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 Amendments and Arguments
As to the rejection of Claims 1-6 and 11-16 under 35 U.S.C. § 101, Applicant’s arguments and amendments have been fully considered but are not persuasive. Applicant argues that the instant claims do not merely recite a judicial exception but instead integrates the judicial exception into a practical application. The claims are directed to using a first set of metadata and historical data and using a model to find a match. These therefore do fall under the categories of “organizing human activity”. It does not integrate the abstract idea into a practical application, but rather is receiving and processing data and then outputting the results which merely adds the words “apply it” through use of a generic computer. This does not go beyond “apply it” and thus simply relying on a computer to perform routine tasks or calculations more quickly or more accurately is insufficient to render a claim patent eligible. See Alice, 134 S. Ct. at 2359 (“use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions” is not an inventive concept); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (a computer “employed only for its most basic function . . . does not impose meaningful limits on the scope of those claims”); cf. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258–59 (Fed. Cir. 2014) (finding a computer-implemented method patent eligible where the claims recite a specific manipulation of a general-purpose computer such that the claims do not rely on a “computer network operating in its normal, expected manner”). Examiner argues that the claims do not amount to significantly more because the limitations, in effect, merely add the words “apply it” to the “the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f). The additional elements do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment”, the particular technological environment being machine learning and biometric metadata collection. Examiner maintains that in the current claims, the computer is used as a tool to implement the abstract idea. The rejection is thereby maintained.
As to the rejection of claims 1-6 and 11-16 under 35 U.S.C. § 103, Applicant's arguments and amendments have been fully considered and are persuasive. The rejection is thereby withdrawn.
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 1-6 and 11-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., abstract idea) without significantly more.
Step 1
Claims 1-6 recite a system including memory hardware and one or more electronic processors; claims 11-16 recite a method. Both are statutory categories of invention (Step 1: Yes)
Step 2A Prong 1
Under this step of the analysis, it must be determined whether the claims recite an abstract idea that falls within one or more designated categories of patent ineligible subject matter (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability. Here, the independent system claim 1 recites the abstract idea of:
generate historical behavioral biometric metadata…training a…model using the historical profile…generate first behavioral biometric metadata…
receiving a transaction request…, the transactional request including first behavioral biometric metadata;
providing the first behavioral biometric metadata and the historical behavioral biometric metadata to the trained…model to generate a biometric match;
generating a control signal based on the biometric match.
The limitations above recite an abstract idea that falls within one or more of the three enumerated categories of patent ineligible subject matter, to wit: certain methods of organizing human activity which includes subcategories of fundamental economic practices or principles (i.e., risk mitigation that shows receiving a transaction request and taking steps to authenticate the user based on an analysis of metadata associated with the user utilizing a model that yields outputs that are then compared). Thus the claim recites an abstract idea. (Step 2A Prong 1: Yes)
Step 2A Prong 2
Under this step, recited additional elements are evaluated to determine whether they provide an integration of the recited abstract idea into a practical application. (MPEP §2106.04)
Here, additional elements – a plurality of computing platforms, memory hardware storing; one or more electronic processors configured to execute the instructions; computing platforms (including a first, second) - are recited in the claims at a high degree of generality, and thus do not amount to a practical application since the claims are simply using each of these additional elements as tools to carry out the recited abstract idea (i.e., “apply it’). (See e.g., MPEP §2106.05(f)). Moreover, these additional elements simply perform generic computer data receipt, transmission and processing or analysis steps such as those functions typically performed by general purpose computer or a computing system. The recitation of a machine learning model itself is identified as an additional element beyond the abstract idea, as machine learning merely recites programming of a computer to perform a desired data analysis to implement the abstract idea. (MPEP 2106.05(f)).
The claim recites additional limitations -
extract historical features…extract features indicative of current user interactions…receiving historical behavioral biometric metadata…to build a historical profile and sending the control signal… (Note: As a definition is not provided in applicant specification, a control signal is interpreted as the data sent from one device to another) which merely recites receiving and sending data which are insignificant extra-solution activity, and therefore not indicative of a practical application. And other features further define the data utilized in the model to implement the abstract idea. (Step 2A Prong 2: No)
Step 2B
Under this step, it is determined whether the recited additional elements amount to something “significantly more’ than the recited abstract idea to which the claims are directed. (i.e., provide an inventive concept). (MPEP §2106.05)
The recited additional elements, identified above in the Step 2A, Prong 2 analysis, do not amount to an inventive concept since, as stated above in the Step 2A, Prong 2 analysis, the additional elements are specified at a high level of generality and are merely being used as tools to carry out the abstract idea (i.e., “apply it’). When considered separately or in combination, the additional elements are not sufficient to amount to significantly more than the judicial exception.
As stated in MPEP 2106.05(d), a factual determination is required to support a conclusion that an additional limitation (or combination of additional limitations) is well-understood, routine, conventional activity (Berkheimer). In view of this requirement, the limitations - receiving historical behavioral biometric metadata…to build a historical profile and sending the control signal…- do not amount to significantly more than the abstract idea, because the courts have found the concepts of receiving and sending data to be well-understood, routine, and conventional activity (See MPEP 2106.05(d): OIP Techs., Inc., buySAFE, Inc. ). (Step 2B: No)
Independent claim 11 recites limitations similar to the limitations of independent claim 1; therefore, the limitations of claim 11 are directed to the same abstract idea identified in claim 1. A similar analysis as applied to claim 1 is applicable and accordingly, claim 11 is also rejected under 35 USC 101.
Dependent claims 2-6 and 12-16 are rejected under 35 USC 101.
Dependent claims further refine the abstract idea that is present in independent claims 1 and 11, from which they respectively depend, as follows:
Claims 2-5 and 12-15 further describe data analysis steps taken using the model to implement the abstract idea.
Claims 6 and 16 recite an additional limitation - retrieving the historical profile based on an identifier contained in the transactional request - which merely recites gathering data which is insignificant extra-solution activity, and therefore not indicative of a practical application or indicative of something significantly more.
Claims 2-5 and 12-15 recite additional elements – machine learning – for which analysis presented in claim 1 is also applicable.
These dependent claims 2-6 and 12-16 do not add any element or feature that provides an integration into a practical application or include any element or feature that is significantly more than the recited abstract idea (See MPEP §§2106.04, 2106.05).
Thus, neither the independent claims nor the dependent claims, including consideration of all the limitations of each claim viewed both individually and in combination, add any additional element or recite any subject matter that provides an integration into a practical application or provides something significantly more than the recited abstract idea to which the claims are directed that results in the claims being directed to patent eligible subject matter.
For the reasons set forth above, claims 1-6 and 11-16 are not patent-eligible under 35 USC 101.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRENE S KANG whose telephone number is (571)270-3611. The examiner can normally be reached on Monday through Friday between M-F 10am-2pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matt Gart may be reached at (571)-272-3955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRENE S KANG/Examiner, Art Unit 3696 8/4/2026
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696
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