant respectfully requests the rejections of Claims 1-2, 4-6, 8-11, 13-15, and 17-23 be removed.
In Response: Examiner disagrees with Applicant’s assertions.
However, Piel discloses [obviously] claimed limitations [including amended elements] in view of arts-Newman and new art-Chang et al [reolacing Tyers] for amended limitations, such as by:
Newman being in the same field of invention discloses the step to determine whether the geolocation of the user … falls outside of one or more first known customer geographic regions or one or more first known user device locations by: retrieving (i) one or more known user device locations in which the user previously authenticated the user device, and (ii) a plurality of known customer geographic regions associated with the account from a database, and comparing the geolocation of the user device against the one or more first known user device locations and the plurality of known customer geographic regions (para [0019];Fig.1; via an e-commerce system 100/merchants 60, customers 80 and a fraud detection service provider 90 [“FDSP”]…[0027], Fig. 2; via data depository…and customer devices…[0041]; via the geolocation…identified using an IP address…or may be provided by GPS incorporated into the customer devices 108A/B…include a country, region, city, latitude, longitude, and /or ZIP code identified using an IP address/attributes and properties of customer devices [implied determinng & comparing location-regions of user devices],…).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the features mentioned by Piel to include the disclosures as taught by Newman to facilitate fund transfer with Geo-location-regions of user device for Fraud Prevention.
And by:
Chang being in the same field of invention discloses the step of: one or more step-up authentication methods based on determined accessibility constraints (Col. 16, lines 37-69; Figs. 1-3 via Turning to a denied transaction process at 320…system 102 will, if applicable, transmit to the user device 104 a set of step-up authentication steps [implied first or second steps-up…]/ actions, taken by the user 20…).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the features mentioned by Piel to include the disclosures as taught by Chang to facilitate with step-up authentication method for fraud prevention.
CONCLUSION
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
The prior arts made of record and not relied upon are considered pertinent to applicant's disclosure.
Tyers et al (US 2020/0120127-A1) discloses Deep Intelligence Context Engine.
Royyuru et al (US 20170076274 A1) discloses Authentication Systems and Methods.
Yamane Marcus (CA 3059160 A1) discloses Fraud Prevention via Beneficiary Account Validation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HATEM M. ALI whose telephone number is (571) 270-3021, E-mail: Hatem.Ali@USPTO.Gov and FAX (571)270-4021. The examiner can normally be reached Monday-Friday from 8:00 AM to 6:00 PM ET.
Examiner interviews are available via telephone, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ABHISHEK VYAS can be reached on (571) 270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HATEM M ALI/
Examiner, Art Unit 3691