DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
RCE Acknowledgement
Applicant’s Request for Continued Examination (RCE) dated 08/11/2026 under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office Action has been withdrawn pursuant to 37 CFR 1.114, and the Applicant's RCE submission filed on 11 AUGUST 2026 has been entered.
Status of Claims
Claims 10-20 are pending in this instant application per RCE claim amendments and remarks filed on 08/11/2026. Claims 1-9 have been cancelled, and independent claims 10 and 16 have been amended. Claims 10 and 16 are independent claims reciting system and method claims. Claims 11-14 and 17-20 are dependent on two independent claims respectively.
This Office Action is a non-final rejection in response to RCE claim amendments and remarks filed by the Applicant on 11 AUGUST 2026 for its original application of 20 MARCH 2024 that is titled: “System Automated High Risk in Messaging”. Claim amendments to overcome previous 112(b) rejections are acknowledged and entered, because these amendments were entered as part of After-Final request, and thus, are not shown as underlined. The rejection of Claims 10-20 under 35 USC § 101 directed to non-statutory subject matter is maintained.
Accordingly, Claims 10-20 are now being rejected herein.
Claim Rejections - 35 USC §112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL — The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 10-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. As described above, the disclosure does not provide adequate structure to perform the claimed functions of {“in response to a single input received via the online messaging system, activate, within the online messaging system and without accessing a verification system separate from the online messaging system, an automated verification process that authenticates the client if the need of the client is determined to be a high risk need, wherein the automated verification process employs the deployed neural network to autonomously authenticate the client in a background of the online messaging system without further action by an agent operating the online messaging system.”}, …… the Specification does not demonstrate that Applicant has made an invention that achieves the claimed function, because the invention is not described with sufficient detail about “a single input received ……… without accessing a verification system” such that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. AND Examiner notes that “a single input received” OR “a single input” OR “without accessing” have Not Been Recited in the Specification; and that word “single” is recited five/5 times in Specification as “a single system or server” in para [0046]; or as “a single hidden layer” in para [0068]; or as “the single hidden layer 114” in para [0071]; or as “a single classification” in para [0076]; or as “any single embodiment” in para [0092]; and similarly word “without” is recited a few times without “accessing”. Furthermore, Examiner notes that no details of “online messaging system” are given in the Specification, other than one-time recitation of “an online messaging system” in Summary para [0008] of Specification as in {“The method includes corresponding with the client through an online messaging system to determine a need of the client,………”} without more details of “the online messaging system” in the Specification. Similarly, no details are provided for “a high risk need” in the Specification other a single recitation of “a high risk need” in Summary para [0008] of Specification. Again, phrase “deployed neural network” is Not recited in the Specification; instead Examiner found support for “a feedforward neural network 110” in the Specification; and that variations of word “deploy” are recited in paras [0017] & [0083] as “deployment by machine learning”, and in para [0086], “deployment” is recited as “where model deployment is triggered”; and Examiner notes that none of these three “deploy/ment” recitations in Specification are for the claimed “neural network”.
Appropriate correction is required.
Claim Rejections - 35 USC §101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
(NOTE: Latest RCE ‘amendments to the claims’ filed by the Applicant on 08/11/2026 are shown as bold and underlined additions, and all deletions may not be shown, or may not be underlined when stricken through. Underlined amendments to the claims that are shown below are from previously submitted claim amendments by the Applicant.)
Claims 10-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more, wherein Claims 10 and 16 are independent system and method claims respectively.
Exemplary Analysis.
Claim 16: Ineligible.
The claim recites a series of steps. The claim is directed to a method reciting a series of steps, which is a statutory category of invention (Step 1--YES).
The claim is analyzed to determine whether it is directed to a judicial exception. The claim recites the limitations about: providing automated verification of a client of a bank, comprised of: using training test data, iteratively predicting the factors from the training test data that correlate to authenticating a person, the predicting generating a prediction; testing and comparing, during each iteration, the prediction to a target variable associated with authenticating a person so as to improve the ability to authenticate the person; indicating, for each iteration and via a feedback loop, modifications to weights assigned to nodes to predict the target variable and reduce an error of the prediction; corresponding with the client to determine a need of the client; [[]] determining that the client is authenticated using the automated verification process; and satisfying the need of the client. In other words, the claim describes a method (and system) for providing an automated verification of a client of a bank for performing a high risk action during a messaging session (see Abstract). These limitations, as drafted, are steps of a method that, under its broadest reasonable interpretation, covers performance of the limitations via a method of organizing human activity such as fundamental economic principles or practices, and/or commercial or legal interactions and/or managing behavior or relationships or interactions between people, but for the recitation of generic processor and/or computer component/s such as the devices/ mobile devices. These limitations fall under the “certain methods of organizing human activity” group (Step 2A1--YES).
Next, the claim is analyzed to determine if it is integrated into a practical application. The claim recites additional elements of: the client is a person, training a neural network to predict factors for authenticating a client, deploying the trained neural network; an online messaging system, wherein the automated verification process employs the deployed neural network; and a verification system as in in response to a single input received via the online messaging system, activate, within the online messaging system and without accessing a verification system separate from the online messaging system, an automated verification process that authenticates the client if the need of the client is determined to be a high risk need, wherein the automated verification process employs the deployed neural network to autonomously authenticate the client in a background of the online messaging system without further action by an agent operating the online messaging system. These additional elements, such as online messaging system, machine learning model, neural network, a verification system, etc. that includes processor/s and computing device/s in the steps are hardware recited at a high level of generality, i.e., as generic processors performing generic computer/s functions of processing data (as described above). These generic processors are no more than mere instructions to apply the exception using generic processor/s and/or computing device/s. 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. Thus, the claim is directed to the abstract idea (Step 2A2--NO).
Next, the claim is analyzed to determine if there are additional elements in this claim that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed with respect to Step 2A2 above, the additional elements in the claim amount to no more than mere instructions to apply the exception using generic processor/s and/or computing device/s. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic processor/s and/or computing device/s over a network cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Because the additional elements described above were considered to be hardware in Step 2A, they are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine and conventional in the field. The disclosure does not provide any indication that these processor/s and/ or computing device/s are anything other than generic processors and the Symantec, TLI, and OIP Techs. court decisions (MPEP 2106.05 (d) (II)) indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). Also, paras [0029]-[0038] of the Applicant’s own Specification describe ---
{“[0029] FIG. 1 illustrates a system 10, such as a banking system, and environment thereof by which a user 18 benefits through use of services and products of an enterprise system 12. The user 18 accesses services and products by use of one or more user devices, illustrated in separate examples as a computing device 14 and a mobile device 16, which may be, as non-limiting examples, a smart phone, a portable digital assistant (PDA), a pager, a mobile television, a gaming device, a laptop computer, a camera, a video recorder, an audio/video player, radio, a GPS device, or any combination of the aforementioned, or other portable device with processing and communication capabilities. In the illustrated example, the mobile device 16 is the system 10 as having exemplary elements, the below descriptions of which apply as well to the computing device 14, which can be, as non-limiting examples, a desktop computer, a laptop computer or other user-accessible computing device. ………………………………………………..
[0030] Furthermore, the user device, referring to either or both of the computing device 14 and the mobile device 16, may be or include a workstation, a server, or any other suitable device, including a set of servers, a cloud-based application or system, or any other suitable system, adapted to execute, for example any suitable operating system, including Linux, UNIX, Windows, macOS, iOS, Android and any other known operating system used on personal computers, central computing systems, phones, and other devices. …………………………………….
[0031] The user 18 can be an individual, a group or any entity in possession of or having access to the user device, referring to either or both of the computing device 14 and the mobile device 16, which may be personal or public items. Although the user 18 may be singly represented in some drawings, at least in some embodiments according to these descriptions the user 18 is one of many such that a market or community of users, consumers, customers, business entities, government entities, clubs, and groups of any size are all within the scope of these descriptions. …………………………………………………………………………………………………………………………..
[0032] The user device, as illustrated with reference to the mobile device 16, includes components such as at least one of each of a processing device 20, and a memory device 22 for processing use, such as random access memory (RAM), and read-only memory (ROM). The illustrated mobile device 16 further includes a storage device 24 including at least one of a non-transitory storage medium, such as a microdrive, for long-term, intermediate-term, and short-term storage of computer-readable instructions 26 for execution by the processing device 20. For example, the instructions 26 can include instructions for an operating system and various applications or programs 30, of which the application 32 is represented as a particular example. The storage device 24 can store various other data items 34, which can include, as non-limiting examples, cached data, user files such as those for pictures, audio and/or video recordings, files downloaded or received from other devices, and other data items preferred by the user or required or related to any or all of the applications or programs 30. ……………………………….
[0033] The memory device 22 is operatively coupled to the processing device 20. As used herein, memory includes any computer readable medium to store data, code, or other information. The memory device 22 may include volatile memory, such as volatile RAM including a cache area for the temporary storage of data. The memory device 22 may also include non-volatile memory, which can be embedded and/or may be removable. The non-volatile memory can additionally or alternatively include an electrically erasable programmable read-only memory (EEPROM), flash memory or the like. ……………………………………………………….
[0034] The memory device 22 and the storage device 24 can store any of a number of applications that comprise computer-executable instructions and code executed by the processing device 20 to implement the functions of the mobile device 16 described herein. For example, the memory device 22 may include such applications as a conventional web browser application and/or a mobile P2P payment system client application. These applications also typically provide a graphical user interface (GUI) on a display 40 that allows the user 18 to communicate with the mobile device 16, and, for example, a mobile banking system, and/or other devices or systems. In one embodiment, when the user 18 decides to enroll in a mobile banking program, the user 18 downloads or otherwise obtains the mobile banking system client application from a mobile banking system, for example, the enterprise system 12, or from a distinct application server. In other embodiments, the user 18 interacts with a mobile banking system via a web browser application in addition to, or instead of, the mobile P2P payment system client application. …………………………………………………………………………………………………….
[0035] The processing device 20, and other processors described herein, generally include circuitry for implementing communication and/or logic functions of the mobile device 16. For example, the processing device 20 may include a digital signal processor, a microprocessor, and various analog to digital converters, digital to analog converters, and/or other support circuits. Control and signal processing functions of the mobile device 16 are allocated between these devices according to their respective capabilities. The processing device 20 thus may also include the functionality to encode and interleave messages and data prior to modulation and transmission. The processing device 20 can additionally include an internal data modem. Further, the processing device 20 may include functionality to operate one or more software programs, which may be stored in the memory device 22, or in the storage device 24. For example, the processing device 20 may be capable of operating a connectivity program, such as a web browser application. The web browser application may then allow the mobile device 16 to transmit and receive web content, such as, for example, location-based content and/or other web page content, according to a wireless application protocol (WAP), hypertext transfer protocol (HTTP), and/or the like. ……………………………………………………………………………………………
[0036] The memory device 22 and the storage device 24 can each also store any of a number of pieces of information, and data, used by the user device and the applications and devices that facilitate functions of the user device, or are in communication with the user device, to implement the functions described herein and others not expressly described. For example, the storage device 24 may include such data as user authentication information, etc. …………
[0037] The processing device 20, in various examples, can operatively perform calculations, can process instructions for execution and can manipulate information. The processing device 20 can execute machine-executable instructions stored in the storage device 24 and/or the memory device 22 to thereby perform methods and functions as described or implied herein, for example, by one or more corresponding flow charts expressly provided or implied as would be understood by one of ordinary skill in the art to which the subject matters of these descriptions pertain. The processing device 20 can be or can include, as non-limiting examples, a central processing unit (CPU), a microprocessor, a graphics processing unit (GPU), a microcontroller, an application-specific integrated circuit (ASIC), a programmable logic device (PLD), a digital signal processor (DSP), a field programmable gate array (FPGA), a state machine, a controller, gated or transistor logic, discrete physical hardware components, and combinations thereof. In some embodiments, particular portions or steps of methods and functions described herein are performed in whole or in part by way of the processing device 20, while in other embodiments methods and functions described herein include cloud-based computing in whole or in part such that the processing device 20 facilitates local operations including, as non-limiting examples, communication, data transfer, and user inputs and outputs such as receiving commands from and providing displays to the user. …………………………………..
[0038] The mobile device 16, as illustrated, includes an input and output system 36, referring to, including, or operatively coupled with, user input devices and user output devices, which are operatively coupled to the processing device 20. The user output devices include the display 40 (e.g., a liquid crystal display or the like), which can be, as a non-limiting example, a touch screen of the mobile device 16, which serves both as an output device, by providing graphical and text indicia and presentations for viewing by one or more of the users 18, and as an input device, by providing virtual buttons, selectable options, a virtual keyboard, and other indicia that, when touched, control the mobile device16 by user action. The user output devices include a speaker 44 or other audio device. The user input devices, which allow the mobile device 16 to receive data and actions such as button manipulations and touches from a user such as the user 18, may include any of a number of devices allowing the mobile device 16 to receive data from a user, such as a keypad, keyboard, touch-screen, touchpad, microphone 42, mouse, joystick, other pointer device, button, soft key, and/or other input device(s). The user interface may also include a camera 46, such as a digital camera. ”} ---
and indicate that the concept/s described by extra-solution additional elements is conventional. Accordingly, a conclusion that the aforementioned extra-solution additional elements are well-understood, routine and conventional activity is supported under Berkheimer options 2 and 3, respectively.
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional elements do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea (Step 2B--NO), and the claim is not patent eligible.
The analysis above applies to all statutory categories of the invention including independent system Claim 10, which perform the steps similar to those of independent method Claim 16. Furthermore, the limitations of dependent method Claims 17-20, further narrow the independent method Claim 16 with additional steps and limitations (e.g., wherein activating the automated process causes the process to request a cell phone number from the client, send a text to the client with a passcode, ……; wherein activating the automated process is performed by clicking a button on a computer screen; wherein corresponding with the client includes corresponding with the client through a bot before corresponding with the client through an agent, ……; wherein the at least one neural network is a convolutional neural network (CNN) or a recurrent neural network (RNN); etc.), and do not resolve the issues raised in rejection of the independent method Claim 16. Similarly, dependent system Claims 11-15 also further narrow their independent system Claim 10, which are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Therefore, said Claims 10-20 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant's RCE remarks (on pages 1-12) and claim amendments dated 11
AUGUST 2026 with respect to the rejection of Claims 10-20 have been carefully considered, but they are not persuasive and do not put these amended claims in condition for Allowance. Thus, the rejection of RCE amended Claims 10-20 has been maintained as described above. Additionally, Examiner notes that all of the previous rejections under 35 USC §112, second paragraph, or 112 (b) in the last Office Action have been withdrawn. Examiner respectfully disagrees with the Applicant’s remark – {“The amendments satisfy the written description and enablement requirements of 35 U.S.C. § 112(a).“}, and as described in newly added section above titled --- Claim Rejections 35 USC 112(a). Thus, the rejection of Claims 10-20, as described above, is being maintained herein under 35 USC 101 rejection with some modifications in this Office Action {addition of 35 USC 112(a)}, where needed to provide clarification in response to the Applicant’s RCE claim amendments and remarks of 08/11/2026.
In response to the Applicant’s arguments against the rejection under 35 USC 101, Examiner respectfully disagrees. Examiner clarifies that the instant application is nothing more than an improvement of an abstract idea (authenticating a client), wherein using technology/ computers (neural network is used as a tool) to implement the abstract idea is at most an improvement to the abstract idea.
Examiner respectfully disagrees with the Applicant’s assertion of 08/11/2026 that these claims are eligible under Step 2A, Prong One without providing any proof as to why Examiner’s findings are invalid --- {“The Examiner found under Step 2A, Prong One that the claims recite "certain methods of organizing human activity"-specifically, "fundamental economic principles or practices" (based on "a client of a bank"), "commercial or legal interactions" (based on "training test data"), and "managing personal behavior or relationships" (based on "comparing the prediction to a target variable").”}. Please see more details in para (22.) below also. Furthermore, Applicant citing similarity to Example 39 is moot, as it was found invalid previously and described in para (25.) below.
In further response to Applicant’s citing similarity with PTAB’s Hannun decision in remarks of 08/11/2026, Examiner respectfully disagrees. Examiner notes that Hannun decision by the PTAB found that mental processes and methods of organizing human activity are two separate categories of abstract ideas; and the claims recited steps of normalizing an input file, generating a jitter set of audio files, generating a set of spectrogram frames, obtaining predicted character probabilities from a trained neural network, and decoding a transcription of the input audio using the predicted character probability outputs. The instant application does not recite similar steps as in Hannun, for example but not limited to, steps of normalizing an input file, generating a jitter set of audio files, generating a set of spectrogram frames, etc. are not recited in claims listing of the instant application.
In response to the Applicant’s 08/11/2026 arguments citing similarity to Example 42, (presumably Claim 1), Examiner respectfully disagrees. Examiner notes that Example 42, Claim 1 was found eligible for patent because {“The claim recites a combination of additional elements including storing information, providing remote access over a network, converting updated information that was input by a user in a non-standardized form to a standardized format, automatically generating a message whenever updated information is stored, and transmitting the message to all of the users. The claim as a whole integrates the method of organizing human activity into a practical application. Specifically, the additional elements recite a specific improvement over prior art systems by allowing remote users to share information in real time in a standardized format regardless of the format in which the information was input by the user.”}; Examiner notes that the instant application instead is similar to Example 42, Claim 2 which was not found eligible because {“The claim as a whole merely describes how to generally “apply” the concept of storing and updating patient information in a computer environment. The claimed computer components are recited at a high level of generality and are merely invoked as tools to perform an existing medical records update process. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea.”} Thus, the instant application’s claims as a whole merely describes how to generally “apply” the concept of updating records in a computer environment. Therefore, the instant application’s claims are still rejected under 35 USC 101.
Applicant’s arguments of 08/11/2026 about similarity to {“Example 45 ("Controller for Injection Mold"), the claim used a comparison/determination step to directly and automatically send a control signal to heat or cool a physical system-rather than merely reporting the result.”}; are moot. Examiner notes that the Applicant has not cited which claim (2, 3 or 4) of Example 45 the instant application is similar to for eligibility; but irrespectively, the instant application does not recite a “controller” nor a “control signal” in its claims listing to be found eligible for similarity to Example 45, claims 2, 3 or 4.
Applicant’s arguments of 08/11/2026 about similarity to {“Example 46 ("Livestock Management"), the claim used an analysis to automatically route an animal through a sorting gate-again, a concrete, automated technical action rather than reporting. Examiner notes that the Applicant has not cited which claim (2 or 3) of Example 46 the instant application is similar to for eligibility; but irrespectively, the instant application does not recite a “control signal” (nor a “controller”) in its claims listing to be found eligible for similarity to Example 46, claims 2 or 3.
In further response to Applicant’s 08/11/2026 arguments --- {“The Examiner's reliance on the three white papers cited at Step 2B to characterize the improvement as unpatentable is misplaced at the Prong Two stage. Whether "automated verification" is generally known in banking is irrelevant to whether these claims integrate any recited exception into a practical application through their specific claim limitations.”} are moot. Examiner notes the body of rejection under 35 USC 101 clearly does not cite three white papers in para (11.) above under Step 2B. Instead the three white papers are cited in response to Applicant’s previous arguments in para (23.) below.
Applicant’s arguments of 08/11/2026 about similarity to Example 47 --- {“With the present amendment, the claims now do provide an analogous technical improvement.”}; and Examiner respectfully disagrees. Given the fact that a new rejection under 35 USC 112 (a) for many amended limitations is still outstanding, Examiner notes that the argued “the claims now do provide an analogous technical improvement” is not supported by the Applicant’s Specification.
In response to the Applicant’s arguments against the rejection under 35 USC 101 about “A. The Claims do not recite an abstract idea under Prong One”. Examiner respectfully disagrees. Upon reviewing the Specification and the claim as whole, independent method Claim 16 (exemplary) is at least directed to one of the ineligible “certain methods of organizing human activity” that include “fundamental economic principles or practices” (based on limitations reciting at least ‘a client of a bank’), and “commercial or legal interactions” (based on limitations of at least ‘training test data’), as well as “managing personal behavior or relationships” (based on limitations of at least ‘comparing the prediction to a target variable’). Method Claim 16 describes a procedure for providing an automated verification of a client of a bank for performing a high risk action during a messaging session (see para [0001] of the Specification, Field). Thus, like the concept of intermediated settlement in Alice, and the concept of hedging in Bilski, the concept of “generating a set of instructions sequences based on certain criteria from a user for image transaction processing” recited in exemplary independent Claim 16 “is a fundamental economic practice long prevalent in our system of commerce.” Thus, it is clear that exemplary independent Claim 16 recites fundamental economic practices and/or commercial transactions that, under the Revised Guidance, fall under the category of abstract ideas related to “certain methods of organizing human activity.” 2019 Revised Guidance, 84 Fed. Reg. at 52. Accordingly, independent Claim 16 recites an abstract idea.
In response to the Applicant’s arguments against the rejection under 35 USC 101 about “amended claims 10 and 16 recite an automated verification process that authenticates a client if the need of the client is determined to be a high risk need using a deployed and trained neural network” (on Page 13). Examiner respectfully disagrees. Examiner notes that three attached white papers in Appendix and titled --- (a) “The Evolution of Customer Verification from KYC to Digital Identity Checks” published by Everyware on 20 DEC 2023 (4 pages); (b) “The Evolution of Banking Technology over 55 Years”, 11 pages; (c) “Everything You Need to Know about User Authentication” published by Fiserv (9 pages); show that “automated verification process” in banking industry is well-understood, routine or conventional process. Additionally, the instant application’s claims do not recite what are the improvements over this well-known process.
Additionally, Applicant’s arguments with respect to Step 2B on Page 14 of Remarks. Examiner notes that if the claims are directed to a patent-ineligible concept, for Step 2B we must “look with more specificity at what the claim elements add, in order to determine ‘whether they identify an “inventive concept” in the application of the ineligible subject matter’ to which the claim is directed.” Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)). We look to see whether there are any “additional features” in the claims that constitute an “inventive concept,” thereby rendering the claims eligible for patenting even if they are directed to an abstract idea. Alice, 573 U.S. at 221. Also, Examiner notes that Applicant’s claims as a whole, including claim amendments of 10/30/2025, do not amount to significantly more than the abstract idea itself. The processor limitations in the instant application do not add significantly more, because they are simply an attempt to limit the abstract idea to a particular technological environment. A generic recitation of a processor performing its generic computer functions does not make the claims less abstract. Also, the use of a particular machine and transformation to a different state or thing are not relevant to the instant application, and don’t overcome the rejection under 35 USC 101.
Applicant further references Example 39 of the October 2019 PTO guidance as further supporting the Applicant’s position with respect to the display feature. And in particular, Applicant asserts that their claim’s neural network is akin to claim in Example 39. Examiner respectfully disagrees. The claim in Example 39 was deemed eligible not by mere use of training a neural network for facial detection; rather, the claim in Example 39 was found eligible, because that claim “does not recite any mathematical relationships, formulas, or calculations”; and “while some of the limitations may be based on mathematical concepts, the mathematical concepts are not recited in the claims”. Further, the claim does not recite a mental process because the steps are not practically performed in the human mind. Finally, the claim does not recite any method of organizing human activity such as a fundamental economic concept or managing interactions between people or managing personal behavior or relationships. Thus, the claim in Example 39 does not apply to instant application’s claim 16. Training neural network using training sets (multiple parameters or attributes) as recited in the Example 39 does not impact eligibility. Applying transformations such as mirroring, rotating, smoothing, or contrast reduction to create a modified set of facial does not fall into any of the aforementioned abstract categories, and the claim is therefore deemed eligible. On the other hand, the instant claimed invention does not recite any elements that individually, or as an ordered combination, transform the abstract idea into a patent-eligible application of that idea. “At best, the claim[] describe[s] the automation of a concept . . . through the use of generic-computer functions.” OIP Techs., 788 F.3d at 1363. It is well settled, though, that automating conventional activities using generic technology does not amount to an inventive concept. See Alice, 134 S. Ct. at 2358 (explaining that “if a patent’s recitation of a computer amounts to a mere instruction to implement an abstract idea on . . . a computer, that addition cannot impart patent eligibility”) (internal alteration, citation, and quotations omitted); Intellectual Ventures, 792 F.3d at 1367 (“claiming the improved speed or efficiency inherent with applying the abstract idea on a computer [does not] provide a sufficient inventive concept”); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012).
In further response to the Applicant’s arguments against the rejection under 35 USC 101 with respect to “The claims integrate the alleged abstract idea into a practical application under Prong Two”. Examiner respectfully disagrees. Also, under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Limitations that are not indicative of integration into a practical application are those that are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea --- see MPEP 2106.05(f).
With respect to Applicant's arguments traversing 35 USC 101 rejection by claiming similarity to Example 47, Claim 3, Examiner respectfully disagrees. Examiner notes that Example 47, Claim 3 was found eligible not just because of reciting “neural network” as has been added by the Applicant in its new Claims 10 and 16, but it was found eligible based on limitations recited in steps (d)/(e)/(f) of Example 47, Claim 3 that recite an improvement in the technical field of network intrusion detection, and the steps recite ---
“(d) detecting a source address associated with one or more malicious network packets in real time;
(e) dropping the one or more malicious packets in real time; and
(f) blocking future traffic from the source address.”
Examiner notes that steps (d)/(e)/(f) provide for improved network security using the information from the detection to enhance security by taking proactive measures to remediate the danger by detecting the source address associated with the potentially malicious packets. Specifically, Claim 3 of Example 47 reflects the improvement in the limitation of these steps; and Examiner notes that the instant application does not provide similar technical improvement.
For these reasons the rejection under 35 USC § 101 directed to non-statutory subject matter set forth in this office action is maintained.
Conclusion
The prior art made of record and not relied upon, listed in Form 892, that is considered pertinent to the Applicant's disclosure and review for not traversing already issued patents and/or claimed inventions by the claims of the current invention of the Applicant. Examiner notes that Form 892 contains more references than those cited in the rejection above under 35 USC 103, and that all the references cited on said Form 892 are relevant to this application and form a part of the body of prior art.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Sanjeev Malhotra whose telephone number is (571) 272-7292. The Examiner can normally be reached during Monday-Friday between 8:30-17:00 hours on a Flexible schedule.
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Electronic Communications
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/S.M./
Examiner, Art Unit 3691
sanjeev.malhotra@uspto.gov
/ABHISHEK VYAS/Supervisory Patent Examiner, Art Unit 3691
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