DETAILED ACTION
Status of Claims
This action is in reply to the response and amendments / application filed on 20 October 2025. As of the date of this communication no Information Disclosure Statement (IDS) has been filed on behalf of this case. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1, 3, and 16 have been amended.
Claims 2, and 4-15 are original / previously presented.
Claims 1-16 are currently pending and have been examined.
Response to Arguments
Regarding the previous objection of claims 1-16, the Applicant has amended the claims and the previous objection has been withdrawn. However, amendments have prompted different objections to claims 1 and 16.
Regarding the Applicant’s arguments filed regarding the previous 35 USC 101 rejection of claims 1-16, the arguments have been considered but they are not persuasive.
Applicant argues the claims are eligible because “much of the purpose of the independent claims is to remove the human element from steps which require human interaction in the prior art. When the applicant uses the term ‘automated’, including in the pre-amble, the applicant means ‘without human intervention’. See paragraphs [0007], [0012] and others” and “While there is some organizing human activity going on in this process, there is a whole lot of non-human activity occurring, like automating processes that normally require human interaction, populating a CRM account, setting up a new client in the CRM account, funding a new account, and updating the CRM account as well as advising a human of the existence of the human account… all without human interaction” (Remarks pg. 1-2). Examiner disagrees. Automating otherwise manual steps (e.g. ‘automatedly’ or ‘electronically’ performing steps or performing steps ‘without human assistance / intervention’) does not preclude the steps from reciting certain methods of organizing human activities, since the number of people involved in the activities is not dispositive as to whether a claim limitation falls within this grouping and instead it is based on whether an activity itself falls within one of the sub-groupings. See MPEP 2106.04(a)(2)(II). Here, organizing human activities are recited that align with the subgroupings (e.g. fundamental economic practices, commercial or legal interactions, marketing or sales activities, managing personal behavior or relationships or interactions between people, following rules or instructions). Hence, the claims recite a judicial exception in Step 2A Prong One. This argument is not persuasive.
Applicant argues the claims are eligible because “Other than stating the requirement of 35 USC 101, summarizing claim 1, and expressing the opinion that the result is ‘certain methods of organizing human activity’, the Office Action does nothing to explain how this conclusion is determined” (Remarks pg. 1). Examiner disagrees. First, the limitations of :(a) Sending form data from a prospective client for a prospective client account from a remote location to a company; (b) after (a), extracting information from the form data, to populate an account of the prospective client of a customer relations management (CRM) account with at least some of the information and adding one of a customer identifier selected from the group of a customer number and an account number to the account; (c) after (b), the populating, with at least some of the information based on a decision algorithm of the company, at least one document selected from the group of: (i) a funding form selected from one of a transfer form from a third party company and a funding request from the third party company; (ii) an engagement agreement between the prospective client and the company; and (iii) an account application form to generate a specific account at the company; (d) after (c), sending the at least one document to the prospective client at the remote location for signature; (e) the prospective customer signing the at least one document and sending back to the company from the remote location; (f) the company receiving the signed document and if the signed form is the funding form of step (c)(i): (i) sending the signed form to the third party company including the customer identifier of the prospective account; (ii) said third party company sending assets to fund the prospective account; and (iii) upon receipt of assets from the third party company, being advised of the receipt to then activate the account as an active customer account of an active customer and advising a human operator at the company to at least interact with the active customer having successfully onboarded the active customer account; and (f) the company receiving the signed document and if the signed form is the engagement agreement of step (c)(ii), activating the account as an active customer account of an active customer and advising a human operator at the company to at least interact with the active customer having successfully onboarded the active customer account are certain methods of organizing human activities. For instance, these limitations represent the sub-groupings of fundamental economic principles or practices, commercial or legal interactions, agreements in the form of contracts, managing personal behavior or relationships or interactions between people, and following rules or instructions. For example, fundamental economic principles or practices includes populating with at least some of the information based on a decision algorithm of the company at least one document…a funding form…, sending the at least one document to the prospective client…, the prospective customer signing the at least one document, sending back [the document] to the company…, the company receiving the signed document…, if the signed form is the funding form sending the signed form to the third party company…, third party company sending assets to fund the prospective account…, upon receipt of assets from the third party company… advis[ing] of the receipt to then activate the account…; commercial or legal interactions includes sending a form / form data from a prospective client for a prospective client account…, sending the at least one document to the prospective client…, the prospective customer signing the at least one document, sending back [the document] to the company…, the company receiving the signed document…, if the signed form is the funding form sending the signed form to the third party company…, third party company sending assets to fund the prospective account…, upon receipt of assets from the third party company… advis[ing] of the receipt to then activate the account…, advising a human operator at the company to at least interact with the active customer having successfully onboarded the active customer account, if the signed form is the engagement agreement activating the account as an active customer account…, advising a human operator at the company to at least interact with the active customer having successfully onboarded the active customer account; agreements in the form of contracts includes sending a form / form data from a prospective client for a prospective client account…, populating with at least some of the information based on a decision algorithm of the company at least one document… a funding form / engagement agreement / account application form…, sending the at least one document to the prospective client…, the prospective customer signing the at least one document, sending back [the document] to the company…, the company receiving the signed document…; managing personal behavior or relationships or interactions between people includes sending a form / form data from a prospective client for a prospective client account…, extracting information from the form / form data…, populate an account of the prospective client…, adding one of a customer identifier selected from the group of a customer number and an account number…, populating with at least some of the information based on a decision algorithm of the company at least one document…, sending the at least one document to the prospective client…, the prospective customer signing the at least one document, sending back [the document] to the company…, the company receiving the signed document…, if the signed form is the funding form sending the signed form to the third party company…, third party company sending assets to fund the prospective account…, upon receipt of assets from the third party company… advis[ing] of the receipt to then activate the account…, advising a human operator at the company to at least interact with the active customer having successfully onboarded the active customer account, if the signed form is the engagement agreement activating the account as an active customer account…, advising a human operator at the company to at least interact with the active customer having successfully onboarded the active customer account; and following rules or instructions includes sending a form / form data from a prospective client for a prospective client account…, extracting information from the form / form data…, populate an account of the prospective client…, adding one of a customer identifier selected from the group of a customer number and an account number…, populating with at least some of the information based on a decision algorithm of the company at least one document…, sending the at least one document to the prospective client…, the prospective customer signing the at least one document, sending back [the document] to the company…, the company receiving the signed document…, if the signed form is the funding form sending the signed form to the third party company…, third party company sending assets to fund the prospective account…, upon receipt of assets from the third party company… advis[ing] of the receipt to then activate the account…, advising a human operator at the company to at least interact with the active customer having successfully onboarded the active customer account, if the signed form is the engagement agreement activating the account as an active customer account…, advising a human operator at the company to at least interact with the active customer having successfully onboarded the active customer account. The presence of generic computer components such as a computer (of a company), world wide web, CRM account software; and ‘automatedly’ or ‘electronically’ performing steps or performing steps ‘without human assistance / intervention’ does not preclude the steps from reciting certain methods of organizing human activities, since the number of people involved in the activities is not dispositive as to whether a claim limitation falls within this grouping and instead it is based on whether an activity itself falls within one of the sub-groupings. See MPEP 2106.04(a)(2)(II). If a claim limitation, under its broadest reasonable interpretation, covers certain methods of organizing human activity (e.g. fundamental economic principles or practices, commercial or legal interactions, agreements in the form of contracts, managing personal behavior or relationships or interactions between people, following rules or instructions) regardless of the recitation of generic computer components or other machinery in its ordinary capacity, then it falls within the ‘Certain Methods of Organizing Human Activity’ grouping of abstract ideas. This argument is not persuasive.
Applicant argues the claims are eligible because “Claim 1 requires a prospective client to send form data from a remote location to a computer of a company. The computer extracts specific information from the form data and populates CRM software (this step is not a method of organizing human activity… it is all done by the computer). The computer assigns a customer or account number (not provided by a person). The computer generates a form and sends it to the prospective client (without human interaction by the computer). The prospective client signs the form, and returns it. If the signed form is a funding form, the computer sends it to a specific third party (one again, without human intervention). The third party sends funds which are automatedly directed into the new account. The CRM software is updated, and a human (for the first time) is advices of the existence of the new client” (Remarks pg.1-2). Examiner disagrees. Each of these argued activities (e.g. sending form data to a client…, extracting information from the form…, populating an account…, adding a customer identifier customer number / account number…, sending a document to the client…, signing the document…, sending the document to the company…, sending the signed form / document to the third party…, sending assets to fund the account…, activating the account…, and advising a human operator) can be categorized as at least one of the sub-groupings of certain methods of organizing human activities. See the argument response above. The recitation of using computers and computer components to complete these steps is no more than ‘applying’ the judicial exception by generic computers and generally linking use of the judicial exception to a particular environment or field of use (i.e. Internet), which is not a practical application or significantly more than the judicial exception. Hence, these computer-implemented features do not make the claims eligible. This argument is not persuasive.
Applicant argues the claims are eligible in Step 2A because “If somehow a court were to find this were solely organizing human activity, it certainly is ‘significantly more’. Under step 2A a practical application is achieved: setting up a CRM account (while adding information to it based on information provided by a prospective client, directly), funding that account, and simultaneously updating CRM software and then advising a human operator… all without human interaction” (Remarks pg. 2). Examiner disagrees. In step 2A Prong Two, recitation of using computers and computer components to complete the identified judicial exception steps is no more than ‘applying’ the judicial exception by generic computers and generally linking use of the judicial exception to a particular environment or field of use (i.e. Internet), which is not a practical application or significantly more than the judicial exception. Hence, these computer-implemented features do not make the claims eligible. This argument is not persuasive.
Applicant argues the claims are eligible in Step 2A because “The efficiency of the claims is the ‘automated onboarding of clients’ as consistently discussed in the specification… even the title of the application Automated Onboarding Method. No humans are required since so much work is now automated. The labor savings could be phenomenal in the financial services industry, and there will be no human errors from the company such as transposing numbers, etc. which can significantly slow down the onboarding process” (Remarks pg. 2). Examiner disagrees. First, the presence of generic computer components such as a computer (of a company), world wide web, CRM account software; and ‘automatedly’ or ‘electronically’ performing steps or performing steps ‘without human assistance / intervention’ does not preclude the steps from reciting certain methods of organizing human activities, since the number of people involved in the activities is not dispositive as to whether a claim limitation falls within this grouping and instead it is based on whether an activity itself falls within one of the sub-groupings. See MPEP 2106.04(a)(2)(II). These computer components / elements are analyzed in Step 2A Prong two and they amount to ‘applying’ the judicial exception on computers, or mere instructions to implement a judicial exception on a computer or using computers as a tool to perform an abstract idea, or generally linking use of the judicial exception to a technological environment (i.e. Internet), which is not a practical application. Second, ‘applying’ an otherwise a manually performed judicial exception on a computer is not sufficient for eligibility. The courts have identified that using a computer for increased speed and automation of manual processes does not show an improvement that is sufficient for eligibility. See MPEP 2106.05(a) citing Credit Acceptance Corp. v. Westlake Services (Fed. Cir 2017) that “Mere automation of manual processes, such as using a generic computer to process an application for financing a purchase” is not sufficient to show an improvement in computer functionality. Also, the courts have identified that using a computer for increased speed and automation of manual processes does not show an improvement that is sufficient for eligibility. See MPEP 2106.05(a) citing FairWarning IP, LLC v. Iatric Sys. (Fed. Cir. 2016) that “Accelerating a process of analyzing audit log data when the increased speed comes solely from the capabilities of a general-purpose computer” is not sufficient to show an improvement in computer functionality. Also, labor savings as a cost is at best is a commercial / entrepreneurial benefit rather than a technical / technological improvement. Hence, these alleged improvements of automating work, labor savings, reduction of human errors, and speed are not technical improvements that represent a practical application or significantly more than a judicial exception. This argument is not persuasive.
Regarding the Applicant’s arguments filed regarding the previous 35 USC 103 rejection of claims 1-16, the arguments have been considered but they are not persuasive.
Applicant argues the 35 USC 103 rejection is improper because “As observed by the Examining Attorney analyzing Kumar in the discussion of claim 1: ‘the advisor 103 may enter information into the managed package 202…’ This expressly teaches away from the claimed method… the advisor does not enter any information to create an account as claimed in claim 1. The potential customer provides all the data… not the advisor” (Remarks pg. 2-3) and “Claim 16 is rejected over a combination of Kumar with Roselli. As stated on p. 16 ‘Advisor may generate the appropriate forms…’ This expressly teaches away from the claim. The computer generates the form automatedly (without human intervention… not with the help of the advisor” (Remarks pg. 4). Examiner disagrees. First, Kumar teaches the investor (i.e. a customer) also may provide the data instead of an advisor, for the claim 1 limitation “(a) Sending form data from a prospective client for a prospective client account through the world wide web from a remote location to a computer working on behalf of a company”. Kumar ¶[0011-15], ¶[0039], ¶[0041] details investors (i.e. prospective clients) logging into the app using their personal computer and choosing self-service to enter their client information to open a financial account using an internet information services server). These same passages also teach “Sending a form for a prospective client account through the world wide web from a remote location to a computer working on behalf of a company” in claim 16. Second, regarding the argument that Kumar also teaches the advisor entering data, the Examiner notes that Kumar merely illustrates different ways of behaving than in the Applicant’s claimed invention. However, there is nothing specified in Kumar that indicates that this particular modification will increase in a greater likelihood of failure. See MPEP 2143(A) example 8: DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009); MPEP 2123(II) furthermore, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). As such, Kumar does not ‘teach away' from the claimed invention. This argument is not persuasive.
Applicant argues the 35 USC 103 rejection is improper because “the cited portions of Kaufman relates solely to activating a new account, not updating CRM software as claimed (automatedly, without human intervention). At least this element is missing from the obviousness rejection and therefore the rejection is not a proper prima facie case of obviousness” (Remarks pg. 2). Examiner disagrees. The claim 1 limitation “upon receipt of assets from the third party company, the CRM software being advised of the receipt to then activate the account as an active customer account of an active customer in the CRM software automatedly”, is taught by Kaufman. Kaufman Fig 1, ¶[0028-29] details the new financial account may be activated immediately after the financial account has been credited, in addition to notifying the user / applicant / new account owner, and Kaufman ¶[0016], ¶[0038], ¶[0041] details the system for opening a financial account may be implemented using a computing cloud and cloud data storage that stores the information corresponding to the new financial account including the account number, name and/or numerical identifier of the account owner, owner address, current balance, transaction records (i.e. CRM software). Hence, Kaufman teaches this limitation. This argument is not persuasive.
Applicant argues the 35 USC 103 rejection is improper because “Roselli does invite a human operator to send a welcome gift to a new customer, but the combination of references teaches away from the claimed method” (Remarks pg. 3). Examiner disagrees. Examiner notes that Roselli merely illustrates a different way of behaving than in the applicant’s claimed invention. However, there is nothing specified in Roselli that would have deterred or warned one of ordinary skill in the art from pursuing modifications to this, and there is nothing specified in Roselli that indicates that this particular modification will increase in a greater likelihood of failure. See MPEP 2143(A) example 8: DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009). As such, Roselli does not ‘teach away' from this modification. This argument is not persuasive.
Applicant argues the 35 USC 103 rejection of claim 3 is improper because “paragraph [0039] of Kumar which explicitly discusses the advisor (not the potential client) entering information into the managed package 202… This is human intervention which is explicitly excluded from claim 3” (Remarks pg. 3). Examiner disagrees. First, claim 3 does not discuss excluding human intervention in its limitation. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Second, claim 3 states “wherein the digital form of claim 2 has reciprocal coding assisting the potential customer by autofilling at least some information on the form based on information provided by the potential customer on the form”, and this is taught by Kumar ¶[0039], ¶[0041] that details the forms generation server automatically generates the forms with the information captured during user entry, and the information may be provided by the investor through a self-service option on the app. Hence, Kumar teaches the features that are claimed in claim 3. This argument is not persuasive.
Applicant argues the 35 USC 103 rejection of claim 9 is improper because “The rejection of claim 9 takes material out of context from paragraph [0050] and Figure 4A to form a rejection. The User is authenticated in Figure 4A and paragraph [0050] to be able to generate the form to send to financial institution, not whether a potential client is a real person” (Remarks pg. 3). Examiner disagrees. First, claim 9 does not discuss ‘whether a potential client is a real person’ in its limitation. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Second, this limitation of claim 9 is taught by the combination of Kumar and Roselli. Kumar Fig 4A, ¶[0013], ¶[0041-42] details an investor may choose self-service and enter information including the financial information (otherwise entered by an advisor), and following entry the app may notify the advisor to log into the app, then in Fig 5F, ¶[0059-61] the advisor is asked to please review the fields listed in the NIGO information section (e.g. Investment amount) (i.e. asked to verify the likely legitimacy of the prospective client), and in Fig 4A, ¶[0035], ¶[0064] the advisor initiates the forms generation (which automatically pre-populates some of the information), highly suggesting but not explicitly stating the human operator verifies the likely legitimacy of the prospective client and performs the review. However, Roselli teaches this remaining feature of performing the verifying of the likely legitimacy of the prospective client with one or more manual validations performed by a person including bank staff examining and verifying identification to determine the true identity of all customers requesting the bank’s services (Roselli ¶[0446-48]). Hence, Kumar and Roselli teach claim 9. This argument is not persuasive.
Applicant argues the 35 USC 103 rejection of claim 12 is improper because “The rejection of claim 12 fails to provide all of the elements of the claim. Sending a signed form to be stored in a CRM is not all that is claimed in claim 12. There are elements missing from (i)-(iii) of step (f) (Remarks pg. 3). Examiner disagrees. The limitation of claim 12 states “wherein step (f) automatedly occurs following step (e) without human interaction. This is taught by Kumar Fig 3D, Fig 4D, ¶[0042-47], claim 8 details after receiving the signed forms the app may send data (i.e. sending without human interaction) describing the request to the bank (representative of step (f)(ii)) and/or retrieve information about the bank allowing the funds to be transferred (e.g. routing number and account number), the bank may then transfer the funds (representative of step (f)(ii)) and the app may provide notification that the account has been funded and automatically establish the account (representative of step (f)(iii)). The app is ‘automatedly’ controlling step (f) to occur following step (e) without human interaction, which satisfies the bounds of the claim “wherein step (f) automatedly occurs following step (e) without human interaction”. This argument is not persuasive.
Applicant argues the 35 USC 103 rejection of claim 14 is improper because “claim 14 fails to provide all of the elements of the claim. Agreeing to Terms and Conditions is not returning a signed engagement letter as argued by the Office Action” (Remarks pg. 4). Examiner disagrees. Roselli ¶[0457-460], ¶[0471-472], ¶[1402] details presenting the customer with Terms and Conditions and Disclosures / Terms and Conditions agreement (i.e. engagement letter) related to the account that he/she is opening that are presented to the customer, and acceptance of the terms and conditions maybe passive or non-passive (e.g. online / verbal / wet signature), acceptance must be a completed milestone to activate the account. A Terms and conditions document that is required to be signed between the account holder and the provider is ‘an engagement agreement between the prospective client and the company’. Hence, Roselli teaches the feature of “the engagement letter and the funding form are sent to the prospective client as the at least one form; and upon receipt of the signed engagement letter… the onboarding process is complete” as cited in the rejection of claim 14. This argument is not persuasive.
Applicant argues the 35 USC 103 rejection of claim 15 is improper because “claim 15 fails to provide all of the elements of the claim. Agreeing to Terms and Conditions is not returning a signed funding letter and account application form as argued by the Office Action” (Remarks pg. 4). Examiner disagrees. First, the Office action does not state that agreeing to Terms and Conditions is the same as returning a signed funding letter and account application. Instead, the Office action notes that signing Terms and Conditions is signing an engagement letter. Second, the limitation of claim 15 is taught by Kumar and Roselli. Claim 15 includes “wherein in step (c), the account application form and funding form are sent to the prospective client as the at least one form, and upon receipt of the signed engagement letter and the assets, the onboarding process is complete in step (f)(ii). Kumar, as shown in ¶[0047], ¶[0054] details the CRM cloud may receive client and account information for account creation and/or funding, and Fig 3A, ¶[0041], ¶[0047] the investor entering information as described for forms service and opting to fund the account selecting a value to place into the account and a selection of a bank from which to draw the value (i.e. a funding form), see Fig 5A, ¶[0015], ¶[0037] details forms for creating accounts (e.g. financial accounts) selecting product types and product companies and users can track the status of the forms through the entire account opening process (i.e. account application forms), then in Fig 3B, ¶[0110] the investor receives the selected forms to sign; and Fig 3D, ¶[0047] the bank may transfer the funds and the app may provide notification that the account has been funded, concluding the process; but does not explicitly state the engagement letter and upon receipt of the signed engagement letter the onboarding process is complete. However, Roselli teaches this remaining feature, with presenting the customer with Terms and Conditions and Disclosures / Terms and Conditions agreement (i.e. engagement letter) related to the account that he/she is opening that are presented to the customer, and acceptance of the terms and conditions may be passive or non-passive (e.g. online / verbal / wet signature), acceptance must be a completed milestone to activate the account (Roselli ¶[0457-460], ¶[0471-472], ¶[1402]). Hence, Kumar and Roselli teach this limitation. This argument is not persuasive.
Priority
This application 18/610,457 filed on 20 March 2024 claims priority from US provisional application 63/455,759 filed on 30 March 2023.
Claim Interpretation
Claims 1-15:
Note that claims 1-15 are methods that include contingent limitations. The broadest reasonable interpretation is that the invention of claim 1 and its dependent claims 2-14 are a method that may either be practiced (1) with the step (f) “sending the signed form to the third party…, electronically sending assets to fund the prospective account…, being advised of the receipt to then activate the account…, advising a human operator…” steps (i.e. if the signed form is the funding form), or (2) without the step (f) “sending the signed form to the third party…, electronically sending assets to fund the prospective account…, being advised of the receipt to then activate the account…, advising a human operator…” steps (i.e. if the signed form is not the funding form). See MPEP 2111.04 (II) including the citation to Ex parte Schulhauser “[i]f the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed”.
Claim 12:
Claim 12 includes the limitation “wherein step (f) automatedly occurs following step (e) without human interaction”, however step (f)(iii) also explicitly includes human interaction with “advising a human operator at the company to at least interact with the active customer having successfully automatedly onboarded the active customer account. To preclude an interpretation of indefiniteness, the Office is interpreting claim 12 such that it is step (f) following step (e) that is automatedly occurring without human interaction.
Claim 16:
Note that claim 16 is a method that include contingent limitations. The broadest reasonable interpretation is that the invention of claim 16 is a method that may either be practiced (1) with the step (f) “automatically activating the account…, advising a human operator…” steps (i.e. if the signed form is the engagement form), or (2) without the step (f) “automatically activating the account…, advising a human operator” steps (i.e. if the signed form is not the engagement form). See MPEP 2111.04 (II) including the citation to Ex parte Schulhauser “[i]f the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed”.
Claim Objections
Claims 1 and 16 are objected to because of the following informalities. Appropriate correction is required.
Claims 1 and 16:
Claims 1 and 16 include the word “Sending” that is capitalized. The Office recommends changing the capitalization to ‘sending’ because this is not a proper noun and not the beginning of the limitation, for cosmetic clarity.
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 1-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-16:
Step 1:
Claims 1-16 recite a method. Since the claims recite either a process, machine, manufacture, or composition of matter, the claims satisfy Step 1 of the Subject Matter Eligibility Framework in MPEP 2106 and the 2019 Patent Examination Guidelines (PEG). Analysis proceeds to Step 2A Prong One.
Step 2A – Prong One:
Claims 1-16 recite an abstract idea. Independent claim 1 recites:(a) Sending form data from a prospective client for a prospective client account from a remote location to a company; (b) after (a), extracting information from the form data, to populate an account of the prospective client of a customer relations management (CRM) account with at least some of the information and adding one of a customer identifier selected from the group of a customer number and an account number to the account; (c) after (b), populating, with at least some of the information based on a decision algorithm of the company, at least one document selected from the group of: (i) a funding form selected from one of a transfer form from a third party company and a funding request from the third party company; (ii) an engagement agreement between the prospective client and the company; and (iii) an account application form to generate a specific account at the company; (d) after (c), sending the at least one document to the prospective client at the remote location for signature; (e) the prospective customer signing the at least one document and sending back to the company from the remote location; (f) the company receiving the signed document and if the signed form is the funding form of step (c)(i): (i) sending the signed form to the third party company including the customer identifier of the prospective account; (ii) said third party company y sending assets to fund the prospective account; and (iii) upon receipt of assets from the third party company, being advised of the receipt to then activate the account as an active customer account of an active customer and advising a human operator at the company to at least interact with the active customer having successfully onboarded the active customer account. Independent claim 16 recites:(a) Sending a form for a prospective client account from a remote location to a company; (b) after (a), extracting information from the form, to populate an account of the prospective client of a customer relations management (CRM) account with at least some of the information and adding one of a customer identifier selected from the group of a customer number and an account number to the account; (c) after (b), populating, with at least some of the information based on a decision algorithm of the company, at least one document selected from the group of: (i) a funding form selected from one of a transfer form from a third party company and a funding request from the third party company; (ii) an engagement agreement between the prospective client and the company; and (iii) an account application form to generate a specific account at the company; (d) after (c), sending the at least one document to the prospective client for signature; (e) the prospective customer signing the at least one document and sending back from the remote location to the company; and (f) the company receiving the signed document and if the signed form is the engagement agreement of step (c)(ii), activating the account as an active customer account of an active customer and advising a human operator at the company to at least interact with the active customer having successfully onboarded the active customer account. The claims as a whole recite certain methods of organizing human activities.
First, the limitations of :(a) Sending form data from a prospective client for a prospective client account from a remote location to a company; (b) after (a), extracting information from the form data, to populate an account of the prospective client of a customer relations management (CRM) account with at least some of the information and adding one of a customer identifier selected from the group of a customer number and an account number to the account; (c) after (b), the populating, with at least some of the information based on a decision algorithm of the company, at least one document selected from the group of: (i) a funding form selected from one of a transfer form from a third party company and a funding request from the third party company; (ii) an engagement agreement between the prospective client and the company; and (iii) an account application form to generate a specific account at the company; (d) after (c), sending the at least one document to the prospective client at the remote location for signature; (e) the prospective customer signing the at least one document and sending back to the company from the remote location; (f) the company receiving the signed document and if the signed form is the funding form of step (c)(i): (i) sending the signed form to the third party company including the customer identifier of the prospective account; (ii) said third party company sending assets to fund the prospective account; and (iii) upon receipt of assets from the third party company, being advised of the receipt to then activate the account as an active customer account of an active customer and advising a human operator at the company to at least interact with the active customer having successfully onboarded the active customer account; and (f) the company receiving the signed document and if the signed form is the engagement agreement of step (c)(ii), activating the account as an active customer account of an active customer and advising a human operator at the company to at least interact with the active customer having successfully onboarded the active customer account are certain methods of organizing human activities. For instance, these limitations represent the sub-groupings of fundamental economic principles or practices, commercial or legal interactions, agreements in the form of contracts, managing personal behavior or relationships or interactions between people, and following rules or instructions. For example, fundamental economic principles or practices includes populating with at least some of the information based on a decision algorithm of the company at least one document…a funding form…, sending the at least one document to the prospective client…, the prospective customer signing the at least one document, sending back [the document] to the company…, the company receiving the signed document…, if the signed form is the funding form sending the signed form to the third party company…, third party company sending assets to fund the prospective account…, upon receipt of assets from the third party company… advis[ing] of the receipt to then activate the account…; commercial or legal interactions includes sending a form / form data from a prospective client for a prospective client account…, sending the at least one document to the prospective client…, the prospective customer signing the at least one document, sending back [the document] to the company…, the company receiving the signed document…, if the signed form is the funding form sending the signed form to the third party company…, third party company sending assets to fund the prospective account…, upon receipt of assets from the third party company… advis[ing] of the receipt to then activate the account…, advising a human operator at the company to at least interact with the active customer having successfully onboarded the active customer account, if the signed form is the engagement agreement activating the account as an active customer account…, advising a human operator at the company to at least interact with the active customer having successfully onboarded the active customer account; agreements in the form of contracts includes sending a form / form data from a prospective client for a prospective client account…, populating with at least some of the information based on a decision algorithm of the company at least one document… a funding form / engagement agreement / account application form…, sending the at least one document to the prospective client…, the prospective customer signing the at least one document, sending back [the document] to the company…, the company receiving the signed document…; managing personal behavior or relationships or interactions between people includes sending a form / form data from a prospective client for a prospective client account…, extracting information from the form / form data…, populate an account of the prospective client…, adding one of a customer identifier selected from the group of a customer number and an account number…, populating with at least some of the information based on a decision algorithm of the company at least one document…, sending the at least one document to the prospective client…, the prospective customer signing the at least one document, sending back [the document] to the company…, the company receiving the signed document…, if the signed form is the funding form sending the signed form to the third party company…, third party company sending assets to fund the prospective account…, upon receipt of assets from the third party company… advis[ing] of the receipt to then activate the account…, advising a human operator at the company to at least interact with the active customer having successfully onboarded the active customer account, if the signed form is the engagement agreement activating the account as an active customer account…, advising a human operator at the company to at least interact with the active customer having successfully onboarded the active customer account; and following rules or instructions includes sending a form / form data from a prospective client for a prospective client account…, extracting information from the form / form data…, populate an account of the prospective client…, adding one of a customer identifier selected from the group of a customer number and an account number…, populating with at least some of the information based on a decision algorithm of the company at least one document…, sending the at least one document to the prospective client…, the prospective customer signing the at least one document, sending back [the document] to the company…, the company receiving the signed document…, if the signed form is the funding form sending the signed form to the third party company…, third party company sending assets to fund the prospective account…, upon receipt of assets from the third party company… advis[ing] of the receipt to then activate the account…, advising a human operator at the company to at least interact with the active customer having successfully onboarded the active customer account, if the signed form is the engagement agreement activating the account as an active customer account…, advising a human operator at the company to at least interact with the active customer having successfully onboarded the active customer account. The presence of generic computer components such as a computer (of a company), world wide web, CRM account software; and ‘automatedly’ or ‘electronically’ performing steps or performing steps ‘without human assistance / intervention’ does not preclude the steps from reciting certain methods of organizing human activities, since the number of people involved in the activities is not dispositive as to whether a claim limitation falls within this grouping and instead it is based on whether an activity itself falls within one of the sub-groupings. See MPEP 2106.04(a)(2)(II). If a claim limitation, under its broadest reasonable interpretation, covers certain methods of organizing human activity (e.g. fundamental economic principles or practices, commercial or legal interactions, agreements in the form of contracts, managing personal behavior or relationships or interactions between people, following rules or instructions) regardless of the recitation of generic computer components or other machinery in its ordinary capacity, then it falls within the ‘Certain Methods of Organizing Human Activity’ grouping of abstract ideas.
Accordingly, the claim(s) recite an abstract idea. Analysis proceeds to Step 2A Prong Two.
Step 2A – Prong Two:
This judicial exception is not integrated into a practical application. First, claims 1-16 as a whole merely describes how to generally ‘apply’ the concept of certain methods of organizing human activities in a computer environment. The claimed computer components (i.e. a computer (of a company), world wide web, CRM account software; and ‘automatedly’ or ‘electronically’ performing steps, or performing steps ‘without human assistance / intervention’) are recited at a high-level of generality and are merely invoked as tools to perform an existing manual process. Simply implementing the abstract idea on a generic / general purpose computer is not a practical application of the abstract idea. See MPEP 2106.04(d) and 2016.05(f). Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Next, the additional element of the world wide web in the limitations (e.g. sending a form for a prospective client account through the world wide web from a remote location; the computer automatedly sending the at least one document to the prospective client for signature through the world wide web; the prospective customer signing the at least one document and sending back through the world wide web from the remote location to the computer of the company) does no more than generally link the use of the judicial exception to a particular technological environment or field of use (i.e. Internet), and as such does not provide integration into a practical application. See MPEP 2106.04(d) and 2106.05(h). Hence, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Also, while identified above as an organizing human activity in Step 2A Prong One, note that the activities of sending and receiving (e.g. Sending a form for a prospective client account through the world wide web from a remote location to a computer working on behalf of a company; the computer automatedly sending the at least one document to the prospective client for signature through the world wide web; sending back through the world wide web from the remote location to the computer of the company; the computer of the company receiving the signed document; the computer of the company receiving the signed document; sending the signed form to the third party company including the customer identifier of the prospective account, without human intervention through the world wide web) are recited at a high level of generality (i.e. as a general means of transmitting data for subsequent populating / signing / activating), they also amount to mere transmitting data / data gathering, which is a form of insignificant extra-solution activity and not a practical application. See MPEP 2106.04(d) and 2106.05(g). Furthermore, the computer, world wide web (generic computer / general computer component) are only being used as a tool in the sending / receiving; and the world wide web (as noted above) only generally links the use of the judicial exception to a technology / field of use (i.e. Internet), neither of which are indicative of integration into a practical application. See MPEP 2106.04(d), 2106.05(f), and 2106.05(h). Note that there are no particular technical steps regarding sending / receiving more than using computers as a tool to perform an otherwise manual process (i.e. communicating information). Accordingly, this element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Also, while identified above as an organizing human activity in Step 2A Prong One, note that the step of extracting (e.g. the computer automatedly extracting information from the form, without human assistance) is/are recited at a high level of generality (i.e. as a general means of gathering data for subsequent populating), and also amounts to mere data gathering, which is a form of insignificant extra-solution activity and not a practical application. See MPEP 2106.04(d) and 2106.05(g). Furthermore, the computer (generic computer / general computer component) is only being used as a tool in the extracting, which is also not indicative of integration into a practical application. See MPEP 2106.04(d) and 2106.05(f). Note that there are no particular technical steps regarding extracting more than using computers as a tool to perform an otherwise manual process (i.e. identifying information from source). Accordingly, this element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
The combination of these additional elements is no more than mere instructions to apply the exception using generic computers / general computer components (a computer (of a company), world wide web, CRM account software; and ‘automatedly’ or ‘electronically’ performing steps, or performing steps ‘without human assistance / intervention’), generally applied to a technology / field of use (Internet); and adding high-level extra-solution activities (data gathering, transmitting data). Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limitations on practicing the abstract idea. Hence, the claim is directed to an abstract idea. Analysis proceeds to Step 2B.
Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above in Step 2A Prong Two with respect to integration of the abstract idea into a practical application, the additional element of using a computer (of a company), world wide web, CRM account software; and ‘automatedly’ or ‘electronically’ performing, or performing steps ‘without human assistance / intervention’ the activities of sending a form / form data from a prospective client for a prospective client account…, extracting information from the form / form data…, populate an account of the prospective client…, adding one of a customer identifier selected from the group of a customer number and an account number…, populating with at least some of the information based on a decision algorithm of the company at least one document…, sending the at least one document to the prospective client…, the prospective customer signing the at least one document, sending back [the document] to the company…, the company receiving the signed document…, if the signed form is the funding form sending the signed form to the third party company…, third party company sending assets to fund the prospective account…, upon receipt of assets from the third party company… advis[ing] of the receipt to then activate the account…, advising a human operator at the company to at least interact with the active customer having successfully onboarded the active customer account, if the signed form is the engagement agreement activating the account as an active customer account…, advising a human operator at the company to at least interact with the active customer having successfully onboarded the active customer account amounts to no more than mere instructions to ‘apply’ the exception using generic / general purpose computers. The same analysis applies here in Step 2B, i.e. mere instructions to apply an exception on a generic computer cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. See MPEP 2106.05(f). Hence, these features do not provide an inventive concept / significantly more.
As discussed above in Step 2A Prong Two with respect to integration of the abstract idea into a practical application, the additional element regarding world wide web does no more than generally link the use of the judicial exception to a particular technological environment or field of use (i.e. Internet). The same analysis applies here in Step 2B, i.e. generally linking the use of the judicial exception to a particular technological environment or field of use does not provide integration into a practical application in Step 2A or provide an inventive concept in Step 2B. See MPEP 2106.05(h).Furthermore, see the Applicant’s specification ¶[0024], ¶[0026] describing the additional element of forms available on a website or sent otherwise via email message, and sending information through the world wide web at such a high level that indicates this additional element is sufficiently well-known that the specification does not need to describe the particulars to satisfy 35 USC 112(a). Hence, these features do not provide an inventive concept / significantly more.
Also, as discussed above in Step 2A Prong Two with respect to integration of the abstract idea into a practical application, the Step 2A Prong One organizing human activity elements regarding the sending and receiving are recited at a high level of generality (i.e. as a general means of transmitting data for subsequent populating / signing / activating), and also amounts to the extra-solution activities of data gathering / transmitting data, which is not a practical application or an inventive concept. See MPEP 2106.05(g). The use of the computer (i.e. computer, world wide web) in these steps merely represents using a generic / general purpose computer as a tool, and generally linking use of the judicial exception to a technology / field of use (Internet) and are not indicative of an inventive concept. See MPEP 2106.05(f) and 2106.05(h). Furthermore, these sending and receiving steps are also claimed at a high level of generality, and/or as insignificant extra-solution activities (e.g. data gathering, transmitting data) representing computer functions that the courts have recognized as well-understood, routine, and conventional functions that do not present an inventive concept. See MPEP 2106.05(d)(II) in particular receiving or transmitting data over a network, using the Internet to gather data (Symantec), sending messages over a network (OIP Techs), a computer receives and sends information over a network (buySAFE). Hence, these features do not provide an inventive concept / significantly more.
Also, as discussed above in Step 2A Prong Two with respect to integration of the abstract idea into a practical application, the Step 2A Prong One organizing human activity elements regarding the extracting are recited at a high level of generality (i.e. as a general means of gathering data for subsequent populating), and also amounts to the extra-solution activity of data gathering, which is not a practical application or an inventive concept. See MPEP 2106.05(g). The use of the computer (e.g. computer) in these steps merely represents using a generic / general purpose computer as a tool, and is not indicative of an inventive concept. See MPEP 2106.05(f). Furthermore, these extracting steps are also claimed at a high level of generality, and/or as insignificant extra-solution activities (e.g. data gathering, data storage, outputting data) representing computer functions that the courts have recognized as well-understood, routine, and conventional functions that do not present an inventive concept. See MPEP 2106.05(d)(II) in particular electronically scanning or extracting data from a physical document (Content Extraction). Hence, these features do not provide an inventive concept / significantly more.
The claims do not improve another technology or technical field. Instead, the claims represent a generic implementation of organizing human activities ‘applied’ by generic / general purpose computers, generally ‘applied’ to a field of use, and using computer components in extra-solution capacities such as data gathering / transmitting data. The claims do not provide meaningful limitations beyond generally linking the user of an abstract idea to a particular technological environment. At best, the claims are more directed towards solving a business / commercial / entrepreneurial problem (i.e. assisting customers filling out forms to onboard an account), that is tangentially associated with a technological element (e.g. computers, Internet), rather than solving a technology based problem. See MPEP 2106.05(a). The claims do not improve the functioning of a computer itself. The claims are more directed towards improving a business / economic / entrepreneurial process rather than improving a computer outside of a business use, i.e. using computers a tool. The claims do not apply the judicial exception with or by use of a particular machine. The claims do not effect a transformation or reduction to a particular article to a different state or thing. The claims do not add a specific limitation other than what is well understood, routine, and conventional in a way that confines the claim to a particular useful application.
Viewing the claim limitations as an ordered combination does not add anything further than looking at each of the claim limitations individually, both with respect to the independent claims 1 and 16, and further considering the addition of dependent claims 2-15. Note that the combination of limitations and claim elements add nothing that is not already present when the steps are considered separately, simply reciting implementation as performed by using generic computers / general computer components, see Alice (2014), and does not provide a non-conventional and non-generic arrangement of various computer components to achieve a technical improvement, see BASCOM Global Internet v. AT&T Mobility LLC (2016). Hence, the ordered combination of elements does not provide significantly more. With respect to the dependent claims:
Dependent claim 2: The limitation wherein the form of step (a) is a digital form represents an additional element (i.e. applying the judicial exception on computers, generally linking the judicial exception to a technology / field of use (e.g. computers)) that is not indicative of a practical application or significantly more. Furthermore, see the Applicant’s specification ¶[0024], ¶[0036] describing the additional element of a digital form on a website with coding to assist the customer with filling the form at such a high level that indicates this additional element is sufficiently well-known that the specification does not need to describe the particulars to satisfy 35 USC 112(a). For the reasons described above with respect to the independent claims, this judicial exception is not meaningfully integrated into a practical application, and is not significantly more than the abstract idea.
Dependent claim 3: The limitation wherein the digital form of claim 2 has reciprocal coding assisting the potential customer by autofilling at least some information on the form based on information provided by the potential customer on the form is further directed to a method of organizing human activity (agreements in the form of contracts, managing personal behavior, following rules or instructions) as described in the independent claim. The recitation of reciprocal coding and ‘auto’ filling represent using a computer / computer component recited at a high level of generality and amounts to ‘applying’ the abstract idea on a generic computer. Furthermore, see the Applicant’s specification ¶[0024], ¶[0036] describing the additional element of a digital form on a website with coding to assist the customer with filling the form at such a high level that indicates this additional element is sufficiently well-known that the specification does not need to describe the particulars to satisfy 35 USC 112(a). For the reasons described above with respect to the independent claims, this judicial exception is not meaningfully integrated into a practical application, and is not significantly more than the abstract idea.
Dependent claim 4: The limitation wherein the form is built on a FormRouter (TM) platform represents an additional element (i.e. applying the judicial exception on computers, generally linking the judicial exception to a technology / field of use (e.g. computers)) that is not indicative of a practical application or significantly more. The recitation of FormRouter(TM) platform is a computer component recited at a high level of generality and amounts to ‘applying’ the abstract idea on a generic computer. Furthermore, see the Applicant’s specification ¶[0024], ¶[0036] describing the additional element using FormRouter to build forms, create customer identifiers, and provide a PDF format at such a high level that indicates this additional element is a commercially available product and sufficiently well-known that the specification does not need to describe the particulars to satisfy 35 USC 112(a). For the reasons described above with respect to the independent claims, this judicial exception is not meaningfully integrated into a practical application, and is not significantly more than the abstract idea.
Dependent claim 5: The limitation wherein the CRM software is Salesforce represents an additional element (i.e. applying the judicial exception on computers, generally linking the judicial exception to a technology / field of use (e.g. Internet)) that is not indicative of a practical application or significantly more. The recitation of Salesforce is a computer component recited at a high level of generality and amounts to ‘applying’ the abstract idea on a generic computer and generally linking the judicial exception to a technology / field of use (i.e. Internet). Furthermore, see the Applicant’s specification ¶[0027-28], ¶[0036] describing the additional element using Salesforce as a CRM either locally or remotely from the customer to populate form data to the company by recognizing PDF format documents at such a high level that indicates this additional element is a commercially available product and sufficiently well-known that the specification does not need to describe the particulars to satisfy 35 USC 112(a). For the reasons described above with respect to the independent claims, this judicial exception is not meaningfully integrated into a practical application, and is not significantly more than the abstract idea.
Dependent claim 6: First, the limitation wherein FormRouter creates the customer identifier of step (b) provided in a .pdf format is further directed to a method of organizing human activity (managing personal behavior, following rules or instructions) as described in the independent claim. The recitation of FormRouter and PDF format are a computer component recited at a high level of generality and amounts to ‘applying’ the abstract idea on a generic computer. Second, the limitations wherein the form is built on a FormRouter (TM ) platform and Salesforce login credentials connect the FormRouter platform to Salesforce, and … pdf format recognized by Salesforce are additional elements (high level extra-solution data transmission, generally linking the judicial exception to a technology / field of use (e.g. computers, Internet)) that is not indicative of a practical application or significantly more. Furthermore, the connecting step here is claimed at a high level of detail, and represents computer functions that the courts have recognized as well-understood, routine, and conventional functions that do not present an inventive concept. See MPEP 2106.05(d)(II) in particular receiving or transmitting data over a network, using the Internet to gather data (Symantec), sending messages over a network (OIP Techs), a computer receives and sends information over a network (buySAFE). See the Applicant’s specification ¶[0024], ¶[0036] describing the additional element using FormRouter to build forms, create customer identifiers, and provide a PDF format at such a high level that indicates this additional element is a commercially available product and sufficiently well-known that the specification does not need to describe the particulars to satisfy 35 USC 112(a). See the Applicant’s specification ¶[0027-28], ¶[0036] describing the additional element using Salesforce as a CRM either locally or remotely from the customer to populate form data to the company by recognizing PDF format documents at such a high level that indicates this additional element is a commercially available product and sufficiently well-known that the specification does not need to describe the particulars to satisfy 35 USC 112(a). For the reasons described above with respect to the independent claims, this judicial exception is not meaningfully integrated into a practical application, and is not significantly more than the abstract idea.
Dependent claim 7: First, the limitation wherein the at least one document is generated through a digital signing software application pulling at least some of the information provided by the potential customer onto the document is an additional element (high level extra-solution data gathering) that is not a practical application or significantly more. The digital signing software application is a computer component that amounts to no more than using computers as a tool in its ordinary capacity (i.e. to receive data), which is not a practical application or significantly more. The pulling step here is claimed at a high level of detail, and represents computer functions that the courts have recognized as well-understood, routine, and conventional functions that do not present an inventive concept. See MPEP 2106.05(d)(II) in particular receiving or transmitting data over a network (Symantec), a computer receives and sends information over a network (buySAFE), recording a customer’s order (Apple). See the Applicant’s specification ¶[0036[ describing the additional element of pulling information provided by the customer onto the document at such a high level that indicates this additional element is sufficiently well-known that the specification does not need to describe the particulars to satisfy 35 USC 112(a). Second, the limitation wherein the document has a pre-approved format at least approved by the company merely narrow the previously recited abstract idea limitations. For the reasons described above with respect to the independent claims, the judicial exceptions are not meaningfully integrated into a practical application, or significantly more than an abstract idea.
Dependent claim 8: The limitation wherein the digital signing software application is Docusign (TM) represents an additional element (i.e. applying the judicial exception on computers, generally linking the judicial exception to a technology / field of use (e.g. computers)) that is not indicative of a practical application or significantly more. The recitation of Docusign (TM) is a computer element recited at a high level of generality and amounts to ‘applying’ the abstract idea on a generic computer / general computer component (i.e. software). Furthermore, see the Applicant’s specification ¶[0028], ¶[0036] describing the additional element using Docusign as a document signing service to electronically sign a document at such a high level that indicates this additional element is a commercially available product and sufficiently well-known that the specification does not need to describe the particulars to satisfy 35 USC 112(a). For the reasons described above with respect to the independent claims, this judicial exception is not meaningfully integrated into a practical application, and is not significantly more than the abstract idea.
Dependent claim 9: The limitation wherein after step (b) a human operator verifies the likely legitimacy of the prospective client and initiates step (c) is further directed to a method of organizing human activity (mitigating risks, managing personal behavior or relationships or interactions between people, following rules or instructions) as described in the independent claim. Similar to the independent claims, this recitation does not meaningfully integrate the abstract idea in a practical application, and is not significantly more than the abstract idea.
Dependent claim 10: The limitation wherein step (c) automatedly occurs following step (b) without human interaction represents an additional element (i.e. applying the judicial exception on computers) that is not indicative of a practical application or significantly more. Similar to the independent claims, this recitation does not meaningfully integrate the abstract idea in a practical application, and is not significantly more than the abstract idea.
Dependent claim 11: The limitation wherein after step (e) a human operator verifies the likely legitimacy of the prospective client account before onboarding the customer account is further directed to a method of organizing human activity (mitigating risks, managing personal behavior or relationships or interactions between people, following rules or instructions) as described in the independent claim. Similar to the independent claims, this recitation does not meaningfully integrate the abstract idea in a practical application, and is not significantly more than the abstract idea.
Dependent claim 12: The limitation wherein step (f) automatedly occurs following step (e) without human interaction represents an additional element (i.e. applying the judicial exception on computers) that is not indicative of a practical application or significantly more. Similar to the independent claims, this recitation does not meaningfully integrate the abstract idea in a practical application, and is not significantly more than the abstract idea.
Dependent claim 13: The limitation wherein in step (e) the potential customer electronically signs the at least one document is further directed to a method of organizing human activity (commercial or legal interactions, agreements in the form of contracts, managing personal behavior or relationships or interactions between people) as described in the independent claim. The recitation of electronically here is no more than ‘applying’ the abstract idea on a generic computer. Similar to the independent claims, this recitation does not meaningfully integrate the abstract idea in a practical application, and is not significantly more than the abstract idea.
Dependent claim 14: The limitation wherein in step (c), the engagement letter and the funding form are sent to the prospective client as the at least one form, and upon receipt of the signed engagement letter and the assets, the onboarding process is complete in step (f)(ii) is further directed to a method of organizing human activity (commercial or legal interactions, agreements in the form of contracts, managing personal behavior or relationships or interactions between people, following rules or instructions) as described in the independent claim. Also note that the activity of sending here is claimed at such a high level of detail that this also represents extra-solution data transmission, which is not a practical application or significantly more; and represents computer functions that the courts have recognized as well-understood, routine, and conventional functions that do not present an inventive concept. See MPEP 2106.05(d)(II) in particular receiving or transmitting data over a network (Symantec), sending messages over a network (OIP Techs), a computer receives and sends information over a network (buySAFE). Similar to the independent claims, this recitation does not meaningfully integrate the abstract idea in a practical application, and is not significantly more than the abstract idea.
Dependent claim 15: The limitation wherein in step (c), the account application form and funding form are sent to the prospective client as the at least one form, and upon receipt of the signed engagement letter and the assets, the onboarding process is complete in step (f)(ii) is further directed to a method of organizing human activity (commercial or legal interactions, agreements in the form of contracts, managing personal behavior or relationships or interactions between people, following rules or instructions) as described in the independent claim. Also note that the activity of sending here is claimed at such a high level of detail that this also represents extra-solution data transmission, which is not a practical application or significantly more; and represents computer functions that the courts have recognized as well-understood, routine, and conventional functions that do not present an inventive concept. See MPEP 2106.05(d)(II) in particular receiving or transmitting data over a network (Symantec), sending messages over a network (OIP Techs), a computer receives and sends information over a network (buySAFE). Similar to the independent claims, this recitation does not meaningfully integrate the abstract idea in a practical application, and is not significantly more than the abstract idea.
Therefore claims 1 and 16, and the dependent claims 2-15 and all limitations taken both individually and as an ordered combination, do not integrate the judicial exception into a practical application, nor do they include additional elements that are sufficient to amount to significantly more than the judicial exception. Accordingly, claims 1-16 are ineligible.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 non-obviousness.
Claims 1-3, 5, 7-15 are rejected under 35 U.S.C. 103 as being unpatentable over US patent application publication 2018/0060965 A1 to Kumar in view of US patent application publication 2015/0134524 A1 to Kaufman in view of US patent application publication 2014/0149283 A1 to Roselli.
Claim 1:
Kumar, as shown, teaches the following:
An automated onboarding method (Kumar Fig 2, Fig 4A, ¶[0024] details automating steps in capturing account information, validating information, integration with electronic forms, integration with document management systems, and integration with service providers to create a new account) comprising the steps of:
(a) Sending form data from a prospective client for a prospective client account through the world wide web from a remote location to a computer working on behalf of a company (Kumar ¶[0011-15], ¶[0039], ¶[0041] details investors (i.e. prospective clients) logging into the app using their personal computer and choosing self-service to enter their client information to open a financial account using an internet information services server);
(b) after (a), the computer automatedly extracting information from the form data, without human assistance, to populate an account of the prospective client of a customer relations management (CRM) account software with at least some of the information (Kumar ¶[0039], ¶[0041], ¶[0064-65] details a forms service to automatically generate forms with information captured (i.e. extracted without human assistance) during user entry to effect the creation of the account, forms may be generated on-screen and the associated financial account information may automatically get filled into the forms, the information is entered through the app as part of the CRM cloud and (per ¶[0011-15], ¶[0041]) the investor can initially enter their information through self-service) and
adding one of a customer identifier selected from the group of a customer number and an account number to the account (Kumar Fig 3A-3C, ¶[0021], ¶[0031], ¶[0046], details in steps following that client data has been received, the custodian (e.g. API service) receives translated data and returns an account number for the new account opened by processing of forms to the app; and also Fig 4A-4D, ¶[0058] details in straight-through processing after client information has been submitted the system may generate account data from the submitted information and an account number gets established, which may happen immediately);
(c) after (b), the computer automatedly populating, with at least some of the information based on a decision algorithm of the company (Kumar Figs 3B-3C, Fig 4, ¶[0017], ¶[0026], ¶[0034-35], ¶[0065] details each custodian may have their own set of forms to be completed and signed by the appropriate parties and different formats and/or methods for accepting account opening data, the system is integrated with form automation vendors, and uses APIs to pre-fill forms with data from the system, forms are generated on screen with associated financial account information that is automatically filled in; see also ¶[0095] custodian specific transformations and custodian APIs),
at least one document selected from the group of: (i) a funding form selected from one of a transfer form from a third party company and a funding request from the third party company; (ii) an engagement agreement between the prospective client and the company; and (iii) an account application form to generate a specific account at the company (Kumar Figs 3B-3C, Fig 4, Fig 5A, ¶[0015], ¶[0047], ¶[0049-56], ¶[0063] details generating appropriate forms from the financial account in the system app and then sending them to the clients to get a signature digitally, generating an XML request with the client and financial account information (e.g. as part or all of the forms data) and sending it to the form service to generate forms, the request may include account creation and/or funding, also note Fig 3A, ¶[0041], ¶[0047] the investor entering information as described for forms service and opting to fund the account selecting a value to place into the account and a selection of a bank from which to draw the value (i.e. a funding form); see Fig 5A, ¶[0015], ¶[0037] details forms for creating accounts (e.g. financial accounts) selecting product types and product companies and users can track the status of the forms through the entire account opening process, i.e. account application forms; and ¶[0046], ¶[0053-57] details new accounts are opened by processing of the forms to the app which are authenticated to open the account, i.e. account application forms);
(d) after (c), the computer automatedly sending the at least one document to the prospective client at the remote location for signature through the world wide web (Kumar Fig 2, Fig 3B, ¶[0039] details a forms package may be created by the forms service and forms generation server and sent to the client for review and signature);
(e) the prospective customer signing the at least one document and sending back through the world wide web to the computer of the company from the remote location (Kumar Fig 1, Fig 3C, ¶[0039] details a forms package is created and sent to the client for review and signature, the completed (e.g. signed) forms may be stored in the RCM cloud and/or with an integrated document management system, and the investor (i.e. client) is at a remote location);
(f) the computer of the company receiving the signed document (Kumar Fig 3C, ¶[0039] details a forms package is created and sent to the client for review and signature, the completed (e.g. signed) forms may be stored in the RCM cloud and/or with an integrated document management system) and
if the signed form is the funding form of step (c)(i) (Kumar Fig 3A, ¶[0041], ¶[0047] the investor entering information as described for forms service and opting to fund the account selecting a value to place into the account and a selection of a bank from which to draw the value (i.e. a funding form)):
(i) the computer automatedly sending the signed form to the third party company including the customer identifier of the prospective account, without human intervention through the world wide web (Kumar Fig 3D, Fig 4D, ¶[0042-47] details after receiving the signed forms the app may send data (i.e. sending without human intervention) describing the request to the bank and/or retrieve information about the bank allowing the funds to be transferred, e.g. routing number and account number);
(ii) said third party company electronically sending assets to fund the prospective account (Kumar ¶[0047], ¶[0057] details the bank may transfer the funds and the CRM cloud may fund the account); and
With respect to the following:
(iii) upon receipt of assets from the third party company, the CRM software being advised of the receipt to then activate the account as an active customer account of an active customer in the CRM software automatedly and advising a human operator at the company to at least interact with the active customer having successfully automatedly onboarded the active customer account.
Kumar, as shown in ¶[0047], ¶[0056-57], claim 8 details the bank providing notification that the account has been funded (i.e. receipt of assets from the third party company) and the CRM cloud may fund the account, the CRM cloud receives the account number that corresponds to the custodian’s database and opens the account, and automatically establishing the account comprises funding the account, but does not explicitly state (1) upon receipt of assets from the third party company then activating the account as an active customer account of an active customer in the CRM software automatedly, and (2) advising a human operator at the company to at least interact with the active customer having successfully automatedly onboarded the active customer account.
Regarding (1) upon receipt of assets from the third party company, the CRM software being advised of the receipt to then activate the account as an active customer account of an active customer in the CRM software automatedly, Kaufman teaches this limitation detailing the new financial account may be activated immediately after the financial account has been credited, in addition to notifying the user / applicant / new account owner (Kaufman Fig 1, ¶[0028-29]), and the system for opening a financial account may be implemented using a computing cloud and cloud data storage that stores the information corresponding to the new financial account including the account number, name and/or numerical identifier of the account owner, owner address, current balance, transaction records, i.e. CRM software (Kaufman ¶[0016], ¶[0038], ¶[0041]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include upon receipt of assets from the third party company, the CRM software being advised of the receipt to then activate the account as an active customer account of an active customer in the CRM software automatedly as taught by Kaufman with the teachings of Kumar, with the motivation of “financial account validation, verification or confirmation during the process of opening a new financial account” and to perform the method during a single business day (Kaufman ¶[0001], ¶[0006]). In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include upon receipt of assets from the third party company, the CRM software being advised of the receipt to then activate the account as an active customer account of an active customer in the CRM software automatedly as taught by Kaufman in the system of Kumar, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. See MPEP 2141 citing KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Regarding (2) advising a human operator at the company to at least interact with the active customer having successfully automatedly onboarded the active customer account, Roselli teaches this limitation, where a branch/third party vendor may receive an advice to issue a welcome package after a particular trigger by the customer/ staff member, where entities are able to define at which stage the welcome pack is sent (e.g. after all milestones are completed or just certain ones), and a gift (such as a welcome gift) may be initiated from an account opening that is fulfilled by staff, i.e. a human operator at the company (Roselli ¶[1075-1076], ¶[1098]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include advising a human operator at the company to at least interact with the active customer having successfully automatedly onboarded the active customer account as taught by Roselli with the teachings of Kumar in view of Kaufman, with the motivation for “consistent user experience” for “an enhanced customer experience” (Roselli ¶[0003-4]). In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include advising a human operator at the company to at least interact with the active customer having successfully automatedly onboarded the active customer account as taught by Roselli in the system of Kumar in view of Kaufman, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. See MPEP 2141 citing KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Claim 2:
Kumar in view of Kaufman in view of Roselli, as shown above, teach the limitations of claim 1. Kumar also teaches the following:
wherein the form of step (a) is a digital form (Kumar ¶[0039], ¶[0063] details using an eSignature service provided by an eSignature web server, and DocuSign).
Claim 3:
Kumar in view of Kaufman in view of Roselli, as shown above, teach the limitations of claim 2. Kumar also teaches the following:
wherein the digital form of claim 2 has reciprocal coding assisting the potential customer by autofilling at least some information on the form based on information provided by the potential customer on the form (Kumar ¶[0039], ¶[0041] details the forms generation server automatically generates the forms with the information captured during user entry, and the information is provided by the investor through a self-service option on the app).
Claim 5:
Kumar in view of Kaufman in view of Roselli, as shown above, teach the limitations of claim 1. Kumar also teaches the following:
wherein the CRM software is Salesforce (Kumar ¶[0020] details Salesforce).
Claim 7:
Kumar in view of Kaufman in view of Roselli, as shown above, teach the limitations of claim 1. Kumar also teaches the following:
wherein the at least one document is generated through a digital signing software application pulling at least some of the information provided by the potential customer onto the document, wherein the document has a pre-approved format at least approved by the company (Kumar ¶[0032], ¶[0035], ¶[0041], ¶[0063] details using DocuSign for forms generation and eSignature functionality, and the system pre-filling forms with APIs with information from the system, the information is entered by the investor)
Claim 8:
Kumar in view of Kaufman in view of Roselli, as shown above, teach the limitations of claim 7. Kumar also teaches the following:
wherein the digital signing software application is DocuSign (TM) (Kumar ¶[0063] details DocuSign for forms generation and eSignature functionality).
Claim 9:
Kumar in view of Kaufman in view of Roselli, as shown above, teach the limitations of claim 1. With respect to the following:
wherein after step (b) a human operator verifies the likely legitimacy of the prospective client and initiates step (c).
Kumar, as shown in Fig 4A, ¶[0013], ¶[0041-42] details an investor may choose self-service and enter information including the financial information (otherwise entered by an advisor), and following entry the app may notify the advisor to log into the app, then in Fig 5F, ¶[0059-61] the advisor is asked to please review the fields listed in the NIGO information section (e.g. Investment amount), and in Fig 4A, ¶[0035], ¶[0064] the advisor initiates the forms generation (which automatically pre-populates some of the information), highly suggesting but not explicitly stating the human operator verifies the likely legitimacy of the prospective client and performs the review. To the extent that Kumar may not explicitly state this, Roselli teaches this remaining feature with one or more manual validations performed by a person including bank staff examining and verifying identification to determine the true identity of all customers requesting the bank’s services (Roselli ¶[0446-48]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a human operator verifies the likely legitimacy of the prospective client as taught by Roselli with the teachings of Kumar in view of Kaufman (in view of Roselli), with the motivation “to meet local and regional legislation/regulations as well as global business criteria” (Roselli ¶[0006]). In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a human operator verifies the likely legitimacy of the prospective client as taught by Roselli in the system of Kumar in view of Kaufman (in view of Roselli), since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. See MPEP 2141 citing KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Claim 10:
Kumar in view of Kaufman in view of Roselli, as shown above, teach the limitations of claim 1. Kumar also teaches the following:
wherein step (c) automatedly occurs following step (b) without human interaction (Kumar Fig 3B-3C, Fig 4, ¶[0039], ¶[0065] details the account information may automatically get filled into the forms; also noting ¶[0078-93] details the system performed process does not include human interaction where capturing investor and financial information and serializing the financial account data (i.e. step b) occurs before generating the pre-fill request for a forms vendor (i.e. step c)).
Claim 11:
Kumar in view of Kaufman in view of Roselli, as shown above, teach the limitations of claim 1. With respect to the following:
wherein after step (e) a human operator verifies the likely legitimacy of the prospective client account before onboarding the customer account.
Kumar, as shown in Fig 3C, ¶[0044-46] details the eSignature service receives the signed forms (i.e. documents) and sends them to the app, and the advisor may submit the signed forms to the custodian using the app, and then the custodian may accept and process the forms and return an account number for the new account opened by the processing of the forms; highly suggesting but not explicitly stating the human operator verifies the likely legitimacy of the prospective client and performs the review before onboarding the customer account. To the extent that Kumar may not explicitly state this, Roselli teaches this remaining feature with one or more manual validations performed by a person including bank staff examining and verifying identification to determine the true identity of all customers requesting the bank’s services, and documentary verification (Roselli ¶[0446-48]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a human operator verifies the likely legitimacy of the prospective client before onboarding the customer account as taught by Roselli with the teachings of Kumar in view of Kaufman (in view of Roselli), with the motivation “to meet local and regional legislation/regulations as well as global business criteria” (Roselli ¶[0006]). In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a human operator verifies the likely legitimacy of the prospective client before onboarding the customer account as taught by Roselli in the system of Kumar in view of Kaufman (in view of Roselli), since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. See MPEP 2141 citing KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Claim 12:
Kumar in view of Kaufman in view of Roselli, as shown above, teach the limitations of claim 1. Kumar also teaches the following:
wherein step (f) automatedly occurs following step (e) without human interaction (Kumar Fig 3D, Fig 4D, ¶[0042-47], claim 8 details after receiving the signed forms (step e) the app may send data (i.e. sending without human interaction / intervention) describing the request to the bank and/or retrieve information about the bank allowing the funds to be transferred (e.g. routing number and account number), the bank may then transfer the funds and the app may provide notification that the account has been funded and automatically establish the account).
Claim 13:
Kumar in view of Kaufman in view of Roselli, as shown above, teach the limitations of claim 1. Kumar also teaches the following:
wherein in step (e) the potential customer electronically signs the at least one document (Kumar Fig 3B, ¶[0039], ¶[0044], ¶[0052] details a forms package is sent to the client for review and signature; the investor signs the forms using eSignature service, and completed (e.g. signed) forms may be stored in CRM cloud or within an integrated document management system).
Claim 14:
Kumar in view of Kaufman in view of Roselli, as shown above, teach the limitations of claim 1. With respect to the following:
wherein in step (c), the engagement letter and the funding form are sent to the prospective client as the at least one form, and
upon receipt of the signed engagement letter and the assets, the onboarding process is complete in step (f)(ii).
Kumar, as shown in ¶[0047], ¶[0054] details the CRM cloud may receive client and account information for account creation and/or funding, and Fig 3A, ¶[0041], ¶[0047] the investor entering information as described for forms service and opting to fund the account selecting a value to place into the account and a selection of a bank from which to draw the value (i.e. a funding form), then in Fig 3B, ¶[0110] the investor receives the selected forms to sign; and Fig 3D, ¶[0047] the bank may transfer the funds and the app may provide notification that the account has been funded, concluding the process; but does not explicitly state the engagement letter is sent to the prospective client as the at least one form, and upon receipt of the signed engagement letter the onboarding process is complete. However, Roselli teaches this remaining feature, with presenting the customer with Terms and Conditions and Disclosures / Terms and Conditions agreement (i.e. engagement letter) related to the account that he/she is opening that are presented to the customer, and acceptance of the terms and conditions maybe passive or non-passive (e.g. online / verbal / wet signature), acceptance must be a completed milestone to activate the account (Roselli ¶[0457-460], ¶[0471-472], ¶[1402]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the engagement letter and the funding form are sent to the prospective client as the at least one form; and upon receipt of the signed engagement letter… the onboarding process is complete as taught by Roselli with the teachings of Kumar in view of Kaufman (in view of Roselli), with the motivation “to meet local and regional legislation/regulations as well as global business criteria” (Roselli ¶[0006]). In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the engagement letter and the funding form are sent to the prospective client as the at least one form; and upon receipt of the signed engagement letter… the onboarding process is complete as taught by Roselli in the system of Kumar in view of Kaufman (in view of Roselli), since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. See MPEP 2141 citing KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Claim 15:
Kumar in view of Kaufman in view of Roselli, as shown above, teach the limitations of claim 1. With respect to the following:
wherein in step (c), the account application form and funding form are sent to the prospective client as the at least one form, and
upon receipt of the signed engagement letter and the assets, the onboarding process is complete in step (f)(ii).
Kumar, as shown in ¶[0047], ¶[0054] details the CRM cloud may receive client and account information for account creation and/or funding, and Fig 3A, ¶[0041], ¶[0047] the investor entering information as described for forms service and opting to fund the account selecting a value to place into the account and a selection of a bank from which to draw the value (i.e. a funding form), see Fig 5A, ¶[0015], ¶[0037] details forms for creating accounts (e.g. financial accounts) selecting product types and product companies and users can track the status of the forms through the entire account opening process (i.e. account application forms), then in Fig 3B, ¶[0110] the investor receives the selected forms to sign; and Fig 3D, ¶[0047] the bank may transfer the funds and the app may provide notification that the account has been funded, concluding the process; but does not explicitly state the engagement letter and upon receipt of the signed engagement letter the onboarding process is complete. However, Roselli teaches this remaining feature, with presenting the customer with Terms and Conditions and Disclosures / Terms and Conditions agreement (i.e. engagement letter) related to the account that he/she is opening that are presented to the customer, and acceptance of the terms and conditions may be passive or non-passive (e.g. online / verbal / wet signature), acceptance must be a completed milestone to activate the account (Roselli ¶[0457-460], ¶[0471-472], ¶[1402]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the engagement letter and upon receipt of the signed engagement letter… the onboarding process is complete as taught by Roselli with the teachings of Kumar in view of Kaufman (in view of Roselli), with the motivation “to meet local and regional legislation/regulations as well as global business criteria” (Roselli ¶[0006]). In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the engagement letter and upon receipt of the signed engagement letter… the onboarding process is complete as taught by Roselli in the system of Kumar in view of Kaufman (in view of Roselli), since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. See MPEP 2141 citing KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Claims 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over US patent application publication 2018/0060965 A1 to Kumar in view of US patent application publication 2015/0134524 A1 to Kaufman in view of US patent application publication 2014/0149283 A1 to Roselli, as applied to claims 1 and 5 above, and further in view of FormRouter.com “Submit PDF Forms to SalesForce.com: Mobile Friendly, FormRouter” (<https://formrouter.com/submit-pdf-forms-to-salesforce/>) to FormRouter.
Claim 4:
Kumar in view of Kaufman in view of Roselli, as shown above, teach the limitations of claim 1. With respect to the following:
wherein the form is built on a FormRouter (TM) platform.
Kumar, as shown in ¶[0039] details using a forms generation server to automatically generate forms with information captured during user entry to effect the creation of the account, but does not explicitly state using FormRouter. However, this is taught by FormRouter, noting the video describing how to build a PDF form using FormRouter, pointing the form to a FormRouter account, mapping the form to a salesforce.com object after logging into a salesforce account (FormRouter video 0:16 through 1:55; section beginning “FormRouter will show you how to…”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the form is built on a FormRouter (TM) platform as taught by FormRouter with the teachings of Kumar in view of Kaufman in view of Roselli, with the motivation to “allow[] you to take advantage of PDF forms and Salesforce to collect and collaboratively work with data” and “system works with free Adobe Reader or Web Browser” (FormRouter section beginning “FormRouter will show you how to…”, section beginning “Additional Features…”). In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the form is built on a FormRouter (TM) platform as taught by FormRouter in the system of Kumar in view of Kaufman in view of Roselli, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. See MPEP 2141 citing KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Claim 6:
Kumar in view of Kaufman in view of Roselli, as shown above, teach the limitations of claim 5. With respect to the following:
wherein the form is built on a FormRouter (TM ) platform and Salesforce login credentials connect the FormRouter platform to Salesforce,
wherein FormRouter creates the customer identifier of step (b) provided in a .pdf format and recognized by Salesforce.
Kumar, as shown in Fig 3A, Fig 5A, ¶[0042] details an advisor using salesforce login credentials, but does not explicitly state wherein the form is built on a FormRouter (TM ) platform and Salesforce login credentials connect the FormRouter platform to Salesforce, wherein FormRouter creates the customer identifier of step (b) provided in a .pdf format and recognized by Salesforce. However, these features are taught by FormRouter, noting the video describing how to build a PDF form using FormRouter, pointing the form to a FormRouter account, mapping the form to a salesforce.com object after logging into a salesforce account, the PDF is created and attached to the salesforce record (e.g. resume.PDF), noting that the PDF and salesforce record includes a generated reference number (FormRouter video 0:16 through 1:55; video at 2:07 shows attached PDF in salesforce.com, video at 2:02 shows the reference number on the salesforce.com record, video at 2:14 shows the reference number on the PDF; section beginning “FormRouter will show you how to…”).
PNG
media_image1.png
450
796
media_image1.png
Greyscale
PNG
media_image2.png
456
810
media_image2.png
Greyscale
PNG
media_image3.png
448
800
media_image3.png
Greyscale
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the form is built on a FormRouter (TM ) platform and Salesforce login credentials connect the FormRouter platform to Salesforce, wherein FormRouter creates the customer identifier of step (b) provided in a .pdf format and recognized by Salesforce as taught by FormRouter with the teachings of Kumar in view of Kaufman in view of Roselli, with the motivation to “allow[] you to take advantage of PDF forms and Salesforce to collect and collaboratively work with data” and “system works with free Adobe Reader or Web Browser” (FormRouter section beginning “FormRouter will show you how to…”, section beginning “Additional Features…”). In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the form is built on a FormRouter (TM) platform and Salesforce login credentials connect the FormRouter platform to Salesforce, wherein FormRouter creates the customer identifier of step (b) provided in a .pdf format and recognized by Salesforce as taught by FormRouter in the system of Kumar in view of Kaufman in view of Roselli, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. See MPEP 2141 citing KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over US patent application publication 2018/0060965 A1 to Kumar in view of US patent application publication 2014/0149283 A1 to Roselli.
Claim 16:
Kumar, as shown, teaches the following:
An automated onboarding method (Kumar Fig 2, Fig 4A, ¶[0024] details automating steps in capturing account information, validating information, integration with electronic forms, integration with document management systems, and integration with service providers to create a new account) comprising the steps of:
(a) Sending a form for a prospective client account through the world wide web from a remote location to a computer working on behalf of a company (Kumar ¶[0011-15], ¶[0039], ¶[0041] details investors (i.e. prospective clients) logging into the app using their personal computer and choosing self-service to enter their client information in the app (i.e. sending a form) to open a financial account using an internet information services server);
(b) after (a), the computer automatedly extracting information from the form, without human assistance, to populate an account of the prospective client of a customer relations management (CRM) account software with at least some of the information (Kumar ¶[0039], ¶[0041], ¶[0064-65] details a forms service to automatically generate forms with information captured (i.e. extracted without human assistance) during user entry to effect the creation of the account, forms may be generated on-screen and the associated financial account information may automatically get filled into the forms, the information is entered through the app as part of the CRM cloud and (per ¶[0011-15], ¶[0041]) the investor can initially enter their information through self-service) and
adding one of a customer identifier selected from the group of a customer number and an account number to the account (Kumar Fig 3A-3C, ¶[0021], ¶[0031], ¶[0046], details in steps following that client data has been received, the custodian (e.g. API service) receives translated data and returns an account number for the new account opened by processing of forms to the app; and also Fig 4A-4D, ¶[0058] details in straight-through processing after client information has been submitted the system may generate account data from the submitted information and an account number gets established, which may happen immediately);
(c) after (b), the computer automatedly populating, with at least some of the information based on a decision algorithm of the company (Kumar Figs 3B-3C, Fig 4, ¶[0017], ¶[0026], ¶[0034-35], ¶[0065] details each custodian may have their own set of forms to be completed and signed by the appropriate parties and different formats and/or methods for accepting account opening data, the system is integrated with form automation vendors, and uses APIs to pre-fill forms with data from the system, forms are generated on screen with associated financial account information that is automatically filled in; see also ¶[0095] custodian specific transformations and custodian APIs),
at least one document selected from the group of: (i) a funding form selected from one of a transfer form from a third party company and a funding request from the third party company; (ii) an engagement agreement between the prospective client and the company; and (iii) an account application form to generate a specific account at the company (Kumar Figs 3B-3C, Fig 4, Fig 5A, ¶[0015], ¶[0047], ¶[0049-56], ¶[0063] details generating appropriate forms from the financial account in the system app and then sending them to the clients to get a signature digitally, generating an XML request with the client and financial account information (e.g. as part or all of the forms data) and sending it to the form service to generate forms, the request may include account creation and/or funding, also note Fig 3A, ¶[0041], ¶[0047] the investor entering information as described for forms service and opting to fund the account selecting a value to place into the account and a selection of a bank from which to draw the value (i.e. a funding form); see Fig 5A, ¶[0015], ¶[0037] details forms for creating accounts (e.g. financial accounts) selecting product types and product companies and users can track the status of the forms through the entire account opening process, i.e. account application forms; and ¶[0046], ¶[0053-57] details new accounts are opened by processing of the forms to the app which are authenticated to open the account, i.e. account application forms);
(d) after (c), the computer automatedly sending the at least one document to the prospective client for signature through the world wide web (Kumar Fig 2, Fig 3B, ¶[0039] details a forms package may be created by the forms service and forms generation server and sent to the client for review and signature);
(e) the prospective customer signing the at least one document and sending back through the world wide web from the remote location to the computer of the company (Kumar Fig 1, Fig 3C, ¶[0039] details a forms package is created and sent to the client for review and signature, the completed (e.g. signed) forms may be stored in the RCM cloud and/or with an integrated document management system, and the investor (i.e. client) is at a remote location);
(f) the computer of the company receiving the signed document (Kumar Fig 3C, ¶[0039] details a forms package is created and sent to the client for review and signature, the completed (e.g. signed) forms may be stored in the RCM cloud and/or with an integrated document management system) and
With respect to the following:
(f) the computer of the company receiving the signed document and if the signed form is the engagement agreement of step (c)(ii), the CRM software automatedly activating the account as an active customer account of an active customer in the CRM software and advising a human operator at the company to at least interact with the active customer having successfully automatedly onboarded the active customer account.
Kumar, as shown in Fig 3A-3C, Fig 5A, ¶[0042], ¶[0044-47], ¶[0056-57] details the app receiving the signed forms from the client / investor, and the CRM cloud (CRM software) receives an account number that corresponds to the custodian’s database and opens the account, but does not explicitly state the signed form is the engagement agreement, and automatedly activating the account as an active customer account of an active customer in the software and advising a human operator at the company to at least interact with the active customer having successfully onboarded the active customer account. However, Roselli teaches this remaining feature, with presenting the customer with Terms and Conditions and Disclosures / Terms and Conditions agreement (i.e. engagement agreement) related to the account that he/she is opening that are presented to the customer, and acceptance of the terms and conditions may be passive or non-passive (e.g. online / verbal / wet signature), acceptance must be a completed milestone to activate the account (Roselli ¶[0457-460], ¶[0471-472], ¶[1402]); and a branch / third party vendor may receive an advice to issue a welcome package after a particular trigger by the customer / staff member, where entities are able to define at which stage the welcome pack is sent (e.g. after all milestones are completed or just certain ones), and a gift (such as a welcome gift) may be initiated from an account opening that is fulfilled by staff, i.e. a human operator at the company (Roselli ¶[1075-1076], ¶[1098]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the computer of the company receiving the signed document and if the signed form is the engagement agreement of step (c)(ii), the CRM software automatedly activating the account as an active customer account of an active customer in the CRM software and advising a human operator at the company to at least interact with the active customer having successfully automatedly onboarded the active customer account as taught by Roselli with the teachings of Kumar, with the motivation for “consistent user experience” for “an enhanced customer experience” (Roselli ¶[0003-4]). In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the computer of the company receiving the signed document and if the signed form is the engagement agreement of step (c)(ii), the CRM software automatedly activating the account as an active customer account of an active customer in the CRM software and advising a human operator at the company to at least interact with the active customer having successfully automatedly onboarded the active customer account as taught by Roselli in the system of Kumar, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. See MPEP 2141 citing KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
EXAMINER’S NOTE: The limitation “…if the signed form is the engagement agreement of step (c)(ii), the CRM software automatedly activating the account as an active customer account of an active customer in the CRM software and advising a human operator at the company to at least interact with the active customer having successfully automatedly onboarded the active customer account” is a contingent limitation. Broadest reasonable interpretation is that the invention of claim 16 is a method that may either be practiced (1) with the step (f) “automatically activating the account…, advising a human operator…” steps (i.e. if the signed form is the engagement agreement), or (2) without the step (f) “automatically activating the account…, advising a human operator” steps (i.e. if the signed form is not the engagement agreement). The condition of ‘the signed form is the engagement form’ is not met by Kumar (Roselli is relied upon to teach this feature), and as such Kumar also teaches this limitation. See MPEP 2111.04 (II) including the citation to Ex parte Schulhauser “[i]f the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed”.
Additional Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
“How to Configure Web-To-Lead” <https://www.shellblack.com/marketing/web-to-lead/> (July 2, 2010) to Shellblack details the Salesforce web-to-lead process to capture customer entered information online and automatically create Salesforce records.
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 BRIAN TALLMAN whose telephone number is (571)272-3198. The examiner can normally be reached Monday-Friday 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, Jeff Zimmerman can be reached at (571) 272-4602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
BRIAN TALLMAN
Examiner
Art Unit 3628
/BRIAN A TALLMAN/Examiner, Art Unit 3628
/MICHAEL P HARRINGTON/Primary Examiner, Art Unit 3628
Prosecution Insights