DETAILED ACTION
This Office action is in reply to correspondence filed 25 May 2026 in regard to application no. 18/529,067. Claims 2-5 and 21-42 have been cancelled. Claims 1, 6-20 and 43-45 are pending, of which claims 18-20 have been withdrawn from consideration. Claims 1, 6-17 and 43-45 are considered below.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 24 April 2026 has been entered.
Claim Objections
Claim 1 is objected to because of the following informalities: there is a period mid-claim, on the bottom line of pg. 2. A patent claim must consist of a single sentence and end with a period, with no periods mid-claim unless used to abbreviate See MPEP § 608.01(m). 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, 6-17 and 43-45 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims lie within a statutory category of invention, as each is directed to a system (machine). The claims recite conditionally receiving a request to access financial accounts and deliver a result, conditionally receiving a confirmation message, delivering a second result, analyzing data in no particular manner but merely for a particular purpose, making a prediction about future transactions, conducting a dialogue, verifying a user's identity, authenticating accounts, delivering a message, and allowing access to accounts without receiving additional request.
As all of this is directed to allowing a user to access information about a financial account, it recites a fundamental business practice and a commercial interaction, each of which is among the "certain methods of organizing human activity" deemed abstract.
Further, these are steps that can be and have been, in the absence of computers and nondescript use of machine learning, performed mentally and by accessing paper records. A bank manager can verify a customer's identity e.g. by personal recognition, and can grant access to account information or direct others to do so; the access can be granted by allowing the customer to peruse paper records. All of this can be done based on the customer making a single request. None of this presents any practical difficulty and none requires any technology beyond paper records.
This judicial exception is not integrated into a practical application because aside from the bare inclusion of a generic computer and nondescript use of machine learning, discussed below, nothing is done beyond what was set forth above, which does not go beyond generally linking the abstract idea to the technological environment of Al enabled, networked computers. See MPEP § 2106.05(h).
As the claims only manipulate data pertaining to a person's identity, financial account information and the like, they do not improve the "functioning of a computer" or of "any other technology or technical field". See MPEP § 2106.05(a). They do not apply the abstract idea "with, or by use of a particular machine", MPEP § 2106.05(b), as the below-cited Guidance is clear that a generic computer is not the particular machine envisioned.
They do not effect a "transformation or reduction of a particular article to a different state or thing", MPEP § 2106.05(c). First, such data, being intangible, are not a particular article at all. Second, the claimed manipulation is neither transformative nor reductive; as the courts have pointed out, in the end, data are still data.
They do not apply the abstract idea "in some other meaningful way beyond generally linking [it] to a particular technological environment", MPEP § 2106.05(e), as the lack of technical and algorithmic detail in the claims is so as not to go beyond such a general linkage.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional claim limitations, considered individually and as an ordered combination, are insufficient to elevate an otherwise-ineligible claim to patent eligibility.
The claim includes various named software subcomponents and a computer including a processor, memory and instructions. These elements are recited at a high degree of generality, and the specification does not meaningfully limit them, such that a generic computer will suffice.
It only performs generic computer functions of nondescriptly manipulating information and sharing information with persons and/or other devices. Generic computers performing generic computer functions, without an inventive concept, do not amount to significantly more than the abstract idea.
In light of Recentive (cited in the previous Office action), the use of known machine learning techniques where the only difference is the type of data being manipulated is not sufficient to elevate an otherwise-unpatentable invention to eligibility.
The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. The claim elements when considered as an ordered combination - at most, a generic computer performing a sequence of abstract steps - do nothing more than when they are analyzed individually.
The dependent claims further do not amount to significantly more than the abstract idea: claims 6, 11-17, 43 and 44 are simply further descriptive of the type of information being manipulated; claims 7 and 10 simply are further descriptive of what is connected to a generic network; claims 8 and 9 simply recite further reception and transmission of data. Claim 45 simply combines further description of data with steps performed by an external, unclaimed device.
The claims are not patent eligible. For further guidance please see MPEP § 2106.03 - 2106.07(c) (formerly referred to as the "2019 Revised Patent Subject Matter Eligibility Guidance", 84 Fed. Reg. 50, 55 (7 January 2019)).
Response to Arguments
Applicant's arguments filed 24 April 2026 have been fully considered but they are not persuasive. The Examiner is familiar with the Appeal Panel Review decision in Ex Parte Desjardins to which the applicant refers (though it was not a “memo”), but does not find it particularly applicable to the present claims. As was previously explained, simply processing less data (which would include processing fewer clicks) is not an improvement to a computer or other technology.
The Examiner certainly agrees, stretching his own analogy, that improving the design of a refrigerator may result in a better refrigerator. However, the present claims are more akin to simply storing one bottle of milk on a refrigerator shelf rather than multiple bottles. That is to say, simply requiring less input is not an improvement to the design of a computer, nor does it improve a computer or other technology.
In the previous Office action, the Examiner pointed out the ubiquity of this argument in the data processing arts generally, and remarked that he has never seen a single source of authority for the proposition that reducing the amount of data processed by a computer is an improvement to the computer. The Examiner suspects this is because no such source of authority exists.
The Examiner sees nothing in any claim of the present invention that changes or even defines the architecture of any computer in any way. It appears that the claims are performed by one to (possibly) three computers, only one of which is positively claimed, and no structure at all is claimed, but only software performing a sequence of abstract steps.
The applicant asserts results of improvements, but nothing in the claim that actually causes any improvement to occur. The “large number of computations”, etc., goes far beyond what any claim actually requires and so is of no effect on the § 101 analysis. Further, the courts and PTAB have consistently held that the ability to process large amounts of data, without more, is insufficient to confer patent eligibility in that, for example, the “fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter”1.
That “encoding and decoding” must “necessarily” take place is, first, not reflective of anything in the claims; and if it must necessarily take place, it must have been well-understood, routine and conventional at the relevant time. More efficient completion of financial transactions is at most an improvement to a business occurrence and not technology, and simply referring to computers performing such transactions as “fintech” does not alter that.
The applicant makes repeated references to the Desjardin decision, but the claims there presented details as to how machine learning functioned, in an arguably novel and non-obvious way. By contrast, the present claims merely specify the purpose of machine learning and what type of data are processed, which is much closer to the claims of Recentive than to those of Desjardins.
The claims are not patent eligible and the rejection is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT C ANDERSON whose telephone number is (571)270-7442. The examiner can normally be reached M-F 9:00 to 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett Sigmond can be reached at (303) 297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT C ANDERSON/ Primary Examiner, Art Unit 3694
1 Fairwarning IP, LLC v. Iatric Systems, Inc. F.3d 839 1089 (Fed. Cir. 2016) quoting Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012)
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