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 .
Related Application(s) – Prior Art of Record
The instant application is a continuation application (CON) of parent application 18/058,793 (now USPN 11,983,770). In accordance with MPEP §609.02 A.2 and §2001.06(b) (last paragraph), the prior art cited in the above parent application has been considered, and all documents cited or considered ‘of record’ in that application are now considered cited or ‘of record’ in this application. The prosecution history of the above parent application is relevant in the examination of the instant application.
Claim Rejections – Double Patenting – (Anticipatory-type, Issued Patent)
Claims 1, 4-11 and 14-20 of the instant application are rejected on the ground of anticipatory non-statutory double patenting, as being unpatentable over claims 1-18 of U.S. Patent No. 11,983,770 (the ‘770 patent) issuing from the parent ‘793 application of the instant application noted above.
The instant claims are not identical to the issued claims, but they are not patentably distinct from the issued claims. Independent claims 1 and 11 of the instant application are anticipated by independent claims 1 and 10 of the ‘770 patent. The claims of the ‘770 patent include subject matter that is in essence a narrower “species” of the generic invention which is the subject matter of the instant claims 1 and 11 since the instant claims include less than all of the limitations and/or subject matter of the issued independent claims 1 and 10 of the ‘770 patent.
It has been held that a generic invention (i.e., an invention having broader claims that essentially include common recited features, but not all, of the narrower issued claims) is “anticipated” by a narrower issued “species” of the generic invention that is within the scope of the generic invention. (See, In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993) Here, the subject matter of the independent claims of the instant application is broader than that of the independent claims of the issued patent since the independent claims of the instant application simply include less than all the claimed features of the issued independent claims. For example, the subject matter of there being an existing loan for the customer as a financial product in the independent claims of the ‘770 patent is not required by the instant independent claims. Therefore, independent claims 1 and 11 of the instant application are anticipated by independent claims 1 and 10 of the ‘770 patent.
Dependent claims 4-10 and 14-20 of the instant application include the substantially same subject matter found in claims 2-9 and 12-18 of the ‘770 patent.
A timely filed terminal disclaimer in compliance with 37 CFR §1.321(c) or §1.321(d) may be used here to overcome a rejection based on a non-statutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. (See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159; See also, MPEP §§706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA )
A terminal disclaimer must be signed in compliance with 37 CFR §1.321(b). The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The filing date of the application determines which form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/ guidance/eTD-info-I.jsp.
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 1-20 are rejected under 35 U.S.C. §101 because the claimed invention is directed to non-statutory patent ineligible subject matter. (See, Alice and MPEP §2106)
In sum, claims 1-20 are rejected under 35 U.S.C. §101 because the claimed invention recites and is directed to a judicial exception to patentability (i.e., an abstract idea) and does not provide an integration of the recited abstract idea into a practical application nor include an inventive concept that is “significantly more” than the recited abstract idea to which the claim is directed. (MPEP §2106)
In determining subject matter eligibility in an Alice rejection under 35 U.S.C. §101, it is first determined as Step 1 whether the claims are directed to one of the four statutory categories of an invention (i.e., a process, a machine, a manufacture, or a composition of matter) (MPEP §2106.03). Here, the claims are directed to the statutory category of a process (claims 11-20) and a machine (claims 1-10). Therefore, we proceed to Step 2A, Prong 1. (MPEP §2106)
Under a Step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more enumerated categories of patent ineligible subject matter that amounts to a judicial exception to patentability. (MPEP §2106.04) Here, the independent claims, at their core, recite the abstract idea of:
responsive to authentication of a customer, providing an existing loan interface with an existing financial product;
responsive to selection … , automatically populating information about the existing financial product;
providing a financial products interface for display … , with the financial products interface including financial products available to the customer, wherein the financial products reflect current pricing information for the financial products based upon the information about the existing financial product;
receiving, … , a comparison request from the customer including at least two selected products of the financial products on the financial products interface; and
responsive to receipt of the comparison request, providing a comparison interface for display … .
Here, the recited abstract idea falls within one or more of the three enumerated categories of patent ineligible subject matter (MPEP §2106.04), to wit: certain methods of organizing human activity, which includes sub-categories of commercial interactions involving sales activities or behaviors (e.g., in the claims: analyzing customer identification and existing customer financial information, including financial account and financial product information, for providing to the customer a comparison of financial product information available for the customer and displayed to the customer for selection and purchase by the customer).
Under Step 2A, Prong 2 the recited additional elements are evaluated to determine whether they provide an integration of the recited abstract idea into a practical application. (i.e., whether they provide a technological solution). (MPEP §2106.04) Here, the recited additional elements, such as:
a “computing device,” a “processing unit,” a “pre-fill control” for populating information in various fields on an interface; and a “system memory” storing executable instructions to accomplish various functions, do not amount to an inventive concept since the claims are simply using each of these additional elements, which are recited in the claims at a high degree of generality, as a tool to carry out the recited abstract idea (i.e., “apply it”) on a computer, using a memory device and/or a database, on a data or communication network, on a display device or user interface, or on another computing device listed above, and/or via software programming, where the additional elements simply perform generic computer data receipt and processing/analysis steps, data storage and communication steps, and/or outputting/displaying steps such as those typically used in a general purpose computer, a computing system, a display or user interface, and/or a computer or communication network. Thus, the claims do not provide an integration into a practical application.
Under the Step 2B analysis, it is determined whether the recited additional elements amount to something “significantly more” than the recited abstract idea to which the claims are directed. (i.e., provide an inventive concept). (MPEP §2106.05) Here, the recited additional elements, identified above in the Step 2A, Prong 2 analysis, do not amount to an inventive concept since, as stated above in the Step 2A, Prong 2 analysis, the claims are simply using the additional elements as a tool to carry out the abstract idea (i.e., “apply it”) on a computer, using a memory device and/or a database, on a data or communication network, or on another computing device listed above, and/or via software programming, where the additional elements are specified at a high level of generality as simply facilitating and/or performing generic computer data receipt and processing/analysis steps, data inputting steps, data storage and communication steps, and/or data outputting/displaying steps such as those typically used in a general purpose computer, a computing system, a display or user interface, and/or a computer or communication network, where the additional elements are being used in the claims to simply implement the abstract idea and are not themselves being technologically improved, and therefore do not provide something “significantly more.” (See e.g., MPEP §2106.05 I.A.)
The dependent claims simply further refine and limit the abstract idea recited by the independent claims, from which these claims respectively directly or indirectly depend, where the abstract idea is described above.
Claims 2-4, 6, 12-14 and 16 simply further refine the abstract idea by requiring that the existing financial product of the customer is or includes a certain type of financial product or is a fee. These claims do not add any element or feature that provides an integration into a practical application by providing a technological solution to a technological problem or by technologically improving any recited additional element (which is simply being used to carry out the abstract idea as a “tool” under Step 2A, Prong 2), or include any element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B). (See MPEP §§2106.04, 2106.05)
Claims 8 and 18 simply further refine the abstract idea by requiring an additional interface for displaying a list of financial product types available for the customer, which is simply requiring a display of certain types of data. These claims do not add any element or feature that provides an integration into a practical application by providing a technological solution to a technological problem or by technologically improving any recited additional element (which is simply being used to carry out the abstract idea as a “tool” under Step 2A, Prong 2), or include any element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B). (See MPEP §§2106.04, 2106.05)
Claims 5, 7, 9, 15, 17 and 19 simply further refine the abstract idea by requiring that an interface display certain types of financial data, such as customer financial accounts or a payment amount, where the other data such as property value data, property location data, or a loan amount for the property may also be displayed, which is simply displaying financial data. These claims do not add any element or feature that provides an integration into a practical application by providing a technological solution to a technological problem or by technologically improving any recited additional element (which is simply being used to carry out the abstract idea as a “tool” under Step 2A, Prong 2), or include any element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B). (See MPEP §§2106.04, 2106.05)
Claims 10 and 20 simply further refine the abstract idea by requiring that customer credit information is obtained. These claims do not add any element or feature that provides an integration into a practical application by providing a technological solution to a technological problem or by technologically improving any recited additional element (which is simply being used to carry out the abstract idea as a “tool” under Step 2A, Prong 2), or include any element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B). (See MPEP §§2106.04, 2106.05)
Thus, neither the independent claims nor the dependent claims, viewed individually and as a whole, including consideration of all the limitations of each claim viewed both individually and in combination, add any additional element or provide any subject matter that provides a technological improvement (i.e., an integration into a practical application) that results in the claims being directed to patent eligible subject matter, nor do the claims provide something significantly more than the recited abstract idea to which the claims are directed.
Response to Arguments
Claim Rejections Under 35 U.S.C. § 101
Applicant’s arguments filed on February 18, 2026 have been fully considered but they are not persuasive.
First, Applicant argues that the claims do not recite a mental process, as asserted by the rejection under 35 U.S.C. 101. Applicant explains that the rejection oversimplifies the claims, and they are instead directed to computer functionalities that cannot be performed in the human mind. The 101 rejection, however, states that the claims recite an abstract idea because they are directed to a commercial interaction, which is a certain method of organizing human activity. The rejection further explains that the claims recite analyzing customer financial information to provide comparison of financial products that is displayed for selection and purchase. The claims therefore do recite a commercial interaction, even if they further recite some additional elements. The use of various computing technology in the claimed invention is an implementation of this abstract idea through the use of technology, and thus is addressed under the next steps of the analysis. Thus, claims 1–20 do recite an abstract idea.
Next, Applicant argues that the claims are integrated into a practical application because the claims improve computer functionality for financial product systems. Applicant explains that financial information is not easily obtained in a single place for customers to determine how transaction structures will impact costs, which the claimed invention solves by providing an integrated interface with automatic population and real-time pricing information, improving the efficiency and functionality of financial technology interfaces. This improvement cited by Applicant, however, is an improvement to the abstract idea of financial product analysis, comparison, and purchasing. The claimed invention is only making the commercial interaction more efficient by merely applying it to the technologies recited—prepopulating and updating of financial information on an interface for display. The claims are therefore merely using the technologies as generic tools to implement the abstract idea, rather than reciting any improvement to the technologies themselves. Applicant further cites Example 37 of the Subject Matter Eligibility Examples, and argues that the claims here similarly provide an improvement by consolidating information. As Applicant explains, however, the claims in Example 37 recited determining the amount of icon usage, and automatically updating the GUI to make these icons more accessible. The claims in Example 37 therefore improved the GUI itself by optimizing the icons and their relation to the interface. The claims here, on the other hand, merely apply interface functionalities, such as prepopulating and updating information, to make financial information more accessible. Thus, claims 1–20 do not include additional elements sufficient to integrate the claims into a practical application.
Finally, Applicant argues that the claims recite significantly more than the judicial exception because they provide an inventive concept. Applicant cites the technical features discussed above and explains that the specific ordered combination of these features provide a technical implementation that addresses the technical problem of difficulty obtaining financial information. As discussed above, however, this is an improvement to the abstract idea by merely applying it to the technologies recited. And, merely applying an abstract idea to a computer, as established in Step 2A Prong Two, cannot provide an inventive concept, as required under Step 2B. See MPEP 2106.05(f). Thus, claims 1–20 do not include additional elements sufficient to recite significantly more than the judicial exception.
Prior Art Not Relied Upon
The following relevant prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. (See, MPEP §707.05) The examiner considers the following reference(s) pertinent for disclosing various features relevant to the invention, but not all the features or combination of features of the invention:
Benefield et al. (US Patent Publication 2011/0178908 A1) discloses a system and various methods for analyzing customer financial account data, including loan data, to recommend various financial products for the customer, where the recommended financial products are displayed and the various features of each compared in the display. However, the reference fails to disclose, at a minimum, the combination of claimed features of, “responsive to authentication of a customer, providing a financial product interface associated with an existing financial product; and responsive to selection of a pre-fill control, automatically populating information about the existing financial product.”
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/DIVESH PATEL/Examiner, Art Unit 3696
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