DETAILED ACTION
Response to Amendment
This Office Action is responsive to Applicant’s arguments and request for reconsideration of application 18/491,331 (10/20/23) filed on 8/28/25.
Claim Objections
Claim 14 and 19 are objected to because of the following informalities:
Claim 14 recites, “The method of claim 12, wherein determining the return policy data of the merchant associated with the transactional data record comprises: communicating, by the interface circuitry and via the processor of the server device, a request to a merchant device associated with the merchant; and receiving, by the interface circuitry, the return policy data in response to the request.”
This should be -- The method of claim 12, wherein determining the return policy data of the merchant associated with the transactional data record comprises: communicating, by the interface circuitry and via the processor of the server device, a request to a merchant device associated with the merchant; and receiving, by the interface circuitry and via the processor of the server device, the return policy data in response to the request. -- or something similar.
Consistent formatting, missing words.
Claim 19 recites, “a modeling engine configured to:”
This should be -- a modeling engine configured, with the processor, to: -- or something similar.
Consistent formatting, missing words.
Appropriate correction is required.
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 - 2 and 5 - 22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
ALICE/ MAYO: TWO-PART ANALYSIS
2A. First, a determination whether the claim is directed to a judicial exception (i.e., abstract idea).
Prong 1: A determination whether the claim recites a judicial exception (i.e., abstract idea).
Groupings of abstract ideas enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Mathematical concepts- mathematical relationships, mathematical formulas or equations, mathematical calculations.
Certain methods of organizing human activity- fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
Mental processes- concepts performed in the human mind (including an observation, evaluation, judgement, opinion).
Prong 2: A determination whether the judicial exception (i.e., abstract idea) is integrated into a practical application.
Considerations indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception
Considerations that are not indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
2B. Second, a determination whether the claim provides an inventive concept (i.e., Whether the claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
Considerations indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception NOTE: The only consideration that does not overlap with the considerations indicative of integration into a practical application associated with step 2A: Prong 2.
Considerations that are not indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. NOTE: The only consideration that does not overlap with the considerations that are not indicative of integration into a practical application associated with step 2A: Prong 2.
See also, 2010 Revised Patent Subject Matter Eligibility Guidance; Federal Register; Vol. 84, No. 4; Monday, January 7, 2019
Claims 1 - 2 and 5 - 22 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
1: Statutory Category
Applicant’s claimed invention, as described in independent claim 1, is/are directed to a process (i.e. a method).
2(A): The claim(s) are directed to a judicial exception (i.e., an abstract idea).
PRONG 1: The claim(s) recite a judicial exception (i.e., an abstract idea).
Certain Method of Organizing Human Activity
The claim as a whole recites a method of organizing human activity. The claimed invention is involves determining, using a trained model, a likelihood that a purchase associated with a transactional data record will be returned by a user;
determining that the likelihood satisfies a predefined threshold; in response to determining that the likelihood satisfies the predefined threshold, automatically assigning a pending return status indicator to the transactional data record, wherein the transactional data record is associated with the user, and wherein automatically assigning the pending return status indicator to the transactional data record comprises:
modifying a visualization of a line item transaction corresponding to the transactional data record such that the modified visualization of the line item transaction corresponding to the transactional data record is visually different from a visualization of a second line item transaction that corresponds to a second transactional data record not assigned the pending return status indicator, wherein the modified visualization of the line item transaction is viewable; obtaining a first dataset associated with the user;
determining that the first dataset corresponds to the transactional data record; and
reconciling the transactional data record based at least on the first dataset, which is a fundamental economic principles or practices (reconciling transactional data record; refund or reimbursement); commercial or legal interactions (reconciling transactional data record; refund or reimbursement); and managing personal behavior or relationships or interactions between people (determining, automatically assigning, modifying, obtaining, reconciling).
The mere nominal recitation of “a modeling engine”, “a data modification engine”, “visualization engine, “interface circuitry”, “transaction analysis engine” and “a processor of a server device” does not take the claim out of the method of organizing human activity grouping. Thus, the claim recites an abstract idea.
Mental Processes
The claim recites limitations directed to determining, using a trained model, a likelihood that a purchase associated with a transactional data record will be returned by a user; determining that the likelihood satisfies a predefined threshold; in response to determining that the likelihood satisfies the predefined threshold, automatically assigning a pending return status indicator to the transactional data record, wherein the transactional data record is associated with the user, and wherein automatically assigning the pending return status indicator to the transactional data record comprises:
modifying a visualization of a line item transaction corresponding to the transactional data record such that the modified visualization of the line item transaction corresponding to the transactional data record is visually different from a visualization of a second line item transaction that corresponds to a second transactional data record not assigned the pending return status indicator, wherein the modified visualization of the line item transaction is viewable; obtaining a first dataset associated with the user;
determining that the first dataset corresponds to the transactional data record; and reconciling the transactional data record based at least on the first dataset.
The limitation(s), as drafted, is/are a process that, under it’s broadest reasonable interpretation, covers performance of the limitation(s) in the mind. Other than reciting a “a modeling engine”, “a data modification engine”, “visualization engine, “interface circuitry”, “transaction analysis engine” and “a processor of a server device”, nothing in the claim element precludes the steps from practically being performed in the mind. In other words, the claim encompasses the user manually determining, using a trained model, a likelihood that a purchase associated with a transactional data record will be returned by a user; determining that the likelihood satisfies a predefined threshold; in response to determining that the likelihood satisfies the predefined threshold, automatically assigning a pending return status indicator to the transactional data record, wherein the transactional data record is associated with the user, and wherein automatically assigning the pending return status indicator to the transactional data record comprises: modifying a visualization of a line item transaction corresponding to the transactional data record such that the modified visualization of the line item transaction corresponding to the transactional data record is visually different from a visualization of a second line item transaction that corresponds to a second transactional data record not assigned the pending return status indicator, wherein the modified visualization of the line item transaction is viewable; obtaining a first dataset associated with the user; determining that the first dataset corresponds to the transactional data record; and reconciling the transactional data record based at least on the first dataset. NOTE: (a) The claim is exclusively from the perspective of “a modeling engine”, “a data modification engine”, “visualization engine, “interface circuitry”, “transaction analysis engine” and “a processor of a server device”. (b) Although “an interface of a mobile banking application” and a “user device associated with a user” are referenced in the claim, the claimed invention is not from the perspective of the “interface of a mobile banking application” and the “user device associated with a user”; and the “interface of a mobile banking application” and the “user device associated with a user” do not perform any of the positively recited steps or acts. The “interface of a mobile banking application” and the “user device associated with a user” merely interact with the entity (i.e., “a modeling engine”, “a data modification engine”, “visualization engine, “interface circuitry”, “transaction analysis engine” and “a processor of a server device”) from whose perspective the invention is claimed.
The mere nominal recitation of “a modeling engine”, “a data modification engine”, “visualization engine, “interface circuitry”, “transaction analysis engine” and “a processor of a server device” does not take the claim limitation out of the mental processes grouping. This/these limitation(s) recite a mental process. Thus, the claim recites an abstract idea.
PRONG 2: The judicial exception (i.e., an abstract idea). Is not integrated into a practical application.
The claim recites the combination of additional elements of “a modeling engine”, “a data modification engine”, “visualization engine, “interface circuitry”, “transaction analysis engine” and “a processor of a server device” performing the positively recited steps or acts. The claim recites the combination of additional elements of the service device interacting with a “interface of a mobile banking application”/ “user device associated with the user” for the “modifying” step or act. The additional element(s) is/ are recited at a high level of generality (i.e., as a generic computer performing the generic computer functions of (a) data processing (e.g., “determining”, “automatically assigning”, “modifying”, “reconciling”, etc. step(s) as claimed); (b) data receipt/ transmission (e.g., “obtaining”, etc. step(s) as claimed)). The additional element(s) is/ are recited at a high level of generality (i.e., as general means of gathering transactional data record information and information associated with a user, and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The technology used to perform the steps or acts is also recited at a high level of generality, and merely automates the step(s). Accordingly, the additional element(s) does not integrate the abstract idea into a practical application because it does not impose any meaningful limitations on practicing the abstract idea. The claim is directed to an abstract idea.
Since the claim(s) recite a judicial exception and fails to integrate the judicial exception into a practical application, the claim(s) is/are “directed to” the judicial exception. Thus, the claim(s) must be reviewed under the second step of the Alice/ Mayo analysis to determine whether the abstract idea has been applied in an eligible manner.
2(B): The claims do not provide an inventive concept (i.e., The claim(s) do not include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
As discussed with respect to Step 2A Prong Two, the additional element(s) in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Furthermore, the additional element(s) under STEP 2A Prong 2 have been evaluated in STEP 2B to determine if it is more than what is well-understood, routine conventional activity in the field. Applicant’s specification as filed 10/20/23 does not provide any indication that there is anything other than a generic, off-the-shelf computer component. Furthermore, the prosecution history of the instant application provides Chew, Hammond, Vudathu and Burris operating in a similar environment, suggesting performing tasks such as (a) data processing (e.g., “determining”, “automatically assigning”, “modifying”, “reconciling”, etc. step(s) as claimed); (b) data receipt/ transmission (e.g., “obtaining”, etc. step(s) as claimed) are well understood, routine and conventional. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed (a) data processing (e.g., “determining”, “automatically assigning”, “modifying”, “reconciling”, etc. step(s) as claimed); (b) data receipt/ transmission (e.g., “obtaining”, etc. step(s) as claimed) are well understood, routine and conventional. Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Symantec, TLI, OIP Techs and buySAFE court decisions cited in MPEP § 2106.05(D) (ii) indicate that mere collection or receipt of data over a network is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Accordingly, a conclusion that the additional elements are well-understood, routine, conventional activity is supported under Berkheimer.
For these reasons, there is no invention concept in the claim, and thus the claim is ineligible.
Dependent claims 2, 5 - 18 and 21 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Alice Corp. also establishes that the same analysis should be used for all categories of claims (e.g., product and process claims). Therefore, independent apparatus claim 19 and independent computer program product claim 20 is/are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as the method claims (claims 1 - 2, 5 - 18 and 21). The component(s) (e.g., “processor”, “a modeling engine”, “a data modification engine”, “visualization engine”, “interface circuitry”, “transaction analysis engine”, etc.) described in independent apparatus claim 19 and the component(s) (e.g., “at least one non-transitory computer readable storage medium”, “a processor of an apparatus”) described in independent computer program product claim 20, add nothing of substance to the underlying abstract idea. At best, the product (apparatus; computer program product) recited in the claim(s) are merely providing an environment to implement the abstract idea.
Dependent claims 22 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 19 and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 19 and 20 recite the limitation " wherein the interface of the mobile banking application including the modified visualization of the line item transaction is viewable at a user device associated with the user via the mobile banking application stored on the user device;”. There is insufficient antecedent basis for “the mobile banking application stored on the user device” in the claim. NOTE: Although there appears to be antecedent basis for a “mobile banking application”, there is not is not antecedent basis for a “mobile banking application stored on the user device” as claimed.
Response to Arguments
Objections
Please note the objections withdrawn and maintained in light of applicant’s arguments and/ or amendments.
101
Alice
Applicant's arguments have been fully considered but they are not persuasive.
(1)Applicant argues the claim(s) are not directed to a judicial exception (i.e., an abstract idea).
Certain Method of Organizing Human Activity
The claimed invention is directed to certain methods of organizing human activity.
The claimed invention encompasses fundamental economic principles or practices as it relates to processing of payments (i.e., reconciling transactional data record; refund or reimbursement).
The claimed invention encompasses commercial or legal interactions. Processing of payments (i.e., reconciling transactional data record; refund or reimbursement) relates to “sales activities or behaviors” and “business relations”.
The claimed invention encompasses managing personal behavior or relationships or interactions between people. For example, following rules or instructions (e.g., determining, automatically assigning, modifying, obtaining, reconciling).
See also, MPEP §2106.04(a)(2)(II).
Mental Processes
The claimed invention is directed to mental processes. The claimed invention encompasses observations, evaluations, judgements and opinions (e.g., “determining, ….. using a trained model, a likelihood that a purchase associated with a transactional data record will be returned by a user; determining ….. that the likelihood satisfies a predefined threshold; in response to determining that the likelihood satisfies the predefined threshold, automatically assigning ….. a pending return status indicator to the transactional data record, wherein the transactional data record is associated with the user”; “determining ….. that the first dataset corresponds to the transactional data record; and reconciling ….. the transactional data record based at least on the first dataset.”) which are examples of mental processes.
¿
(2)Applicant argues the judicial exception (i.e., an abstract idea) is integrated into a practical application.
Applicant suggests the claimed invention presents a “practical application” because it provides a technical solution to a technical problem (e.g., “Specifically, the claims do not merely recite generalized concepts of "reconciling [a] transactional data record" or a "refund" or "reimbursement" but rather set forth a specific and practical solution providing unique and previously unavailable benefit to customers and the broader field of digital purchasing.” See pg. 14 of applicant’s remarks as filed 8/28/25); and provides improvements in the functioning of a computer, or to any other technology or technical field (e.g., “Additionally, these additional elements integrate any judicial exception into a practical application, e.g., through an improvement to at least the technical field of digital product reimbursement management as described in the original specification at least at paragraphs [0002]-[0008] and [0090].” See pg. 14 of applicant’s remarks as filed 8/28/25.; “the claims provide a technical improvement by enabling management of potential returns through a ‘mobile banking application stored on the user device,’ as well as an interface ‘viewable at a user device associated with the user via the mobile banking application stored on the user device." See pg. 15 - 16 of applicant’s remarks as filed 8/28/25.). The Examiner disagrees.
Applicant’s arguments suggesting the claimed invention provides a technical solution to a technical problem; and provides improvements in the functioning of a computer, or to any other technology or technical field suggests the applicant believes the technical aspects of the invention are substantial. There exists alternative perspectives however.
With respect to applicant’s “solution”/ “improvements”. Processing of payments (i.e., reconciling transactional data record; refund or reimbursement) is directed to the underlying abstract idea, not the functioning of the computer itself. What applicant is really arguing is the use of a computer as a tool or the benefits of automation itself (e.g., improving time and effort, reducing administrative burden, minimizing the risk of human error, use of the computer as a tool or aide to human operators (e.g., consumer)).
For example see para. [0002] [0003] [0004] [0005] [0008] [0090] of applicant’s specification as filed 10/20/23:
[0002] Refund, return, and/or exchange policies can differ significantly between merchants. For example, return windows, restocking fees, refund types (e.g., cash or store credit), return shipping costs, original packaging requirements, clearance item policies, and the like can vary among merchants. Due to the high degree of variability in these policies, it may be difficult for a consumer to keep track of where, when, and how best to return products which they have purchased.
[0003] It is also common for consumers to make purchases with the intent of returning one or more of the purchased items. For example, a consumer may purchase three pairs of the same clothing item in different sizes for a growing child, with the intention of keeping one and returning the other two which do not fit. However, it can be challenging for the consumer to keep track of whether returns are properly processed, especially when performed online. For instance, due to the delay introduced by shipping products back to a merchant, consumers may worry about the status of their returns, whether they were received by the merchant and when they should expect a refund.
[0004] Traditionally, it has been very difficult to monitor returns and exchanges and whether appropriate refunds have been issued, especially in cases in which a consumer purchases and returns products in bulk or otherwise at a high rate. Managing returns and exchanges can consume a significant amount of time and effort, impacting the convenience of online shopping. In addition, a consumer often needs to utilize multiple digital applications in order to manage returns, which monopolizes computational resources and processing capabilities of their personal user device. For instance, a consumer may juggle between a mobile banking application (e.g., to check if a refund was issued to their account), an email application (e.g., to check if communications from a merchant were received), a notes application (e.g., to manually create and continuously update lists of products which they have returned or intend to return), a third-party merchant application (e.g., to initiate a return and/or inquire about a return), and/or other applications on their personal user device. Further, managing returns via third-party merchant applications often requires consumers to create accounts and share sensitive information with merchants (e.g., financial data such as account numbers, credit card information, personal identifiable information (PII), and the like) which leaves consumers vulnerable to having their personal information compromised in the event that a merchant is impacted by a data breach.
[0005] In contrast to these conventional techniques for managing product returns and refunds, example embodiments described herein provide intelligent and efficient digital product reimbursement management facilitated centrally through a secure mobile banking application. As described herein, in some embodiments, a mobile banking application may flag (e.g., automatically or through user input) selected purchases for returns based on a transactional data record (e.g., data associated with a line item transaction within the mobile banking application). By flagging purchases, visual indicators may be applied to assist a consumer with tracking purchases which they may return. In some embodiments, the mobile banking application may automatically retrieve and present return policy information, e.g., based on a merchant indicated in the line item.
[0008]Accordingly, the present disclosure sets forth systems, methods, and apparatuses that provide intelligent and efficient digital product reimbursement management facilitated centrally through a secure mobile banking application. There are many advantages of these and other embodiments described herein. For instance, returns and refunds may be tracked more efficiently through a centralized location (e.g., a mobile banking application), reducing the administrative burden that would otherwise be placed on an individual when attempting to track returns and refunds originating from a plurality of different merchants. In addition, embodiments minimize the risk of human error in recording return and refund data, leading to more accurate and reliable records. Additionally, users can check the status of their returns and refunds in real-time, reducing the need for customer support inquiries and enhancing transparency. Finally, embodiments described herein integrate refund and return tracking into a mobile banking application itself, expanding the potential user base significantly, and allowing use of refund tracking processes even for those without pre-existing detailed awareness of their financial transactions, and without the possibility for third-party data breaches related to transaction data.
[0090] As described above, example embodiments provide methods and apparatuses that enable improved digital product reimbursement management. Example embodiments thus provide tools that overcome the problems faced by traditional manual processes for tracking refunds and returns. For instance, embodiments herein enable returns and refunds to be tracked more efficiently through a centralized location (e.g., a mobile banking application), reducing the administrative burden that would otherwise be placed on an individual when attempting to track returns and refunds originating from a plurality of different merchants. In addition, embodiments minimize the risk of human error in recording return and refund data, leading to more accurate and reliable records. Additionally, users can check the status of their returns and refunds in real-time, reducing the need for customer support inquiries and enhancing transparency. Further, embodiments described herein integrate refund and return tracking into a mobile banking application itself, expanding the potential user base significantly, and allowing use of refund tracking processes even for those without pre-existing detailed awareness of their financial transactions, and without the possibility for third-party data breaches related to transaction data. As these examples all illustrate, example embodiments contemplated herein provide technical solutions that solve real-world problems faced during traditional manual processes for tracking refunds and returns.
For example see pg. 16 of applicant’s arguments/ remarks as filed 8/28/25:
For clarification, the above-quoted issues discussed in the Specification are specific technical problems stemming from specific computer-implemented interactions involved in digital product reimbursement management techniques performed using electronic devices. In other words, the problems are technical in nature and relate to the electronic and computer- implemented aspects of digital product reimbursement management specifically.
Adding the words “apply it” (or an equivalent) with the judicial exception is not
not indicative of integration into a practical application. See also, MPEP § 2106.05(f). Merely using a computer as a tool to perform an abstract idea; and mere instructions to implement an abstract idea on a computer are not indicative of integration into a practical application. See also, MPEP §2106.05(f).
Contrary to applicant’s arguments, features applicant relies upon are “insignificant”. For example, they amount to “necessary data gathering and outputting” (e.g., “obtaining ….. a first dataset associated with the user;”). Applicant places particular emphasis on the role of “using a trained model”. Use of a model as claimed is nominal and does not necessitate automation as applicant appears to suggest. Applicant places particular emphasis on the role of the “interface” (i.e., “an interface of a mobile banking application”/ “user device associated with a user”). The “interface” is not a component of the claimed machine. Applicant’s limitation is insignificant because it is directed to how the “interface” is intended to be used or presented at another, unclaimed device (i.e., “user device”) and is thus only tangentially or nominally related to the claimed invention. For example, claim 1 recites, “modifying ….. a visualization of a line item transaction corresponding to the transactional data record within an interface of a mobile banking application such that the modified visualization of the line item transaction corresponding to the transactional data record is visually different from a visualization of a second line item transaction within the interface that corresponds to a second transactional data record not assigned the pending return status indicator, wherein the interface of the mobile banking application including the modified visualization of the line item transaction is viewable at a user device associated with the user via the mobile banking application stored on the user device”.
Adding insignificant extra-solution activity to the judicial exception is not indicative of integration into a practical application. See also, MPEP §2106.05 (g).
Collecting information (e.g., ““obtaining ….. a first dataset associated with the user;”); analyzing it (e.g., “determining, ….. using a trained model, a likelihood that a purchase associated with a transactional data record will be returned by a user;
determining ….. that the likelihood satisfies a predefined threshold;
in response to determining that the likelihood satisfies the predefined threshold, automatically assigning ….. a pending return status indicator to the transactional data record, wherein the transactional data record is associated with the user, and wherein automatically assigning the pending return status indicator to the transactional data record comprises: modifying ….. a visualization of a line item transaction corresponding to the transactional data record within an interface of a mobile banking application”; and “determining ….. that the first dataset corresponds to the transactional data record; and
reconciling ….. the transactional data record based at least on the first dataset.”
); and displaying certain results of the collection and analysis (e.g., “such that the modified visualization of the line item transaction corresponding to the transactional data record is visually different from a visualization of a second line item transaction within the interface that corresponds to a second transactional data record not assigned the pending return status indicator, wherein the interface of the mobile banking application including the modified visualization of the line item transaction is viewable at a user device associated with the user via the mobile banking application stored on the user device;” merely indicates a field of use or technical environment in which to apply the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use is not indicative of integration into a practical application. See also, MPEP §2106.05 (h).
(3) Applicant argues inventive concept (i.e., The claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)). Applicant argues the claimed invention is not “well-understood, routine and conventional”.
As discussed with respect to Step 2A Prong Two, the additional element(s) in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Furthermore, the additional element(s) under STEP 2A Prong 2 have been evaluated in STEP 2B to determine if it is more than what is well-understood, routine conventional activity in the field. Applicant’s specification as filed 10/20/23 does not provide any indication that there is anything other than a generic, off-the-shelf computer component. Furthermore, the prosecution history of the instant application provides Chew, Hammond, Vudathu and Burris operating in a similar environment, suggesting performing tasks such as (a) data processing (e.g., “determining”, “automatically assigning”, “modifying”, “reconciling”, etc. step(s) as claimed); (b) data receipt/ transmission (e.g., “obtaining”, etc. step(s) as claimed) are well understood, routine and conventional. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed (a) data processing (e.g., “determining”, “automatically assigning”, “modifying”, “reconciling”, etc. step(s) as claimed); (b) data receipt/ transmission (e.g., “obtaining”, etc. step(s) as claimed) are well understood, routine and conventional. Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Symantec, TLI, OIP Techs and buySAFE court decisions cited in MPEP § 2106.05(D) (ii) indicate that mere collection or receipt of data over a network is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Accordingly, a conclusion that the additional elements are well-understood, routine, conventional activity is supported under Berkheimer.
For these reasons, there is no invention concept in the claim, and thus the claim is ineligible.
Dependent claims 2, 5 - 18 and 21 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Alice Corp. also establishes that the same analysis should be used for all categories of claims (e.g., product and process claims). Therefore, independent apparatus claim 19 and independent computer program product claim 20 is/are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as the method claims (claims 1 - 2, 5 - 18 and 21). The component(s) (e.g., “processor”, “a modeling engine”, “a data modification engine”, “visualization engine”, “interface circuitry”, “transaction analysis engine”, etc.) described in independent apparatus claim 19 and the component(s) (e.g., “at least one non-transitory computer readable storage medium”, “a processor of an apparatus”) described in independent computer program product claim 20, add nothing of substance to the underlying abstract idea. At best, the product (apparatus; computer program product) recited in the claim(s) are merely providing an environment to implement the abstract idea.
Dependent claims 22 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
(4)Applicant argues preemption or that there is not a monopoly on the alleged ‘judicial exception’.
With regard to preemption, the issue comes down to whether the claim is directed to an abstract idea and does it fail the Mayo/Alice step one and step two analysis.
In the instant case, the claims are directed to the concept of determining, by a modeling engine and via a processor of a server device and using a trained model, a likelihood that a purchase associated with a transactional data record will be returned by a user; determining, by the modeling engine and via the processor of the server device, that the likelihood satisfies a predefined threshold; in response to determining that the likelihood satisfies the predefined threshold, automatically assigning, by a data modification engine and via the processor of the server device, a pending return status indicator to the transactional data record, wherein the transactional data record is associated with the user, and wherein automatically assigning the pending return status indicator to the transactional data record comprises: modifying, by a visualization engine and via the processor of the server device, a visualization of a line item transaction corresponding to the transactional data record within an interface of a mobile banking application such that the modified visualization of the line item transaction corresponding to the transactional data record is visually different from a visualization of a second line item transaction within the interface that corresponds to a second transactional data record not assigned the pending return status indicator, wherein the interface of the mobile banking application including the modified visualization of the line item transaction is viewable at a user device associated with the user via the mobile banking application stored on the user device; obtaining, by interface circuitry and via the processor of the server device, a first dataset associated with the user; determining, by a transaction analysis engine and via the processor of the server device, that the first dataset corresponds to the transactional data record; and
reconciling, by the transaction analysis engine and via the processor of the server device, the transactional data record based at least on the first dataset which is similar to other (e.g., certain methods of organizing human activity, mental processes) found to be abstract ideas.
The fact that the claims do not preempt all ways of determining, by a modeling engine and via a processor of a server device and using a trained model, a likelihood that a purchase associated with a transactional data record will be returned by a user; determining, by the modeling engine and via the processor of the server device, that the likelihood satisfies a predefined threshold; in response to determining that the likelihood satisfies the predefined threshold, automatically assigning, by a data modification engine and via the processor of the server device, a pending return status indicator to the transactional data record, wherein the transactional data record is associated with the user, and wherein automatically assigning the pending return status indicator to the transactional data record comprises: modifying, by a visualization engine and via the processor of the server device, a visualization of a line item transaction corresponding to the transactional data record within an interface of a mobile banking application such that the modified visualization of the line item transaction corresponding to the transactional data record is visually different from a visualization of a second line item transaction within the interface that corresponds to a second transactional data record not assigned the pending return status indicator, wherein the interface of the mobile banking application including the modified visualization of the line item transaction is viewable at a user device associated with the user via the mobile banking application stored on the user device; obtaining, by interface circuitry and via the processor of the server device, a first dataset associated with the user; determining, by a transaction analysis engine and via the processor of the server device, that the first dataset corresponds to the transactional data record; and reconciling, by the transaction analysis engine and via the processor of the server device, the transactional data record based at least on the first dataset in a particular setting does not make them any less abstract. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (collecting cases); Accenture, 728 F.3d at 1345.
Therefore, based on the two-part Alice Corp. analysis, there are no meaningful limitations in the claims that transform the exception (i.e., abstract idea) into a patent eligible application.
Software Per Se
Withdrawn in light of applicant’s arguments and/ or amendments.
112
Please note the rejections withdrawn and maintained in light of applicant’s arguments and/ or amendments.
Prior Art
Withdrawn in light of applicant’s arguments and/ or amendments.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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SARA CHANDLER HAMILTON
Primary Examiner
Art Unit 3695
/SARA C HAMILTON/Primary Examiner, Art Unit 3695