DETAILED ACTION
Status of the Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This action is in response to an amendment dated August 29, 2025. Claims 1, 16 and 20 are amended. Claim 18 is cancelled. Claims 1-17 and 19-20 are pending. All pending claims are examined.
Response to Arguments
101 Rejection Analysis
In line with the "2019 Revised Patent Subject Matter Eligibility Guidance," which explains how we must analyze patent-eligibility questions under the judicial exception to 35 U.S.C. § 101. 84 Fed. Reg. 50-57 ("Revised Guidance"), the first step of Alice (i.e., Office Step 2A) consists of two prongs. In Prong One, we must determine whether the claim recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural phenomenon. 84 Fed. Reg. at 54 (Section III.A. I.). If it does not, the claim is patent eligible. Id.
An abstract idea must fall within one of the enumerated groupings of abstract ideas in the Revised Guidance or be a "tentative abstract idea, "with the latter situation predicted to be rare. Id. at 51-52 (Section I, enumerating three groupings of abstract ideas), 54 (Section III.A. I., describing Step 2A Prong One), 56-57 (Section III.D., explaining the identification of claims directed to a tentative abstract idea).
If a claim does recite a judicial exception, the next is Step 2A Prong Two, in which we must determine if the "claim as a whole integrates the recited judicial exception into a practical application of the exception." Id. at 54 (Section II.A.2.) If it does, the claim is patent eligible. Id.
If a claim recites a judicial exception but fails to integrate it into a practical application, we move to the second step of Alice (i.e., Office Step 2B). to evaluate the additional limitations of the claim, both individually and as an ordered combination, to determine whether they provide an inventive concept. Id. at 56 (Section III.B.). In particular, we look to whether the claim:
• Adds a specific limitation or combination of limitations that are not well-understood, routine, conventional in the field, which is indicative that an inventive concept may be present; or
• simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
The analysis in line with current 101 guidelines. Even if the abstract idea is deemed to be novel, the abstract idea is no less abstract (see Flook- new mathematical formula was an abstract idea).
In accordance with judicial precedent and in an effort to improve consistency and predictability, the 2019 Revised Patent Subject Matter Eligibility Guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes the following groupings of subject matter, when recited as such in a claim limitation(s) (that is, when recited on their own or per se):
(b) Certain methods of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)1 – See Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019 / p.52.
Step 1: The claims are directed to one or more of the following statutory categories: a process, a machine, a manufacture, and a composition of matter.
Independent Claim 1, which is illustrative of the independent claim 16 and 20 recite:
1. A computer-implemented method for a remote deposit environment, comprising:
determining an amount from an image of a financial instrument submitted by a user for remote deposit, the determining the amount comprising performing real time optical character recognition (OCR) on the image;
determining whether the amount exceeds a remaining remote deposit limit;
in response to the amount exceeding the remaining remote deposit limit, providing to the user in real time, within a current customer transaction period before the user submits a deposit based on the financial instrument or immediately after in response to the user submitting the request,
via a user interface (UD) of a mobile device, a request for instructions regarding at least one of a first portion of the amount, a second portion of the amount, one or more deposit dates, or one or more deposit retention vehicles;
receiving the instructions via the UI:
releasing the first portion of the amount into a user account, the first portion being less than or equal to the remaining deposit limit;
retaining the second portion of the amount in the one or more deposit retention vehicles for deposit into the user account on the one or more deposit dates, the one or more deposit dates being different from a date deposit request is submitted by the user;
releasing the second portion of the amount into the user account on the one or more deposit dates.
2A - Prong One
Taking the broadest reasonable interpretation, the invention is directed to a method of organizing human activity since it recites the abstract idea which includes fundamental economic practice of mobile check deposit, steps are undertaken to deposit checks into an account. It can also be considered a mental process practically with the human mind, since it entails making evaluations of data albeit with the help of a computer.
If a claim does recite a judicial exception, the next is Step 2A Prong Two, in which we must determine if the "claim as a whole integrates the recited judicial exception into a practical application of the exception." Id. at 54 (Section II.A.2.) If it does, the claim is patent eligible. Id.
Beyond identification of the abstract idea of evaluating data to assess if the limits for a mobile check deposit have been met, there is the analysis of the claims as whole to determine whether any element or combination of elements integrates the judicial exception into a practical application.
2A – Prong Two
Courts have found that claims directed to improving a technological field or computer itself and where the abstract concept is tied to performing a specific function might survive the Alice two-step analysis thereby preventing such claims from preempting other applications of the underlying idea (DDR Holdings, LLC v. Hotels.com, L.P, 773 F.3d at 1257, 1259 – claims recited “a specific way to automate the creation of a composite web page by an outsource provider that incorporates elements from multiple sources in order to solve a problem faced by websites on the Internet”).
Besides reciting the abstract idea, the additional limitations recite generic computer components such as the user interface (UD) of a mobile device (App. Spec. Figs. 3, 5-7; paras. 0083-0087).
The next step is to determine if the claims recite additional, limitations integrate the judicial exception into a practical application. Although the amended claims provide additional details of the process of mobile check deposit as recited in
determining whether the amount exceeds a remaining remote deposit limit;
in response to the amount exceeding the remaining remote deposit limit, providing to the user in real time, within a current customer transaction period before the user submits a deposit based on the financial instrument or immediately after in response to the user submitting the request,
via a user interface (UD) of a mobile device, a request for instructions regarding at least one of a first portion of the amount, a second portion of the amount, one or more deposit dates, or one or more deposit retention vehicles;
receiving the instructions via the UI:
releasing the first portion of the amount into a user account, the first portion being less than or equal to the remaining deposit limit;”
The claims suggest a quantitative way to exchange and process data, but absent is any clear support for how that is a technical improvement. The process as recited is understood to be mere instructions to apply it with a computer (see App. Spec. paras. 0025-0029; Figs. 6-7). Even if performing these steps may be cumbersome, comparing received data with preexisting data can practically be performed mentally and in this instance, this simply represents using a computer as a tool, but does not change or improve the functioning of the computer and generally links to a particular technological environment or field of use (see MPEP 2106.05(h)).
The additional elements of processors and user interface(s)…” provide nothing more than mere instructions to implement the abstract idea on a generic computer (see MPEP 2106.05(f)).
The processors are used to generally apply the abstract idea without placing any limits of how the deposit of checks is executed. The processors merely confine the use of the abstract idea to a particular technological environment (check deposit transaction processing) and thus fails to integrate the abstract idea into a practical application (see MPEP 2106.05(h)).
The additional elements beyond the abstract idea is the implementation of the steps through a computer system (see App. Spec. Figs. 1-5; paras. 0024-0030) which are described at a high level of generality where each step does no more than require a generic computer to perform generic computer functions (see App. specification, paras. 0024-0028). Absent is any support in the specification that the claims as recited require specialized computer hardware or other inventive computer components.
Unlike DDR where the improvement was to a computer centric problem, a specific improvement to the way computers operate as a result of their interactions with the internet, in processing the data, absent is any support for a similar improvement. The claims as recited seem to suggest no more than automating the processing of the data. using a general-purpose computer or evidence of an improved interface (cf. with Trading Technology where the display was found to be a graphical user interface that required a specific, structured GUI paired with a prescribed functionality directly related to the GUI’s structure that is addressed to and resolves a specific identified problem).
Usage of processors is understood to be mere instructions to apply it with a computer. The invention as claimed may be a business solution rather than a technological solution to a technological problem because it is merely using a computer as a tool to implement the abstract idea. Claims 1, 16 and 20 and the dependent claims, as a whole do not integrate the exception into a practical application.
Step 2B
If a claim recites a judicial exception but fails to integrate it into a practical application, we move to the second step of Alice (i.e., Step 2B). to evaluate the additional limitations of the claim, both individually and as an ordered combination, to determine whether they provide an inventive concept. Id. at 56 (Section III.B.). In particular, we look to whether the claim:
• Adds a specific limitation or combination of limitations that are not well-understood, routine, conventional in the field, which is indicative that an inventive concept may be present; or
• simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
The additional limitations beyond the judicial exception are the user interface and processor which is disclosed in the specification at a high degree of generality (as generic computer components) and absent is any genuine issue of material fact that this component requires any specialized hardware or inventive computer component.
The recited steps, understood in light of the specification do not appear to require anything other than off-the-shelf, conventional computers and a network. The evaluation of received data does not represent significantly more because it is only additional information used to make a determination. The recited steps, understood in light of the specification do not appear to require anything other than off-the-shelf, conventional computers and a network.
For at least the same reasons presented above with respect to the independent claims, dependent claims 2-15 and 17 and 19 do not recite patent eligible subject matter under 35 U.S.C. § 101. For example dependent claims 2-5 recite additional details about the parameters and instructions under which the sets of data are compared, matched and or analyzed, however the recited abstract idea is not integrated into a practical application. These additional elements are recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception using generic computer components (e.g. general purpose computer systems) to evaluate the submitted data based on predefined conditions.
The dependent claims provide additional descriptions of the components of the claimed invention in a manner that merely refines and further limits the abstract idea of independent claims 1, 16 and 20 and do not add any feature that is an “inventive concept” which cures the deficiencies of the independent claims.
None of the additional elements taken individually or when taken as an ordered combination amount to significantly more than the abstract idea. Accordingly, the dependent claims are patent-ineligible.
In conclusion, merely “applying” the exception using generic computer components cannot provide an inventive concept. Therefore, the claims 1-17 and 19-20 are not patent eligible under 35 USC 101.
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 1-17 and 19-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
The claim recites abstract idea of organizing human activities. This judicial exception is not integrated into a practical application and the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Analysis
The claims are directed to one or more of the following statutory categories: a process, a machine, a manufacture, and a composition of matter.
Independent Claim 1, which is illustrative of the independent claim 16 and 20 recite:
1. A computer-implemented method for a remote deposit environment, comprising:
determining an amount from an image of a financial instrument submitted by a user for remote deposit, the determining the amount comprising performing real time optical character recognition (OCR) on the image;
determining whether the amount exceeds a remaining remote deposit limit;
in response to the amount exceeding the remaining remote deposit limit, providing to the user in real time, within a current customer transaction period before the user submits a deposit based on the financial instrument or immediately after in response to the user submitting the request,
via a user interface (UD) of a mobile device, a request for instructions regarding at least one of a first portion of the amount, a second portion of the amount, one or more deposit dates, or one or more deposit retention vehicles;
receiving the instructions via the UI:
releasing the first portion of the amount into a user account, the first portion being less than or equal to the remaining deposit limit;
retaining the second portion of the amount in the one or more deposit retention vehicles for deposit into the user account on the one or more deposit dates, the one or more deposit dates being different from a date deposit request is submitted by the user;
releasing the second portion of the amount into the user account on the one or more deposit dates.
.The invention as claimed recites an abstract idea of funds availability based on predefined criteria, a method of organizing human activity, whereby there is a determination is made in response to the payment received. It can also be considered a mental process practically with the human mind since it entails making evaluations of data albeit with the help of a computer.
Besides reciting the abstract idea, the remaining claim limitations recite generic computer components (e.g., computer - see App. specification, paras. 0045-0050; see also paras. 0024, 0029-0032). This recited abstract idea is not integrated into a practical application. In particular, the claim only recites generic computer components for tracking and receiving data.
The additional elements are recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception using generic components. 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. Therefore, the claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements - (e.g., computer) amount to no more than mere instructions to apply the abstract idea using generic computer components.
Further, the dependent claims 2-15 and 17 and 19, for example, recite additional descriptive details about the criteria or rules applied to the making the determination of funds available on a deposit. For example, claims 2-5 describe the attributes and additional steps and data factored into processing the request, however the recited abstract idea is not integrated into a practical application. In particular, the claims only recite generic computer components to evaluate the submitted data based on predefined conditions.
The dependent claims provide additional descriptions of the components of the claimed invention in a manner that merely refines and further limits the abstract idea of independent claims 1, 16 and 20 do not add any feature that is an “inventive concept” which cures the deficiencies of the independent claims.
None of the additional elements taken individually or when taken as an ordered combination amount to significantly more than the abstract idea. Accordingly, the dependent claims are patent-ineligible.
In conclusion, merely “applying” the exception using generic computer components cannot provide an inventive concept. Therefore, the claims 1-17 and 19-20 are not patent eligible under 35 USC 101.
Conclusion
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Listed on form PTO-892.
Franklin et. al USP Pub. No. 20240221406, Signature Merger During Upload Process.
Clower et. al. , USP No. US 12118524, Instant Funds Availability Risk Assessment And Real-time Loss Alert System And Method
Mullen et al. U.S. 20030009402, Financial Management System, And Methods And Apparatus For Use Therein.
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1 Interval Licensing, 896 F.3d at 1344–45 (concluding that ‘‘[s]tanding alone, the act of providing someone an additional set of information without disrupting the ongoing provision of an initial set of information is an abstract idea,’’ observing that the district court ‘‘pointed to the nontechnical human activity of passing a note to a person who is in the middle of a meeting or conversation as further illustrating the basic, longstanding practice that is the focus of the [patent ineligible] claimed invention.’’); Voter Verified, Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 1385 (Fed. Cir. 2018) (finding the concept of ‘‘voting, verifying the vote, and submitting the vote for tabulation,’’ a ‘‘fundamental activity’’ that humans have performed for hundreds of years, to be an abstract idea);
In re Smith, 815F.3d 816, 818 (Fed. Cir. 2016) (concluding that ‘‘[a]pplicants’ claims, directed to rules for conducting a wagering game’’ are abstract).
14 If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir . 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016)(holding that computer-implemented method for ‘‘anonymous loan shopping’’ was an abstract idea because it could be ‘‘performed by humans without a computer’’); Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (‘‘Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.’’); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding that the incidental use of ‘‘computer’’ or ‘‘computer readable medium’’ does not make a claim otherwise directed to process that ‘‘can be performed in the human mind, or by a human using a pen and paper’’ patent eligible); id. at 1376 (distinguishing Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010), as directed to inventions that ‘‘could not, as a practical matter, be performed entirely in a human’s mind’’). Likewise, performance of a claim limitation using generic computer components does not necessarily preclude the claim limitation from being in the mathematical concepts grouping, Benson, 409 U.S.at 67, or the certain methods of organizing human activity grouping, Alice, 573 U.S. at 219–20 - – See Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019