DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. It is noted that the Specification discloses the following in terms of customers, subscribers, and users:
[0017] The financial institution computing system 102 communicates data with external
computing systems such as customer devices 104, user devices 106, and external service
providers 108. Customer devices 104 are associated with customers of the financial institution.
As used herein, a "customer" is an entity that purchases API services from the financial
institution. User devices 106 are associated with users. As used herein, "users" are individuals
or entities attempting to interact with customers through the customer devices 104. For example,
a user may be a person and a customer may be a retailer, and the user may be attempting to
purchase an item from the retailer's website. In some situations, users are also account holders
with the financial institution. The external service providers may include the Early Warning Service ("EWS"), credit agencies (e.g., TransUnion, Equifax, and Experian), and other third- party service providers 108 used by the financial institution to verify information associated with users.
[0040] “The remaining description of method 500 presumes that the customer is a subscriber to the financial institution's API services.”
***To clarify, a customer = a merchant or retailer = a subscriber to the financial institution’s API services. A user = a purchaser, attempting to purchase an item from the “subscriber”.***
3. 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.
4. Claims 1-20, are rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea without significantly more. Using the language in claim(s) 1 to illustrate, the limitations of causing a subscriber to display a login screen of the identification verification service, the login screen displayed via an application programming interface (API) associated with a subscriber upon verification of the subscriber as an authorized customer of the identity verification service; receiving credentials directly from the user via an application programming interface (API) associated with the subscriber that displays a graphical user interface to bypass the subscriber;
verifying, that the received credentials are associated with a user account associated with the identity verification service, wherein verifying the received credentials provides authorization for the transaction between the subscriber and user to proceed…; provisioning, via the API, information associated with the user account to facilitate the transaction based on a request for the information associated with the user account from the subscriber, as drafted, is a process that, under its broadest reasonable interpretation, covers certain methods of organizing human activity, in particular, commercial or legal interaction, but for the recitation of generic computer components. The claims as a whole recite a method of organizing human activity.
The claimed invention allows for verifying a user identity through an identification verification service during a transaction between a user and a subscriber (i.e., merchant), which is a commercial interaction. The mere nominal recitation of a provider computing system, subscriber device, a user device, and an application programming interface (API) do not take the claim out of the methods of organizing human activity grouping. Thus, under Eligibility Step 2A, prong one, (MPEP §2106.04(a)), the claims recite an abstract idea.
Under Eligibility Step 2A, prong two, (MPEP §2106.04(d)), this judicial exception is not integrated into a practical application. The claim recites the additional elements: transmitting authorization to the subscriber device via the API. The transmitting steps/functions are recited at a high level of generality (i.e., as a general means of transmitting data). Provisioning information via the API and transmitting data to a device from an API are a forms of insignificant extra-solution activity –see MPEP 2106.05(g).
The provider computing system, subscriber device, and a user device are also recited at a high level of generality and merely automates the displaying, receiving, and verifying steps. Each of the additional limitations is no more than mere instructions to apply the exception using generic computer components (provider computing system, subscriber device, a user device). Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose meaningful limits on practicing the abstract idea.
Similar arguments can be extended to independent claims 10 and 16 and hence claims 10 and 16 are rejected on similar grounds as claim 1. In addition, claim 10 recites a network interface configured to communicate, via a network, with a third-party device of a third party, a database storing credentials, and a processor configured to perform the claimed functions, a third party device and a user device, and an API and claim 16 recites a non-transitory computer readable medium with computer-executable instructions embodied thereon that, when executed by a processor of a computing system, cause the computing system to perform the claimed functions, a third party device, a user device, and an API amount to generic computer implementation.
The claims are directed to an abstract idea.
Under Eligibility Step 2B, (MPEP §2106.05), the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using a provider computing system, a subscriber device, a user device, an API (claim 1), a network interface configured to communicate, via a network, with a third-party device of a third party, a database storing credentials, and a processor configured to perform the claimed functions, a third party device, a user device, and an API (claim 10), and non-transitory computer readable medium with computer-executable instructions embodied thereon that, when executed by a processor of a computing system, cause the computing system to perform the claimed functions, a third party device, a user device, and an API (claim 16) amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
Furthermore, under Step 2B, the additional elements found to be insignificant extra-solution activities under step 2A prong two, are re-evaluated to determine if the elements are more than what is well-understood, routine and conventional activity in the field. Here, the Specification does not provide any indication that the transmitting authorization to the subscriber device via the API are anything other than generic computer components and the Symantec, TLI Communications, OIP Techs, and buySafe court decisions cited in MPEP 2106.05[d][ii] indicate that the mere receiving and transmitting data are well-understood, routine, and conventional functions when they are claimed in a merely generic manner (as they are here).
Accordingly, a conclusion that the transmitting limitations are well understood, routine, and conventional activities is supported under Berkheimer Option 2. For these reasons, there is no inventive concept. The claims are not patent eligible. The claims are not patent eligible.
Here, the Specification does not provide any indication that the provisioning information associated with the user account by the computing system to the subscriber device via the API, are anything other than generic computer components and the following publication demonstrate the well-understood, routine, and conventional nature of the additional elements:
US 10476863 (Hanlon);
US 10079681 (Roth et al.);
US 9503442 (Griffin et al.).
Accordingly, a conclusion that the transmitting limitations are well understood, routine, and conventional activities is supported under Berkheimer Option 3. For these reasons, there is no inventive concept. The claims are not patent eligible. The claims are not patent eligible.
The dependent claims have been given the full two part analysis including analyzing the additional limitations both individually and in combination. The dependent claim(s) when analyzed both individually and in combination are also held to be patent ineligible under 35 U.S.C. 101 because for the same reasoning as above and the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea. Dependent claims 2-9, 11-15, 17-20 simply help to define the abstract idea. The additional limitations of the dependent claim(s) when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
Viewing the claim limitations as an ordered combination does not add anything further than looking at the claim limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea.
Accordingly, claim(s) 1-20 is/are ineligible.
Response to Arguments
5. Applicant's arguments concerning the rejection under 35 USC 101 have been fully considered but they are not persuasive.
On pages 9-10 of the Remarks, Applicants contend that the claims are not directed to an abstract idea and under PTO guidance do not fall into one of the groupings of abstract ideas. Applicants argue that claim 1 reflects a technical process and is not directed to a “commercial interaction.” The Examiner respectfully disagrees.
The Patent Office has issued guidance about this framework. -See MPEP§ 2106 (9th ed. Rev. 10.2019, rev. June 2020), in particular, Sections 2103 through 2106.07(c). As indicated in the MPEP § 2106, to decide whether a claim is directed to an abstract idea, we evaluate whether the claim (1) recites one of the abstract ideas listed in the Revised Guidance (“Prong One”) and (2) fails to integrate the recited abstract idea into a practical application (“Prong Two”).
Beginning with Prong One, step 2A of the eligibility analysis, we must determine whether the claims at issue are directed to one of those patent-ineligible concepts. One of the subject matter groupings identified as an abstract idea in the Guidance is “[certain methods of organizing human activity—fundamental economic principles or practices (including . . . mitigating risk, insurance); commercial. . . interactions (including agreements in the form of contracts; . . . sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including . . . following rules or instructions)].” See MPEP 2106.04(a).
Here, apart from the recited systems, i.e., a provider computing system, subscriber device, a user device, and an application programming interface (API), claim 1 recites abstract ideas in the category of “methods of organizing human activity.” In the 101 analysis in the rejection above, the Examiner identifies and considers each of the underlying steps for the claims as a basis for describing and explaining the recited abstract idea. For example, the Examiner identifies the underlying steps of claim 1—i.e., the causing a display, receiving credentials, verifying credentials, provisioning information —and explains that they describe the concept of verifying a user identity through an identification verification service during a transaction between a user and a subscriber (i.e., merchant), which is a commercial interaction. The Examiner’s approach here is consistent with USPTO guidance.
Applicants argue that the claims recite elements or a combination of elements which “integrate the exception into a practical application of the exception” because the claimed features relate to a particular solution that provides various technical advantages. Applicants argue that for example, the customer incorporates the login API of the financial institution into the website or application and the login API allows the financial institution to display the login screen to the user via the customer’s website or application such that he user can provide credentials directly to the financial institution computing system. Applicants allege that this claimed solution provides a mutually authenticated interface which provides a secure way for a user to pay for goods and services and therefore reflects an improvement in technology. The Examiner respectfully disagrees.
Under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Limitations that are not indicative of integration into a practical application are those that are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, and appending well understood, routine and conventional activity previously known in the industry.-see MPEP 2106.05(d)(f).
Furthermore, in determining whether a claim integrates a judicial exception into a practical application, a determination is made of whether the claimed invention pertains to an improvement in the functioning of the computer itself or any other technology or technical field (i.e., a technological solution to a technological problem). Here, the claims recite generic computer components, i.e., a provider computing system, subscriber device, a user device, and an application programming interface (API). The provider computing system, subscriber device, a user device, and an application programming interface (API) are recited at a high level of generality and are recited as performing generic computer functions customarily used in computer applications.
The focus of the claims is not on an improvement to the identified additional elements as tools, but on the abstract ideas that use the additional elements as tools. The use of generic computer components to carry out the abstract idea does not impose any meaningful limit on the computer implementation of the abstract idea.
On page 12 of the Remarks, Applicants contend that under Step 2B, the claims amount to significantly more that the abstract idea. The argument is not convincing. As mentioned in the 35 USC 101 rejection above, mere instructions to apply an exception using generic computer components and well-understood, routine and conventional activities previously known in the industry recited at a high level of generality cannot provide an inventive concept.
The claims are not patent eligible under 35 USC 101.
Conclusion
6. 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 ELDA MILEF whose telephone number is (571)272-8124. The examiner can normally be reached Monday-Thursday 6:30am-3:30pm; Friday 7am-12pm.
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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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/ELDA G MILEF/Primary Examiner, Art Unit 3694