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 .
Notice to Applicant
[2] This communication is in response to the amendment filed 17 December 2025. Claims 1, 3, 8, 10, 15, and 17 have been amended. Claims 1-20 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
[3] Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 8 as presented by amendment recites:
“…storing, in a memory, a plurality of scenario types… an AI (artificial intelligence) algorithm, wherein each scenario type comprises at least one or more cause agents, wherein each cause agent indicates an action that caused one or more out-of-balance conditions; training the computing algorithm by inputting the one or more cause agents from the cause agent library and the historical data of previously investigated OOB tickets to generate a trained computing algorithm, wherein the trained computing algorithm when executed is configured to generate a plurality of scenarios that caused the received OOB ticket, wherein each scenario includes the one or more cause agents that caused the received OOB ticket; executing the AI algorithm with new cause agents as input to generate as output a plurality of new scenario types, wherein the new cause agents are different from the one or more cause agents and the plurality of new scenario types are different from the plurality of scenario types;…”
While the Specification as originally filed disclose the use of natural language processing to “obtain information contained in the OOB ticket” and further disclose use of Retrieval-Augments Generation (RAG and Statistical model is trained on the input reference library and historical data (Specification page 11), disclosure of an Artificial Intelligence algorithm is not readily apparent. Accordingly, the limitation of training the computing algorithms and executing an AI algorithm to generate output of a plurality of new scenario types is not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor at the time the application was filed, had possession of the claimed invention.
For purposes of further examination, Examiner assumes the recited functions are performed by generic, commercially available AI training processes and algorithms available at the time of the invention.
Independent claims 1 and 15 recite the limitations addressed above with respect to claim 8 and are also rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
Dependent claims 2-7, 9-15, and 16-20 inherit and fail to remedy the deficiencies of their respective independent claims and are also rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
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.
[4] Previous rejection(s) of claims 1-20 under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter, specifically an abstract idea without significantly more has/have not been overcome by the amendments to the subject claims and is/are maintained. The statement of rejection below is reiterated as originally presented in the previous Office Action mailed 2 October 2025. The present amendments and remarks are addressed above under “Response to Remarks/Amendment”.
The following analysis is based on the framework for determining patent subject matter eligibility under 35 U.S.C. 101 established in the decisions of the Supreme Court in Mayo Collaborative Services v. Prometheus Labs., Incorporated and Alice Corporation Pty. Ltd. v. CLS Bank International, et al. (See MPEP 2106 subsection III and 2106.03-2106.05). Claim(s) 1-20 as a whole is/are determined to be directed to an abstract idea. The rationale for this determination is explained below:
Abstract ideas are excluded from patent eligibility based on a concern that monopolization of the basic tools of scientific and technological work might serve to impede, rather than promote, innovation. Still, inventions that integrate the building blocks of human ingenuity into something more by applying the abstract idea in a meaningful way are patent eligible (See MPEP 2106.04).
Consistent with the findings of the Supreme Court in Mayo Collaborative Services v. Prometheus Labs., Incorporated and Alice Corporation Pty. Ltd. v. CLS Bank International, et al. ineligible abstract ideas are defined in groups, namely: (1) Mathematical Concepts (e.g., mathematical relationships, mathematical formulas or equations, and mathematical calculations; (2) Mental Processes (e.g., concepts performed or performable in the human mind including observations, evaluations, judgements, or opinions); and (3) Certain Methods of Organizing Human Activity. Groupings of Certain Methods of Organizing Human Activity include three sub-categories within the group, namely: (1) fundamental economic principles or practices; (2) commercial or legal interactions (e.g., agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations); (3) managing personal behavior or relationships or interactions between people (e.g., social activities, teaching, and following rules or instructions) (See MPEP 2106.04(a).
Eligibility Step 1: Four Categories of Statutory Subject Matter (See MPEP 2106.03): Independent claims 1, 8, and 15 are directed to a system, a method, and non-transitory computer-readable storage medium, respectively, and are reasonably understood to be properly directed to one of the four recognized statutory classes of invention designated by 35 U.S.C. 101; namely, a process or method, a machine or apparatus, an article of manufacture, or a composition of matter. While the claims, generally, are directed to recognized statutory classes of invention, each of method/process, system/apparatus claims, and computer-readable media/articles of manufacture are subject to additional analysis as defined by the Courts to determine whether the particularly claimed subject matter is patent-eligible with respect to these further requirements. In the case of the instant application, each of claims 1, 8, and 15 are determined to be directed to ineligible subject matter based on the following analysis/guidance:
Eligibility Step 2A prong 1: (See MPEP 2106.04): In reference to claim 1, the claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do/does not amount to significantly more than an abstract idea. The claim(s) is/are directed to the abstract idea of identifying an imbalance concerning product information and determining potential causes and calculating probable scenarios for the imbalance and further identifying remedial actions to correct the imbalance, which is reasonably considered to be method of limited to claimed ineligible steps/processes performable by Human Mental Processing (e.g., concepts performed or performable in the human mind including observations, evaluations, judgements, or opinions). In particular, the general subject matter to which the claims are directed illustrates a sequence of events/functions in which an out-of-balance condition is observed concerning a product (e.g., a banking or financial product such as cash or securities) and probabilities related to cause and scenarios which may have given rise to the condition are calculated, which is an ineligible inventive process limited to human mental observations and evaluations.
The courts have previously identified subject matter limited to steps/processes performable by Human Mental Processing and/or by a human using pen and paper to be ineligible abstract ideas (See CyberSource Corp v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011). Further, mental processes or concepts performed in the human mind including observation and evaluation are considered to be ineligible abstract ideas. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for a recitation of generic computer components, then the claim is still to be grouped as a mental process unless the limitation cannot practically be performed in the human mind (See MPEP 2106.04(a)(2)).
With respect to functions/steps limited to processes performable by Human Mental Processing and/or by a human using pen and paper, representative claim 8 recites:
“…receiving an out-of-balance (OOB) ticket that is generated when an out-of-balance condition occurs in relation to a product…”, “…accessing product information related to the OOB ticket, wherein the product information comprises a plurality of features associated with the product associated with the OOB ticket; extracting a subset of features from the product information…”, “…determining relationships between the one or more cause agents and the product associated with the OOB ticket, wherein the relationships are determined based at least in part upon the subset of features extracted from the product information…”, “…determining a scenario type associated with a highest probability value…”, and “…outputting the determined scenario type with the highest probability value…”
Respectfully, absent further clarification of the processing steps executed by any underlying technology employed in the inventive method, one of ordinary skill in the art would reasonably be relied upon to determine potential causes/scenarios and a probability are practicable or performable by a human using pen and paper and/or employing by the human mental processing (See CyberSource Corp v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“a method that can be performed by human thought alone is merely an abstract idea and is not patent eligible under 35 U.S.C 101).
Eligibility Step 2A prong 2: (See MPEP 2106.04(d)): Under step 2A prong two, Examiners are to consider additional elements recited in the claim beyond the judicial exception and evaluate whether those additional elements integrate the exception into a practical application. Further, to be considered a recitation of an element which integrates the judicial exception into a practical application, the additional elements must apply, rely on, or use the judicial exception in a manner that imposes meaningful limits on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception.
Additional elements of claim 8 that potentially integrate the claimed ineligible subject matter into a practical application are limited to: “memory”. Claims 1 and 15, directed to a system and computer-readable medium introduce a “processor” and processor-executable “instructions” With respect to these potential additional elements:
(1) The “memory”, “processor”, and “instructions” are identified as engaged in an unspecified, general manner in the performance of each of the recited steps/functions.
With respect to the above noted functions attributable to the identified additional elements, MPEP 2106.05 stipulates that: Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea – see MPEP 2106.05(f); Adding insignificant extra-solution activity to the judicial exception – see MPEP 2106.05(g); and/or Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h) serve as indications that the use of the technology recited does not indicate integration into a practical application of the judicial exception.
Each of the above noted limitations states a result (e.g., out-of-balance conditions are identified, probabilities of causal scenarios are determined, remedial actions are determined etc.) as associated with a respective “processor” or “instructions”. A recitation of “by a processor” absent clarification of particular processing steps executed by the underlying technology to produce the result are reasonably understood to be an equivalent of “apply it”. The identified functions performed by the recited technology are limited to: (1) receiving and sending data via a computer network (e.g., data); (2) storing and retrieving information and data from a generic computer memory (e.g., scenario types); and (3) performing mental observations using the obtaining information/data (e.g., determining probabilities) (See MPEP 2106.05(f)).
Accordingly, claim 8 is reasonably understood to be conducting standard, and formally manually performed process of identifying an imbalance concerning product information and determining potential causes and calculating probable scenarios for the imbalance and further identifying remedial actions to correct the imbalance using the generic devices as tools to perform the abstract idea. The identified functions of the recited additional elements reasonably constitute a general linking of the abstract idea to a generic technological environment. The claimed identifying an imbalance concerning product information and determining potential causes and calculating probable scenarios for the imbalance and further identifying remedial actions to correct the imbalance benefits from the inherent efficiencies gained by data transmission, data storage, and information display capacities of generic computing devices, but fails to present an additional element(s) which practical integrates the judicial exception into a practical application of the judicial exception.
Eligibility Step 2B: (See MPEP 2106.05): Analysis under step 2B is further subject to the Revised Examination Procedure responsive to the Subject Matter Eligibility Decision in Berkheimer v. HP, Inc. issued by the United States Patent and Trademark Office (19 April 2018). Examiner respectfully submits that the recited uses of the underlying computer technology constitute well-known, routine, and conventional uses of generic computers operating in a network environment. In support of Examiner’s conclusion that the recited functions/role of the computer as presented in the present form of the claims constitutes known and conventional uses of generic computing technology, Examiner provides the following:
In reference to the Specification as originally filed, the Specification provides listings of generic computing systems, e.g., a general computing platform including exemplary servers, network configurations and various processor configuration which are identified as capable and interchangeable for performing the disclosed processes. The disclosure does not identify any particular modifications to the underlying hardware elements required to perform the inventive methods and functions. Accordingly, it is reasonably understood that this disclosure indicates that the hardware elements and network configurations suitable for performing the inventive methods are limited to commercially available systems at the time of the invention. Absent further clarification, it is reasonably understood that any modifications/improvements to the underlying technology attributable to the inventive method/system are limited to improvements realized by the disclosed computer-executable routines and the associated processes performed.
While the above noted disclosure serves to provide sufficient explanation of technical elements required to perform the inventive method using available computing technology, the disclosure does not appear to identify any particular modifications or inventive configurations of the underlying hardware elements required to perform the inventive methods and functions. Accordingly, it is reasonably understood that the disclosure indicates that the hardware elements and network configurations suitable for performing the inventive methods are limited to commercially available systems at the time of the invention. Further, absent further clarification, it is reasonably understood that any modifications/improvements to the underlying technology attributable to the inventive method/system are limited to improvements realized by the disclosed computer-executable routines and the associated processes performed.
The claims specify that the above identified generic computing structures and associated functions/routines include: (1) The “memory”, “processor”, and “instructions” are identified as engaged in an unspecified, general manner in the performance of each of the recited steps/functions.
While Examiner acknowledges that the noted limitations are computer-implemented, Examiner respectfully submits that, in aggregate (e.g., “as a whole”) they do not amount to significantly more than the abstract idea/ineligible subject matter to which the claimed invention is primarily directed.
While utilizing a computer, the claimed invention is not rooted in computer technology nor does it improve the performance of the underlying computer technology. The computer-implemented features of the claimed invention noted above are reasonably limited to: (1) receiving and sending data via a computer network (e.g., data); (2) storing and retrieving information and data from a generic computer memory (e.g., scenario types); and (3) performing mental observations using the obtaining information/data (e.g., determining probabilities).
The above listed computer-implemented functions are distinguished from the generic data storage, retrieval, transmission, and data manipulation/processing capacities of the generic systems identified in the Specification solely by the recited identification of particular data elements that are of utility to a user performing the specific method of identifying an imbalance concerning product information and determining potential causes and calculating probable scenarios for the imbalance and further identifying remedial actions to correct the imbalance. In summary, the computer of the instant invention is facilitating non-technical aims, i.e., identifying an imbalance concerning product information and determining potential causes and calculating probable scenarios for the imbalance and further identifying remedial actions to correct the imbalance, because it has been programmed to store, retrieve, and transmit specific data elements and/or instructions that is/are of utility to the user. The non-technical functions of identifying an imbalance concerning product information and determining potential causes and calculating probable scenarios for the imbalance and further identifying remedial actions to correct the imbalance benefit from the use of computer technology, but fail to improve the underlying technology.
In support, the courts have previously found that utilization of a computer to receive or transmit data and communications over a network and/or employing generic computer memory and processor capacities store and retrieve information from a computer memory are insufficient computer-implemented functions to establish that an otherwise unpatentable judicial exception (e.g. abstract idea) is patent eligible. With respect to the determinations of the Courts regarding using a computer for sending and receiving data or information over a computer network and storing and retrieving information from computer memory, see at least: receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362; sending messages over a network OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); receiving and sending information over a network 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); storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93 and see performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199; and Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) with respect to the performance of repetitive calculations does not impose meaningful limits on the scope of the claims.
Independent claims 1 and 15, directed to an apparatus/system and computer-executable instructions stored on computer-readable media for performing the method steps are rejected for substantially the same reasons, in that the generically recited computer components in the apparatus/system and computer readable media claims add nothing of substance to the underlying abstract idea.
Dependent claims 2-7, 9-14, and 16-20, when analyzed as a whole are held to be ineligible subject matter and are rejected under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claimed invention is not directed to an abstract idea.
Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself. Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
In accordance with all relevant considerations and aligned with previous findings of the courts, the technical elements imparted on the method that would potentially provide a basis for meeting a “significantly more” threshold for establishing patent eligibility for an otherwise abstract concept by the use of computer technology fail to amount to significantly more than the abstract idea itself. For further guidance and authority, see Alice Corporation Pty. Ltd. v. CLS Bank International, et al. 573 U.S.____ (2014)) (See MPEP 2106).
Claim Rejections - 35 USC § 103
[5] Previous rejection(s) of claim(s) 1-20 under 35 U.S.C. 103 as being unpatentable over Straussman et al. (United States Patent Application Publication No. 2025/0200649 hereinafter ‘Straussman’) in view of Laserson (United States Patent Application Publication No. 2022/0301077 hereinafter ‘Laserson’) has/have been overcome by the amendments to the subject claims and is/are withdrawn.
Response to Remarks/Amendment
[6] Applicant's remarks filed 17 December 2025 have been fully considered and are addressed as follows:
[i] Applicant’s remarks in response to previous rejection(s) of claim(s) 1-20 under 35 U.S.C. 101 as being directed to non-statutory subject matter as set forth in the previous Office Action mailed 2 October 2025 are reasonably considered to have been fully addressed in the context of the new grounds of rejection under 35 U.S.C. 112(a) presented herein in response to the present amendment of the claims. In particular, Applicant’s remarks are directed to the training and execution of the recited AI algorithms. In response, the recited AI algorithms are reasonably interpreted in light of the supportive disclosure are generic, commercially available AI processes available at the time of the invention (see interpretation under 35 U.S.C. 112(a)).
With respect to the identification of the Ai algorithm and general training processes, and for purposes of further prosecution, Examiner notes the 2024 Guidance Update on Patent Subject Matter Eligibility, Including Artificial Intelligence (2024 AI SME Update) published in the Federal Register on 17 July 2024. In particular, Examiner respectfully directs Applicant’s attention to Example 47, claim 2. Specifically, the instant recitations of “training and algorithm” and “executing an AI algorithm” are analogous to the training of an artificial neural network based on input data and receiving continuous training data of Examiner 47. Reasonably, the training data and feedback data are limited to mere data gathering and generating an output at a high level of generality and, by extension, are reasonably understood to constitute insignificant extra solution activity (See MPEP 2106.05(g)). The recited training process is limited to a recitation of the inputs and outputs to be applied to an undefined training process absent any technical specificity regarding actual training and/or particular machine learning models. Accordingly, the recited machine-learning processes and associated training are reasonably understood to be generic machine learning processes.
Accordingly, claims 1-20 remain rejected in consideration of the framework for determining patent subject matter eligibility under 35 U.S.C. 101 established in the decisions of the Supreme Court in Mayo Collaborative Services v. Prometheus Labs., Incorporated and Alice Corporation Pty. Ltd. v. CLS Bank International, et al. (See MPEP 2106 subsection III and 2106.03-2106.05) and the 2024 Guidance Update on Patent Subject Matter Eligibility, Including Artificial Intelligence (2024 AI SME Update), published in the Federal Register, 17 July 2024.
Conclusion
[7] The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Cited PATENT Literature:
Watson, III et al., SYSTEM FOR DYNAMIC EXCEPTION PRIORITIZATION, United States Patent Application Publication No. 2021/0398051, paragraphs [0026]-[0035]: Relevant Teachings: Watson discloses a system/method that includes steps/functions detect discrepancies with ATM transaction and implement an automatic reconciliation tool.
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 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 ROBERT D RINES whose telephone number is (571)272-5585. The examiner can normally be reached M-F 9am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Beth V Boswell can be reached at 571-272-6737. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT D RINES/Primary Examiner, Art Unit 3625