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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the detailed description lacks antecedent basis for the claim term "database."
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (abstract idea without significantly more). Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014). Claims 1-17, each considered as a whole and as an ordered combination, are directed to a judicial exception (i.e., an abstract idea) without significantly more.
MPEP 2106 Step 2A – Prong 1:
The claims recite an abstract idea reflected in the representative functions of the independent claims—including:
one or more surety companies, one or more agents, one or more contractors, and one or more obligees;
provide the one or more surety companies with a surety company to grant a power of attorney to authorize an agent to issue surety bonds on behalf of the surety company;
provide the one or more agents with one or more boxes configured for entry into, or selection therein, of: bid-specific information, and a signature of the agent;
provide the one or more contractors with entry of a signature of the contractor onto the draft of the bond;
generate and to display a unique alpha and/or numeric identifier on both the executed bond and the associated power of attorney, to create a stapler to prevent subsequent fraudulent use of the power of attorney independent of the executed bond; and
provide the obligee with access to view the executed bond.
These limitations taken together qualify as a certain method of organizing human activities because they recite collecting, analyzing, and outputting information for structuring a secured legal relationship among different parties (i.e., in the terminology of the 2019 Revised Guidance, legal interactions (including agreements in the form of contracts; legal obligations).
It shares similarities with other abstract ideas held to be non-statutory by the courts (see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014)—creating a contractual relationship, which also characterizes the invention; Accenture Global Services, GmbH v. Guidewire Software, 728 F.3d 1336 (Fed. Cir. 2013)—interface for generating tasks based on rules to be completed upon the occurrence of an event, similar because at another level of abstraction the claims could be characterized as an interface for generating tasks based on rules to be completed upon the occurrence a surety bond issuance).
These cases describe significantly similar aspects of the claimed invention, albeit at another level of abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer.").
MPEP 2106 Step 2A – Prong 2:
This judicial exception is not integrated into a practical application because there are no meaningful limitations that transform the exception into a patent eligible application. The elements merely serve to provide a general link to a technological environment (e.g., computers and the Internet) in which to carry out the judicial exception (server configured to communicate with a plurality of client devices; client devices configured to communicate with said server; user interface screens; "digital" signature/stapler—all recited at a high level of generality). Although they have and execute instructions to perform the abstract idea itself (e.g., modules, program code, etc. to automate the abstract idea), this also does not serve to integrate the abstract idea into a practical application as it merely amounts to instructions to "apply it." Aside from such instructions to implement the abstract idea, they are solely used for generic computer operations (e.g., receiving, storing, retrieving, transmitting data), employing the computer as a tool. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter.") (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,1256 (Fed. Cir. 2014)) (emphasis added).
The claims only manipulate abstract data elements into another form. They do not set forth improvements to another technological field or the functioning of the computer itself and instead use computer elements as tools to improve the functioning of the abstract idea identified above. Looking at the additional limitations and abstract idea as an ordered combination and as a whole adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Rather than any meaningful limits, their collective functions merely provide generic computer implementation of the abstract idea identified in Prong One. None of the additional elements recited "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Alice Corp., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)).
At the levels of abstraction described above, the claims do not readily lend themselves to a finding that they are directed to a nonabstract idea. Therefore, the analysis proceeds to step 2B. See BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) ("The Enfish claims, understood in light of their specific limitations, were unambiguously directed to an improvement in computer capabilities. Here, in contrast, the claims and their specific limitations do not readily lend themselves to a step-one finding that they are directed to a nonabstract idea. We therefore defer our consideration of the specific claim limitations’ narrowing effect for step two.") (citations omitted).
MPEP 2106 Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for the same reasons as presented in Step 2A Prong 2 (i.e., they amount to nothing more than a general link to a particular technological environment and instructions to apply it there). Moreover, the additional elements recited are known and conventional computing elements (server configured to communicate with a plurality of client devices; client devices configured to communicate with said server; user interface screens; "digital" signature/stapler—see published Specification ¶¶ 0131, 168, 289, 337 describing these at a high level of generality and in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy the statutory disclosure requirements).
The Federal Circuit has recognized that "an invocation of already-available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is 'well-understood, routine, [and] conventional.'" SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (alteration in original) (citing Mayo v. Prometheus, 566 U.S. 66, 73 (2012)). Apart from the instructions to implement the abstract idea, they only serve to perform well-understood functions (e.g., receiving, storing, retrieving, transmitting data—see Specification above as well as Alice Corp.; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016); and Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) covering the well-known nature of these basic computer functions).
"The use and arrangement of conventional and generic computer components recited in the claims—such as a database, user terminal, and server— do not transform the claim, as a whole, into 'significantly more' than a claim to the abstract idea itself. We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept in the application of an abstract idea." Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1056 (Fed. Cir. 2017) (citations and quotation marks omitted). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Dependent Claims Step 2A:
The limitations of the dependent claims but for those addressed below merely set forth further refinements of the abstract idea without changing the analysis already presented (i.e., they merely narrow the abstract idea without adding any new additional elements beyond it). Additionally, for the same reasons as above, the limitations fail to integrate the abstract idea into a practical application because they use the same general technological environment and instructions to implement the abstract idea as the independent claims (i.e., server, client devices, generic interfaces).
Claims 2, 4, and 16-17 add an email notification; claims 2, 4, and 15 add hyperlinks; claim 6 adds a PDF; and claims 11-12 add a database. However, these all merely further limit the general link to a particular technological environment and using the general technological environment (i.e., computers and the Internet) to communicate data. Claim 8 adds radio button and claim 10 adds a dropdown list however these are generic interface tools.
Dependent Claims Step 2B:
The dependent claims merely use the same general technological environment and instructions to implement the abstract idea. Although they add the elements identified in 2A above, these do not amount to significantly more for the same reasons they fail to integrate the abstract idea into a practical application.
Moreover, the Specification also indicates this is the routine use of known generic computer components for the same reasons presented with respect to the elements in the independent claims above (i.e., by describing them at a high level of generality and without appreciable technical detail—see ¶ 0310—email notification; ¶ 0303—hyperlinks; ¶ 0033—PDF; ¶ 0338—database; ¶ 0060—radio buttons; ¶ 0032—dropdown list). Accordingly, they are not directed to significantly more than the exception itself, and are not eligible subject matter under § 101.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,790,472. Although the claims at issue are not identical, they are not patentably distinct from each other because all the elements of the application claims are to be found in the reference patent (as the application claims fully encompass the reference application claims). The difference between the application claims and the reference patent claims lies in the fact that the reference patent claims include more elements and are thus more specific. Thus the invention of claims 1-18 of the reference patent is in effect a "species" of the "generic" invention of the application claims 1-17. A generic invention is "anticipated” by the "species." In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claims 1-17 are anticipated by claims 1-18 of the reference application, it is not patentably distinct.
A complete reply to this Office Action must contain a substantive response (by way of amendment to overcome the rejection, specific arguments explaining why the rejection was made in error, or by filing a Terminal Disclaimer). See MPEP 804(I)(B)(1). The rejection will not be held in abeyance and incomplete replies will be treated as not fully responsive under MPEP 714.03.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Sforzo, U.S. Pat. No. 7,194,435 (Reference A of the attached PTO-892) relates to eliminating fraud in the issuance of surety bonds.
Losinno, et al., U.S. Pat. Pub. No. 2022/0222760 (Reference B of the attached PTO-892) relates to eliminating fraud in the issuance of surety bonds.
Nguyen, et al., U.S. Pat. Pub. No. 2018/0278794 (Reference C of the attached PTO-892) relates to eliminating fraud in the issuance of surety bonds.
Georgiadis, et al., U.S. Pat. Pub. No. 2018/0137512 (Reference D of the attached PTO-892) relates to eliminating fraud in the issuance of surety bonds.
Bekker, et al., U.S. Pat. Pub. No. 2013/0179988 (Reference E of the attached PTO-892) relates to eliminating fraud in the issuance of surety bonds.
Brownewell, U.S. Pat. Pub. No. 2008/0184272 (Reference F of the attached PTO-892) relates to eliminating fraud in the issuance of surety bonds.
Robertson, et al., U.S. Pat. Pub. No. 2007/0300067 (Reference G of the attached PTO-892) relates to eliminating fraud in the issuance of surety bonds.
Cornett, et al., U.S. Pat. Pub. No. 2007/0214365 (Reference H of the attached PTO-892) relates to eliminating fraud in the issuance of surety bonds.
Reagle, Trust in a cryptographic economy and digital security deposits: Protocols and policies, Diss. Massachusetts Institute of Technology, 1996 (Reference U of the attached PTO-892) relates to eliminating fraud in the issuance of surety bonds.
Neuman, Security, payment, and privacy for network commerce, IEEE Journal on Selected Areas in Communications, Vol. 13, No. 8, 1995, pgs. 1523-1531 (Reference V of the attached PTO-892) relates to eliminating fraud in the issuance of surety bonds.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL VETTER whose telephone number is (571)270-1366. The examiner can normally be reached M-F 9:00-6:00.
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/DANIEL VETTER/Primary Examiner, Art Unit 3628