DETAILED ACTION
This Office action is in reply to correspondence filed 17 June 2026 in regard to application no. 18/533,064. Claims 5, 7, 8, 13, 15, 20 and 22 have been cancelled. Claims 1-4, 6, 9-12, 14, 16-19, 21, 23 and 24 are pending and 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 .
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 1-4, 6, 9-12, 14, 16-19, 21, 23 and 24 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 statutory categories of invention, as each is directed to a method (process), non-transitory computer readable medium (manufacture) or computer (machine).
The claim(s) recite(s) two data gathering steps (the first and second “receiving” steps), adding information in no particular manner, grouping features in no particular manner but simply based on certain criteria, sending information to two destinations (the “dispatching” step), determining an indication of fraud in no particular manner but simply based on the available data, indicating a lack of fraud, and essentially repeating the last few steps a second time while blocking implementation of certain rules.
First, making determinations of fraud is a commercial interaction and a fundamental business practice, both among the “certain methods of organizing human activity” deemed abstract. Second, these are steps which, in the absence of computers, could be performed mentally and with pen and paper records.
Merchants, banks, insurers and the like routinely gather records as a part of their business, and did so for decades before there was any such thing as a computer. Such a person can mentally determine whether or not an instrument is fraudulent, for example by observing a watermark or a lack thereof, noting that a signature does or does not match a signature on file, etc. Such a person can send information to others, e.g. verbally or via the post, and can repeat a process a second time. None of this presents any practical difficulty, and none requires any technology beyond the use of pens and paper.
This judicial exception is not integrated into a practical application because aside from the bare inclusion of a generic computer and well-understood, routine and conventional techniques, 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 generic computers implementing APIs and parallel computing. See MPEP § 2106.05(h).
As the claims only manipulate data pertaining to indications of fraud in financial transactions, 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.
Taking the independent claims together, they include a processor and memory storing instructions for the processor to implement. These elements are recited at a high degree of generality and the specification is clear, ¶ 14, that nothing more than a “general-purpose computer” is required. 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.
The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. APIs were well-understood, routine and conventional before the filing of the claimed invention. For example, Dianda et al. (U.S. Patent No. 6,523,074), whose application was filed more than two decades before the present invention, could describe APIs as already having achieved “popularity”. [Col. 1, lines 26-27] By about a year after that, Yadav (U.S. Publication No. 2003/0061402) could describe their use as “ubiquitous”. [0030]
Parallel processing was well-understood, routine and conventional before the filing of the claimed invention. For example, Bayliss (U.S. Patent No. 6,968,335), whose application was filed more than two decades before the present invention, could refer to the existence of “conventional” parallel-processing systems. [Col. 2, lines 33-34]
The claim elements when considered in an ordered combination – a generic computer performing a likely-chronological sequence of abstract steps while using well-understood, routine and conventional computing techniques – does nothing more than when they are analyzed individually. The other independent claims are simply different embodiments but are likewise directed to a generic computer performing, essentially, the same process.
The dependent claims further do not amount to significantly more than the abstract idea: claims 2, 10 and 17 simply recite further data sharing. Claims 3, 11 and 18 are simply statements of intended use. Claims 4, 12, 19, 23 and 24 simply recite a source of data, and claims 6, 14 and 21 simply recite further, abstract manipulation of data.
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, revised October 2019)).
Response to Arguments
Applicant's arguments filed 17 June 2026 have been fully considered but they are not persuasive. As explained above, the claims recite two of the identified categories of abstraction, “certain methods of organizing human activity” and “mental processes”. The fact that there are computers and technical components in the claim beyond the abstraction is a part of the analysis in prong two of step 2A (the “integration into a practical application” analysis) and step 2B (the “significantly more” analysis) and plays no role in determining whether the claims recite, that is, “set forth or describe” an abstract idea.
The reference to “high-volume fraud detection” is unavailing, for three reasons. First, it was common for companies to manage large volumes of data using armies of clerks in the days before computers; Sears, Roebuck & Co., just for one well-known example, had thousands upon thousands of customer accounts managed from their Chicago office, decades before computers came along to help with the tasks. Second, there is nothing in the claims that requires any more than two fraud determinations, which is far short of being “high-volume”. Third, courts have consistently held that the ability to manage a great deal of data is within the capabilities of a generic computer and not, by itself, a basis for patentability.
The claims do not “merely involve” fraud determination; the entire point of every claim is to do or not do something on the basis of a fraud determination. The Examiner is aware of the existence of the line the applicant draws, but the applicant’s own claims come far short of that line. The argument that the Examiner has not considered the claim as a whole is misplaced; the previous Examiner did so and the present Examiner has been even more explicit about it.
The Examiner did not err then, and this does not now, in realizing that not every element of the claim is abstract. The abstraction is identified at prong one of step 2A and the use of whatever technology implements it is identified at prong two and differently at step 2B. This Examiner has rarely ever seen a claim that only included abstraction and nothing else.
The Examiner must respectfully disagree with the applicant’s assertion that the present claims improve technology; the Examiner finds only computer implementation of a business process for making determinations based on whether fraud is detected. The use of APIs do not improve any technology; this is, as noted above, an old and common data communication technique, and the applicant has not improved APIs but is merely using them for a customary purpose – to communicate between applications.
Similarly, the use of parallel processing, as noted above, is an old and common data processing technique, and the applicant has not improved parallel processing but is merely making use of it for its ordinary purpose – to offload tasks to other processors or other subcomponents of a system.
The assertion that this improves “the performance of the claimed system” is a mere conclusory argument. The applicant has not provided any test results or other data to show that any system is improved in any way simply by using old and common programming techniques. The Examiner frequently sees arguments, from applicant after applicant, that managing less data, etc., improves a computer, but has never seen any applicant point to any authority for that assertion, likely because none can be found.
Example 35 has been fully deprecated and replaced by the Guidance cited above, but just for completeness, the Examiner points out that it is likely that in 2016, the date at which that example was apparently distributed, the use of random codes transmitted to mobile devices to verify customer information – which is ubiquitous today – was not yet all that well known. There is nothing similarly nascent about any part of the present claims, and the Examiner fails to see any reasonable parallel between the eligible claims there and the claims of the present invention.
The step 2B analysis focuses on whether any additional, that is, non-abstract claim element goes beyond the well-understood, routine and conventional. The Examiner does not find any such element, and the applicant does not persuasively argue that any such element is present in any claim. The combination of abstract steps cannot itself provide the requisite additional element for which we search in step 2B; as the court pointed out in BSG Tech1, “[i]t has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”
The claims are not patent eligible and the rejection is maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any 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.
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 BSG Tech LLC v. Buyseasons, Inc., 889 F.3d 1281, 1287 (Fed. Cir. 2018)
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