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 .
DETAILED ACTION
This Final rejection is in response to the application filed on March 22, 2024 and the amendments to the claims filed on February 9, 2026.
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.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The recitation, “displaying, via the mobile device, a warning comprising one or more display elements having one or more physical attributes that are dynamically set in accordance with the risk level” in lines 26-28 of claim 1 does not have support within the instant specification. The term “physical” is only used in paragraphs [0018 & 0019] to distinguish from elements of the invention that are, “a physical server or virtual server that is running on a physical computer system”. Appropriate correction is required.
Claims 1-18, 21, and 22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The recitation, “based on an invocation of a display element of the one or more display elements, executing the operation or preventing the operation from being executed” in lines 20-21 of claim 2, similarly recited in claims 1 and 13 is not supported by the instant specification. While there is support for, “In some embodiments, when the risk level is higher than another threshold, warning generation subsystem 114 may prevent the user from continuing with the operation (e.g., payment) by, for example, taking away the proceed option and only leaving a cancel option on the warning display” (paragraph [0036]) this is not commensurate with the claimed recitation of the preventing the operation from being executed because of an invocation of a display element. Rather the specification is supportive of preventing a user from continuing an operation if a risk level is higher than a threshold. Claims 3-12, 14-18, 21, and 22 are considered to be rejected by virtue of their dependencies. 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.
Claims 1-18, 21, and 22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-18, 21, and 22 are directed to a system, method, or product which are/is one of the statutory categories of invention. (Step 1: YES).
The Examiner has identified independent method Claim 2 as the claim that represents the claimed invention for analysis and is similar to independent system Claim 1 and product Claim 13. Claim 2 recites the limitations of storing, from a user device of a first user, to execute an operation in relation to a second user; displaying, using the user device, a set of selectable indicators respectively corresponding to a set of potential reasons for the operation selected based on the request and how frequently each reason was selected; based on a user selection, detected by the user device, of an indicator of the set of selectable indicators, displaying, on the user device, a warning comprising one or more display elements to want the first user of a reason, linked to the indicator, of the set of potential reasons for the operation and a risk level associated with the operation; and based on an invocation of a display element of the one or more display elements, executing the operation or preventing the operation from being executed.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as certain methods of organizing human activity. Preventing an operation from being executed recites a fundamental economic practice (mitigating risk). If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice (mitigating risk), then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. The one or more processors and mobile device in Claim 1 and user device in Claims 2 and 13 is just applying generic computer components to the recited abstract limitations. Claims 1 and 13 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims are abstract)
This judicial exception is not integrated into a practical application. In particular, the claims only recite one or more processors and mobile device in Claim 1 and user device in Claims 2 and 13. The computer hardware is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore claims 1, 2, and 13 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. See Applicant’s specification para. [0030, 0049, 0052, 0056] about implementation using general purpose or special purpose computing devices and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Thus claims 1, 2, and 13 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims 3-12, 14-18, 21, and 22 further define the abstract idea that is present in their respective independent claims 1, 2, and 13 and thus correspond to Certain Methods of Organizing Human Activity and hence are abstract for the reasons presented above. Claims 3, 4, 6-8, 11, 12, 14, 15, 17, 18, and 21 further define the warnings and reasons; Claims 5 and 16 further define potential causes for the operation; Claims 9, 10, and 22 further define the identifiers and how they are displayed. The dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the claims 3-12, 14-18, 21, and 22 are directed to an abstract idea. Thus, the claims 1-18, 21, and 22 are not patent-eligible.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-18, 21, and 22 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s arguments regarding the 35 USC 101 rejection of record (Remarks, pages 11-13) are acknowledged, however they are not persuasive. Specifically, applicant’s arguments regarding Step 2A, Prong One are primarily based on an amended recitation that does not have support within the instant specification. See the 35 USC 112(a) rejection as advanced above. Further, ff a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice (mitigating risk), then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas.
Applicant’s arguments citing recent PTAB decisions (Remarks, pages 12-13) are acknowledged, however they are not persuasive. Specifically, applicant’s arguments are not commensurate with the scope of the decision that applicant is referencing. Ex Parte Desjardins is directly related to the evaluation of claim eligibility when, “evaluating claims related to machine learning or artificial intelligence”, which are not elements of the recited claims.
Conclusion
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 LINDSAY M MAGUIRE whose telephone number is (571)272-6039. The examiner can normally be reached Monday to Friday 8:30 to 5:00.
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Lindsay Maguire
3/6/26
/LINDSAY M MAGUIRE/Primary Examiner, Art Unit 3619