DETAILED ACTION
1. 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 .
2. Status of Application and Claims
Claims 1-20 are pending.
This office action is being issued in response to the Applicant's filing(s) on 11/13/2023.
3. Claim Interpretation
The subject matter of a properly construed claim is defined by the terms that limit its scope when given their broadest reasonable interpretation. see MPEP §2013(I)(C). Specifically, the “broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). However, “[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim.” See MPEP §2111.01, citing Superguide Corp. v. DirecTV Enterprises, Inc., 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See MPEP §2111, citing In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984).
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. See MPEP §2013(I)(C).
As such, claim limitations that contain statement(s) such as “if,” “may,” “might,” “can,” and “could” are treated as containing optional language. See MPEP §2013(I)(C). As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted. See MPEP §2013(I)(C).
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. See MPEP §2111.04(II). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See MPEP §2143.03, citing Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009);
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble. See MPEP §2111.02;
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby.” See MPEP §2111.04;
Contingent limitations. See MPEP §2111.04(II);
Printed matter. See MPEP §2111.05; and
Functional language associated with a claim term. See MPEP §2181.
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following italicized, underlined and/or boldened language is interpreted as not further limiting the scope of the claimed invention.
Additionally, the following italicized, underlined and emboldened language is not necessarily an exhaustive list of claim language that is interpreted as not further limiting the scope of the claimed invention. Applicant should review all claims for additional claim interpretation issues.
Claim 1 recites a method comprising:
determining, by inputting the one or more first normalized attributes and the one or more second normalized attributes into a machine model, a first likelihood of a future fraud instance associated with the first user, wherein the machine learning model is trained to output, based on an input of normalized attributes associated with each of a plurality of fraud instances, a likelihood of a future fraud instance of a user associated with the plurality of input fraud instances.
Method claims are defined by the method steps being actively performed, not method steps that may or may not be performed. Reciting a system element in a method claim is configured to perform a method step (i.e., trained to output a likelihood of a future fraud instance) does not mean that the method step is actually performed (i.e., outputting a likelihood of a future fraud instance).
Claim 1 recites a method comprising:
sending, based on the first likelihood exceeding a threshold, an alert.
The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent is not met. See MPEP §2111.04(II).
Usage of the term and/or phrase “based on the first likelihood exceeding a threshold” in Claim 1 suggests that there remains the possibility that the contingent limitations are not performed as the condition(s) precedent is not met (i.e., the first likelihood does not exceed a threshold). Therefore, the claim limitations based upon the condition are optional claim limitations. As a matter of linguistic precision, optional claim limitations do not narrow the scope of the invention, since they can always be omitted. See MPEP §2111.04(II).
As the Applicant does not address what happens should the optional claim limitation(s) fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
Claim 6 recites a method comprising wherein the one or more first attributes comprise a first risk score determined by a second machine learning model trained to predict a risk score associated with fraud instances of a first fraud category; and the one or more second attributes comprise a second risk score determined by a third machine learning model trained to predict a risk score associated with fraud instances of a second fraud category.
Method claims are defined by the method steps being actively performed, not method steps performed in the past (i.e., scores determined by a machine learning model). Claiming method steps in the past tense can be interpreted as the method steps performed in the past are outside the scope of the claimed method. Alternatively stated, the scope of the claimed method are the active method steps which are building off a pre-existing state. The method steps performed for creation of the pre-existing state are outside the scope of the claimed invention.
Claim 7 discloses a method discloses a method comprising sending a request to take a remedial action that comprises at least one of: denial of a future transaction request; or suspending an account associated with the first user.
Claim elements (i.e., contents of the transmitted request) pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Claim 14 results in a similar claim interpretation.
4. 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 the claimed invention is directed to an abstract idea without significantly more.
STEP 1
The claimed invention falls within one of the four statutory categories of invention (i.e., process, machine, manufacture and composition of matter). See MPEP §2106.03.
STEP 2A – PRONG ONE
The claim(s) recite(s) a method, a system to perform a method and/or computer-readable medium containing instructions, when executed, causes a computer to perform a method comprising:
receiving, by a first [entity] from a second [entity], a first activity instance, associated with a first user, occurred at a first time;
receiving, by the first [entity] from a third [entity], a second activity instance, associated with the first user, occurred at a second time;
aggregating, …, the first activity instance and the second activity instance by normalizing:
one or more first attributes associated with the first activity instance; and one or more second attributes associated with the second activity instance;
determining, by inputting the one or more first normalized attributes and the one or more second normalized attributes into a … model, a first likelihood of a future fraud instance associated with the first user, wherein the machine learning model is trained to output, based on an input of normalized attributes associated with each of a plurality of fraud instances, a likelihood of a future fraud instance of a user associated with the plurality of input fraud instances; and
sending, based on the first likelihood exceeding a threshold, an alert.
These limitations, as drafted, under its broadest reasonable interpretation, covers a series of steps instructing how to detect and/or predict fraud which is a fundamental economic practice, a sub-category of certain method(s) of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(A).
Examiner notes that detecting and/or predicting fraud is mitigation of financial risk and that the mitigation of financial risk is a court-provided example of a fundamental economic practice. See MPEP §2106.04(a)(2)(II)(A), citing Alice Corp. v. CLS Bank. (2014).
Additionally, these limitations, as drafted, under its broadest interpretation, covers a series of steps that can be practically performed in the human mind (e.g., observations, evaluations, judgments and opinions) which are mental process, a second enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(III).
Examiner notes that “’collecting information, analyzing it, and displaying certain results of the collection and analysis,’ where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind” is a court-provided example of a mental process. See MPEP §2106.04(a)(2)(III)(A) citing Electric Power Group v. Alstom, SA. (Fed. Cir. 2016).
Accordingly, the claimed invention recites an abstract idea.
STEP 2A – PRONG TWO
The claimed invention recites additional elements (i.e., computer elements) of computing device(s) (Claim(s) 1, 8 and 15), an application programming interface (Claim(s) 1, 8 and 15), and a machine model (Claim(s) 1, 8 and 15).
The claimed invention does not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field; improvements to the functioning of the computer itself; are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; are not applying the judicial exception with or by use of a particular machine; are not effecting a transformation or reduction of a particular article to a different state or thing; and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §2106.04(d).
The additional elements are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. See MPEP §2106.05(f). Alternately, the additional elements amount to no more than generally linking the exception to a particular technological environment or field of use. See MPEP §2106.05(h). Accordingly, these additional element(s), when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Accordingly, the claimed invention is directed to an abstract idea without a practical application.
STEP 2B
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer. See MPEP §2106.07(a)(II). The same analysis applies in Step 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. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
DEPENDENT CLAIMS
Dependent Claim(s) 2-7, 9-14 and 16-20 recite claim limitations that further define the abstract idea recited in respective independent Claim(s) 1, 8 and 15. As such, the dependent claims are also grouped an abstract idea utilizing the same rationale as previously asserted against the independent claims.
Dependent Claim(s) recite additional elements (i.e., computer elements) of additional machine model(s) (Claim(s) 6, 13 and 20).
In each case, the additional element(s) are recited at a high level of generality such that these additional element(s) amount to no more than mere instructions to apply the exception using a generic computer component.
The dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the judicial exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination utilizing the same rationale as previously asserted against the independent claims.
Accordingly, the dependent claim(s) are also not patent eligible.
Appropriate correction is requested.
5. Claim Rejections - 35 USC § 112 (b)
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 5, 12 and 19 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.
Claim 5 recites a method wherein the first activity instance is associated with a suspicious activity, and wherein the second activity instance is associated with a confirmed fraud activity.
Claim 5, as written, contains terms that are subjective or determinations of whether the claim limitations are satisfied are subjective. Specifically, said claims contain terminology such as “associated with a suspicious activity.” Claims are indefinite in circumstances where a claim contains a term that is completely dependent on a person’s subjective opinion. See MPEP §2173.05(b)(IV). As such, claims containing the cited claim limitations are rejected under §112, 2nd paragraph. Claims 12 and 19 are rejected based upon similar claim language.
Appropriate correction is requested.
6. 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, 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 for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hosseinali (US PG Pub. 2024/0211951) in view of Phatak (US PG Pub. 2022/0006899).
Regarding Claim 1, Hosseinali discloses a method comprising:
receiving, by a first computing device (merchant fraud detection system) from a second computing device (merchant system 120-1), a first activity instance (underlying transaction of the transaction data), associated with a first user, occurred at a first time (within a specific time period). (see fig. 1; para. 23,29 and 35);
receiving, by the first computing device (merchant fraud detection system) from a third computing device (merchant system 120-n), a second activity instance (underlying transaction of the transaction data), associated with the first user, occurred at a second time (within a flow of events or within an order of various events). (see fig. 1; para. 23, 29 and 35);
aggregating, via an application programming interface (API) (see para. 29 and 33), the first activity instance and the second activity instance by normalizing (standardizing):
one or more first attributes (value or data element) associated with the first activity instance (underlying transaction of the transaction data). (see para. 39 and 43); and
one or more second attributes (value or data element) associated with the second activity instance (underlying transaction of the transaction data). (see para. 39 and 43);
determining, by inputting the one or more first normalized attributes and the one or more second normalized attributes into a machine model, a first likelihood of a fraud instance associated with the first user, wherein the machine learning model is trained to output, based on an input of normalized attributes associated with each of a plurality of fraud instances, a likelihood of a fraud instance of a user associated with the plurality of input fraud instances. (see para. 43); and
sending, based on the first likelihood exceeding a threshold, an alert (informing one or more third parties). (see para. 47-48).
Hosseinali does not explicitly teach a method wherein the fraud is future fraud. However, Hosseinali does disclose “the detection of merchant fraud and potential remediative actions may be taken before the conclusion of the transactions to prevent its completion in the event of fraud.” (see para. 61). Examiner asserts that when fraud is detected before completion of the fraud event, then the detected fraud is future fraud (i.e., the detected fraud becomes actual present fraud at completion of the fraud event).
Regardless, Phatak discloses a method wherein the likelihood of fraud is a likelihood of future fraud instance (pre-ATO fraud is a prediction of actual ATO fraud in the future). (see para. 50).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Hosseinali to incorporate a prediction of future fraud, as suggested by Hosseinali and disclosed by Phatak, thereby allowing for prevention of a fraudulent event which may occur in the future, rather than recovering from a fraudulent event that occurred in the past.
Regarding Claim 2, Hosseinali does not teach a method wherein the determining the first likelihood comprises using the machine learning model to: assign, based on the first activity instance belonging to a first fraud category, a first weight to the one or more first normalized attributes; assign, based on the second activity instance belonging to a second fraud category, a second weight to the one or more second normalized attributes, wherein the first weight is different from the second weight; and determine, based on the first weight and the second weight, the likelihood.
Phatak discloses a method wherein the determining the first likelihood comprises using the machine learning model to:
assign, based on the first activity instance belonging to a first fraud category (fraud type), a first weight to the one or more first attributes (attributes, values or events). (see para. 13-14, 31 and 54);
assign, based on the second activity instance belonging to a second fraud category (fraud type), a second machine learning model to the one or more second attributes (attributes, values or events), wherein the first weight is different from the second weight. (see para. 13-14, 31 and 54); and
determine, based on the first weight and the second weight, the likelihood. (see para. 29).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Hosseinali and Phatak to incorporate different weights to different attributes, disclosed by Phatak, thereby weighting attributes based upon the importance of the associated fraud categories of the respective attributes.
Regarding Claim 3, Hosseinali discloses a method wherein the first fraud category is one of payment fraud, an application fraud or a transaction fraud (running card cashing schemes, establishing false agents that collect payments for fraudulent purposes, and otherwise obtaining and/or stealing money from parties and systems under false pretenses). (see para. 4).
Regarding Claim 4, Hosseinali does not teach a method wherein determining the likelihood is based on a time duration between the first time and the second time.
Phatak discloses a method wherein determining the likelihood (of fraud) is based on a time duration between the first time and the second time (some types of fraud occur in short period or burst). (see para. 48).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Hosseinali and Phatak to acknowledge that the likelihood of fraud is based upon the time between events, disclosed by Phatak, as some fraud events occur within a short period or burst (i.e., a short time duration between events), as disclosed by Phatak.
Regarding Claim 5, Hosseinali discloses a method wherein the first activity instance (charge decline rate of the transactions associated with the merchant system or total number of reversals over a period of time) is associated with a suspicious activity, and wherein the second activity instance is associated with a confirmed fraud activity. (see para. 39, 43 and 63).
Regarding Claim 6, Hosseinali discloses a method wherein:
the one or more first attributes comprise a first risk score determined by a second machine learning model trained to predict a risk score associated with fraud instances of a first fraud category (type of fraudulent merchant activities). (see fig 3A; para. 28 and 43); and
the one or more second attributes comprise a second risk score determined by a third machine learning model trained to predict a risk score associated with fraud instances of a second fraud category (type of fraudulent merchant activities). (see fig. 3A; para. 28 and 43).
Regarding Claim 7, Hosseinali discloses a method comprising sending a request to take a remedial action that comprises at least one of: denial of a future transaction request; or suspending an account associated with the first user (the transaction can be blocked, a merchant system account can be frozen or suspended, a merchant account can be deactivated). (see para. 33).
Regarding Claims 8-20, such claim(s) recite substantially similar limitations as claimed in previously rejected claim(s) and, therefore, would have been obvious based upon previously rejected claim(s).
7. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON M. BORLINGHAUS whose telephone number is (571)272-6924. The examiner can normally be reached M-F 9-5.
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, RYAN D. DONLON can be reached at (571)270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692 March 13, 2026