DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, 18/495,515, was filed on 10/26/2023, and does not claim foreign priority or domestic benefit to any other application.
The effective filing date is after the AIA date of March 16, 2013, and so the application is being examined under the “first inventor to file” provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of the Application
This Final Office Action is responsive to the Amendment filed on January 13, 2026.
Claims 1, 3-7, 9, 11-15, and 17-20 are pending, of which claims 1, 9, and 17 are independent.
Claims 8 and 16 are newly cancelled, and claims 2 and 10 were previously cancelled.
All pending claims have been examined 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, 3-7, 9, 11-15, and 17-20 are rejected under 35 U.S.C. §101 because the claimed invention is directed to non-statutory subject matter. The claimed invention is directed to an abstract idea, without “significantly more”.
Based on the flowchart in MPEP § 2106, Step 1 of the Alice/Mayo analysis is: “Is the claim to a process, machine, manufacture or composition of matter?”
In regards to Step 1 of the Alice/Mayo analysis, independent claim 1 is a method claim, claim 9 is an apparatus claim, and claim 17 is an article of manufacture claim or product by process claim (“non-transitory computer readable medium”).
For the sake of compact prosecution, we continue with the Alice/Mayo “abstract idea” analysis.
Step 2A, prong 1 of the Alice/Mayo analysis is: “Does the claim recite a law of nature, a natural phenomenon (product of nature), or an abstract idea?”
In regards to Step 2A, prongs 1 and 2 of the Alice/Mayo analysis, the abstract idea elements recited in independent claim 9 are shown in italic font. (The “additional elements” and “extra solution steps” are shown in italic and underlined font):
9. (Currently amended) A system, comprising:
a customer electronic device associated with a customer;
a trusted entity comprising a trusted entity computer processor executing a trusted entity computer program that is configured to receive, from the customer electronic device, customer personal information and to associate the customer personal information with a payment instrument; and
a third party system comprising a third party computer processor executing a third party computer program that is configured to provide the trusted entity computer program with the payment instrument and a request for personal information verification from the trusted entity computer program for a transaction involving the customer, wherein the request does not include personal information for the customer;
wherein the trusted entity computer program is configured to automatically identify, using a trained machine learning engine, personal information fields in the customer personal information necessary to respond to the request for personal information verification,
wherein the trained machine learning engine is trained on historic personal identification verification requests from third parties
to predict the personal information fields,
to retrieve the customer personal information associated with the payment instrument for the identified personal information fields required by the third party system in response to the request,
to generate a Boolean response based on a type of the transaction and the retrieved customer personal information,
to return a payload comprising the Boolean response to the third party system, wherein the third party system does not receive the customer personal information for the customer, and
to notify the customer electronic device that the third party system requested the personal information verification.
More specifically, claims 1, 3-7, 9, 11-15, and 17-20 recite an abstract idea: “Certain Methods of Organizing Human Activity", specifically “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)”, or “Managing Personal Behavior or Relationships or Interactions Between People (Including Social Activities, Teaching, and Following Rules or Instructions)” as discussed in MPEP §2106(a)(2) Parts (I) and (II), and in the 2019 Revised Patent Subject Matter Eligibility Guidance.
The “Commercial or Legal Interactions” elements include:
“associate the customer personal information with a payment instrument”.
“automatically identify, using a trained machine learning engine, personal information fields in the customer personal information necessary to respond to the request for personal information verification”.
“wherein the trained machine learning engine is trained on historic personal identification verification requests from third parties to predict the personal information fields”.
“generate a Boolean response based on a type of the transaction and the retrieved customer personal information”.
The “additional elements” include: “a customer electronic device”, “a trusted entity computer processor”, “a third party computer processor”, and “a trained machine learning engine”.
The “additional extra-solution elements” include:
“receive, from the customer electronic device, customer personal information”,
“provide the trusted entity computer program with the payment instrument”,
“provide … a request for personal information verification from the trusted entity computer program for a transaction involving the customer”,
“retrieve the customer personal information associated with the payment instrument for the identified personal information fields required by the third party system in response to the request”, and
“return a payload comprising the Boolean response to the third party system, wherein the third party system does not receive the customer personal information for the customer”.
Step 2A, prong 2 of the Alice/Mayo analysis is “Does the claim recite additional elements that integrate elements that integrate the judicial exception into a practical application?”
In regards to Step 2A, prong 2 of the Alice/Mayo analysis, this abstract idea is not integrated into a practical application, because:
The claim is directed to an abstract idea with additional generic computer elements. The generically recited computer elements (“a customer electronic device”, “a trusted entity computer processor”, “a third party computer processor”, and “a trained machine learning engine”) do not add a meaningful limitation to the abstract idea, because they amount to simply implementing the abstract idea on a computer. The claim amounts to adding the words "apply it" (or an equivalent) with the abstract idea, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea.
The claim amounts to adding the words "apply it" (or an equivalent) with the abstract idea, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, such as in the following feature: “wherein the trusted entity computer program is configured to automatically identify, using a trained machine learning engine, personal information fields in the customer personal information necessary to respond to the request for personal information verification”.
In regards to “apply it” (applying the abstract idea on a general purpose computer), the 35 USC § 101 rejections are based on the CAFC decision in Recentive Analytics, Inc. v. Fox Corp. April 18, 2025 (https://www.cafc.uscourts.gov/opinions-orders/23-2437.OPINION.4-18-2025_2500790.pdf).
The Recentive Analytics decision states (see page 10 of the verdict): “This case presents a question of first impression: whether claims that do no more than apply established methods of machine learning to a new data environment are patent eligible. We hold that they are not.”
The Examiner holds that Applicant’s claimed features of the neural network merely recites “apply it” uses of a generic neural network.
The extra-solution activities (“receive”, “provide”, “retrieve”, and “return a payload”) do not add a meaningful limitation to the method, as they are insignificant extra-solution activity;
The combination of the abstract idea with the additional elements (generically recited computer elements), and/or with the extra-solution activities, does not integrate the abstract idea into a practical application.
Step 2B of the Alice/Mayo analysis is: “Does the claim recite additional elements that amount to significantly more than the judicial exception?”
In regards to Step 2B of the Alice/Mayo analysis, the claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea, because:
When considering the elements "alone and in combination" (“a customer electronic device”, “a trusted entity computer processor”, “a third party computer processor”, and “a trained machine learning engine”), they do not add significantly more (also known as an "inventive concept") to the exception, because they amount to simply implementing the abstract idea on a computer. Instead, they merely add the words "apply it" (or an equivalent) with the abstract idea, or mere instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea.
Instead, they merely apply established methods of machine learning to a new data environment, as held to be unpatentable in the Recentive Analytics case.
In regards to the extra solution activities (“receive”, “provide”, “retrieve”, and “return a payload”), these are recognized as such by the court decisions listed in MPEP § 2106.05(d).
More specifically, in regards to the “receive”, “provide”, “retrieve”, and “return a payload” steps, see the court cases OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network) and (presenting offers and gathering statistics), OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network).
Moreover, in regards to “apply it”, according to MPEP § 2106.05(f)(2):
Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015).
In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
The Examiner holds that the independent claims “use a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data)” or “simply add a general purpose computer or computer components after the fact to an abstract idea”.
Independent claims 1 and 17 are rejected on the same grounds as independent claim 9. Independent claim 17 is also rejected on the grounds that it recites a computer-readable medium, which is merely another generic computer component.
All dependent claims are also rejected, because they merely further define the abstract idea.
Response to Amendment
Applicant's amendments to the independent claims 1, 9, and 17 necessitated the new ground(s) of rejection presented in this Office action.
In regards to “apply it” (applying the abstract idea on a general purpose computer), the 35 USC § 101 rejections are based on the CAFC decision in Recentive Analytics, Inc. v. Fox Corp. April 18, 2025 (https://www.cafc.uscourts.gov/opinions-orders/23-2437.OPINION.4-18-2025_2500790.pdf).
The Recentive Analytics decision states (see page 10 of the verdict): “This case presents a question of first impression: whether claims that do no more than apply established methods of machine learning to a new data environment are patent eligible. We hold that they are not.”
The Examiner holds that Applicant’s claimed features of the neural network merely recites “apply it” uses of a generic neural network.
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 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 should be directed to Examiner Ayal Sharon, whose telephone number is (571) 272-5614, and fax number is (571) 273-1794. The Examiner can normally be reached from Monday to Friday between 9 AM and 6 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SPE Christine Behncke can be reached at (571) 272-8103 or at christine.behncke@uspto.gov. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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Sincerely,
/Ayal I. Sharon/
Examiner, Art Unit 3695
September 1, 2026
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