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 .
Claim Status
Claims 1-20 are currently pending and are presented for examination on the merits.
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 1-20 are rejected under 35 U.S.C. § 101, because they recite non-patentable subject matter under MPEP § 2106, e.g., the 2019 PEG, October update. The claimed invention is directed to a judicial exception (e.g., an abstract idea, etc.) without practical application or significantly more.
More particularly, when considering subject matter eligibility under 35 U.S.C. 101, 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. 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, 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. Broad categories of abstract ideas include fundamental economic practices, certain methods of organizing human activities, an idea itself, and mathematical relationships/formulas. See, generally Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,132 S. Ct. 1289, 1294, 1297-98 (2012)); Federal Register notice titled 2014 Interim Guidance on Patent Subject Matter Eligibility (79 FR 74618), which is found at: http:// www. gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf; 2015 Update to the Interim Guidance; the 2019 Revised Patent Subject Matter Eligibility Guidance, Fed. Reg., Vol. 84, No. 4, January 7, 2019; and associated Office memoranda.
Under MPEP § 2106, Step 2a-prong 1, Claims 1-20 recite a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle). More particularly, the entirety of the method steps is directed towards discerning an account associated with a physical item, such as an identification or payment card, when only a portion of the identifying information is provided (e.g., name and last four digits of card number/key), and generating a virtual number associated with the account and using the virtual number (e.g., to conduct an online account). These are both long-standing commercial practices previously performed by humans (e.g., payment platforms, consumers, merchants, etc.) manually, telephonically, and via generic computing. As such, the inventions include an abstract idea under § 2106, and Alice Corporation.
Under step 2a-prong 2, the claims fail to recite a practical application of the exception, because the extraneous limitations (e.g., the structure—an application, user device, API, server etc.) merely add insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g), generally link the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)) and/or generally instruct an artisan to apply it (the method) across generic computing technology. A claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit. See Alice, 573 U.S. at 222; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014). That is to say, the claims are not directed to a new software or computer, but rather employs pre-existing software to do what’s been previously done, albeit less efficiently or slower. “[I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (citations omitted). More particularly, the claims fail to recite an improvement to the functioning of a computer or technology (under MPEP § 2106.05(a)), the use of a particular machine (under § 2106.05(b)), effect a transformation or reduction of a particular article (§ 2106.05(c)), or apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (§ 2106.05(e)).
Under part 2b, the additional elements offered by the independent/dependent claims (including filter/searching a database in determining the account based on the information) either further delineate the abstract idea, add further abstract idea(s), adds insignificant extra-solution activity, or further instruct the artisan to apply it (the abstract idea(s)) across generic computing technology. The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because no one claim effects an improvement to another technology or technical field, an improvement to the functioning of a computer itself, or move beyond a general link of the use of the abstract idea to a particular technological environment. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Under Alice, merely applying or executing the abstract idea on one or more generic computer system (e.g., a computer system comprising a generic database; a generic element (NIC) for providing website access, etc.; a generic element for receiving user input; and a generic display on the computer, in any of their forms) to carry out the abstract idea more efficiently fails to cure patent ineligibility. See, e.g., Content Extraction, 776 F.3d at 1347 (claims reciting a “scanner” are nevertheless directed to an abstract idea); Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea).
Courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: performing repetitive calculations, receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data, MPEP 2106.05(d), wherein the italicized tasks are particularly germane to the instant invention.
Claim Rejections - 35 USC § 103
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
a. Determining the scope and contents of the prior art.
b. Ascertaining the differences between the prior art and the claims at issue.
c. Resolving the level of ordinary skill in the pertinent art.
d. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-20 are rejected under 35 U.S.C. § 103 as being unpatentable over US 2008/0219543 to Csulits et al., in view of US 2017/0140219 to King et al.
With respect to Claims 1, and 20, Csulits teaches a system comprising: one or more memories storing instructions (FIG. 1); and one or more processors operatively connected to the one or more memories operable to execute a computer-implemented (FIG. 1) method (FIGS. 5, 10, 12a), comprising: obtaining, by an application accessible on a user device, image data of a physical item (FIG. 5), wherein the physical item is associated with an account ([0103]) and a custodian (bank; FIG. 9), and wherein the physical item includes an account key and a plurality of items of identifying information thereon (FIG. 7b; [0110]); extracting, by the application based on the image data, a portion ([0115], “snippet”) of the account key and one or more of the plurality of items (FIG. 9;[0115]), wherein the portion is less than an entirety of the account key (FIG. 9;[0115];[0180]); identifying, by the application based on at least one of the portion of the account key and the one or more of the plurality of items, the custodian ([0058], “issuing bank”;[0108]); transmitting, by the application to an application programming interface application programming interface associated with the custodian, at least one of the portion of the account key and the one or more of the plurality of items ([0137]). Csulits teaches searching a database (FIG. 8;[0103]) of account information using the portion of the account key and the one or more of the plurality of items to identify the account ([0103];[0111];[0122], see searching a database throughout).
Csulits fails to expressly teach, but King teaches the use of an API ([0281]). King further teaches receiving, by the application from the application programming interface, a virtual certification number generated by the application programming interface based on the one of the portion of the account key and the one or more of the plurality of items and associated with the account. ([0498], providing customer identification number and other associated supplemental material to vendor based on scanned information; [0518]; [0651];[0777-81]) King discusses the inconvenience in not providing supplemental material, such as a virtual certification number operable for online purchasing. [0008] It would have been obvious to one of ordinary skill in the art to modify Csulits to add provision of a virtual certification number generated by an API based on the scanned information.
With respect to Claim 2, Csulits teaches transmitting, by the application to a remote server, the virtual certification number. ([0137], second computer may be a remote server)
With respect to Claim 3, Csulits teaches transmitting, by the application in response to identifying the custodian, a request to the application programming interface to authenticate the application; and receiving, by the application from the application programming interface, an indication that the application is authenticated. [0086];[0103]
With respect to Claim 4, Csulits teaches wherein the custodian is identified based on a first six characters of the account key. (bank account number)
With respect to Claim 5, Csulits teaches wherein the plurality of items includes a logo corresponding to the custodian and wherein the custodian is identified based on the logo. [0058]
With respect to Claim 6, Csulits teaches wherein the custodian is identified based on the logo and the portion of the account key. [0110]
With respect to Claim 7, Csulits teaches determining, by the application, that a remainder of the account key cannot be extracted by optical character recognition (OCR); and wherein identifying the custodian is triggered by the determining. (FIG. 9)
With respect to Claim 8, Csulits teaches transmitting, by the application to the application programming interface, the image data; wherein the virtual certification number is generated by the application programming interface further based on the image data. ([0137];[0189])
With respect to Claim 9, Csulits teaches wherein the one or more of the plurality of items includes an item verification value, an expiration date, or user name; and wherein identifying the custodian is based on all of the portion of the account key and the plurality of items. (FIG. 7b;[0108])
With respect to Claim 10, Csulits fails to expressly teach, but King teaches wherein the virtual certification number is limited for use with the application by the application programming interface. [0193] Under the same rationale as Claim 1, it would have been obvious to one of ordinary skill in the art to modify Csulits to include this limitation taught by King.
With respect to Claim 11, Csulits teaches saving, by the application, the virtual certification number as a default interaction method. ([0005], storing data to compare to the extracted information in future counterfeit interactions).
With respect to Claim 12, Csulits teaches a computer-implemented method comprising: receiving, by an application programming interface from an application accessible on a user device, a request to authenticate the application, wherein the application programming interface is associated with a custodian of a physical item associated with an account ([0059];[0103]), wherein the physical item includes an account key and a plurality of items of identifying information thereon; authenticating, by the application programming interface, the application ([0103]); receiving, by the application programming interface from the application, a portion of the account key and one or more of the plurality of items of identifying information, wherein the portion is less than an entirety of the account key; identifying, by the application programming interface based on the portion of the account key and one or more of the plurality of items of identifying information, the account associated with the physical item (FIG. 10); generating, by the application programming interface, a virtual certification number associated with the account; and transmitting, by the application programming interface to the application, the virtual certification number ([0108]). Csulits teaches searching a database (FIG. 8;[0103]) of account information using the portion of the account key and the one or more of the plurality of items to identify the account ([0103];[0111];[0122], see searching a database throughout). See Claim 1 (Csulits fails to expressly teach, but King teaches the use of an API ([0281]). King further teaches receiving, by the application from the application programming interface, a virtual certification number generated by the application programming interface based on the one of the portion of the account key and the one or more of the plurality of items and associated with the account. ([0498], providing customer identification number and other associated supplemental material to vendor based on scanned information; [0518]; [0651];[0777-81]) King discusses the inconvenience in not providing supplemental material, such as a virtual certification number operable for online purchasing. [0008] It would have been obvious to one of ordinary skill in the art to modify Csulits to add provision of a virtual certification number generated by an API based on the scanned information).
With respect to Claim 13, Csulits teaches receiving, by the application programming interface from the application, image data for the physical item. (Abstract; throughout)
With respect to Claim 14, Csulits teaches wherein identifying the account associated with the physical item is further based on the image data. [0103];FIG. 9
With respect to Claim 15, Csulits teaches wherein the one or more of the plurality of items includes an item verification value, an expiration date, or user name. FIGS 7b, 9.
With respect to Claim 16, Csulits teaches wherein the one or more of the plurality of items further includes a logo. [0058]
With respect to Claim 17, Csulits teaches limiting, by the application programming interface, the virtual certification number for use with the application. See, Claim 10.
With respect to Claim 18, Csulits teaches wherein identifying the account associated with the physical item comprises: matching the portion of the account key and one or more of the plurality of items of identifying information to a single account represented in the database. ([0027];[0122];FIG. 8)
With respect to Claim 19, Csulits teaches wherein the one or more of the plurality of items of identifying information includes a blank space on a predetermined portion of the physical item. FIG. 7b
Response to remarks
Applicant’s remarks submitted on 7/3/2025 have been fully considered but are not persuasive, where objections/rejections are maintained. The independent claims have been amended to add the API filtering (i.e., searching?) a database of account information using the portion (snippet) and one or more plurality of items to identify the account. As per § 101, the amendment also fails to overcome the rejection, because filtering a database of account information fails to recite an innovative concept or significantly more by itself. It is well-known, routine, and conventional to search a database to match information. See, the prior art references of record. Moreover, it is insufficient to simply apply conventional technology (searchable databases) to a particular context (searching financial account information to determine an account).
As per the prior art rejections, Csulits, throughout its disclosure, teaches searching a database of account information to match the information with an account, which would have taught one of ordinary skill in the art, armed with the state of the art at the time, said limitation. As such, the amendment fails to overcome the prior art rejection. Please note that the applied reference(s) need not use the same terminology, or disclose the limitation verbatim, and also that the entirety of a prior art reference is to be applied to the respective claim(s), such that the pinpoint citations above are exemplary and provided for Applicant’s benefit; other locations within the applied reference(s) may further support the rejection. MPEP 2141.02(VI).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J JACOB whose telephone number is (571)270-3082. The examiner can normally be reached on M-F 8:00-5:00, alternating Fri. off.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Gart can be reached on 5712723955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. 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.
/WILLIAM J JACOB/Examiner, Art Unit 3696