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 a Request for Continued Examination filed on March 27, 2026. Claims 1-2, 5, 9 and 14 are amended. Claims 1-20 are pending. All pending claims are examined.
Continued Examination Under 37 CFR 1.114
A request for continued examination 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114
Response to Arguments
101 Rejection Analysis
101 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.
claim 1 which is illustrative of independent claims 9 and 14 recites:
“1. A method comprising:
receiving from a financial institution, an autonomous decision bot at a client system in response to a client financial request;
before executing the autonomous decision bot, loading client data into a secure operating environment of the client system and severing a data connection between the client system and the secure operating environment;
executing the autonomous decision bot at the secure operating environment of the client system, the secure operating environment being isolated from other components of the client system to prevent external access to data processed in the secure operating environment
accessing, by the autonomous decision bot, client data relevant to a financing decision on the client financial request from the secure operating environment of the client system;
analyzing, by the autonomous decision bot, the client data based on financing rules established by [[a]] the financial institution associated with the autonomous decision bot the secure operating environment of the client system without transmitting the client data outside the secure operating environment of the client system;
determining, using the autonomous decision bot, the financing decision based on the client data;
sending, from the autonomous decision bot, the financing decision to the financial institution without transmitting the client data to the financial institution;
receiving confirmation of the financing decision from the financial institution at the autonomous decision bot; and
automatically outputting, to a user interface of the client system
from the autonomous decision bot in response to receiving the confirmation, a notification including an indication of the financing decision
2A, Prong One, It is a certain method of organizing human activity that entails financial determination which is a form of commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).
Evaluating data relevant to a financial decision for accuracy and reliability while maintaining the confidentiality of sensitive client data, based on criteria defined by the financial institution is nothing more than gathering data and applying a set of instructions to the data (see App. Spec. paras. 0012-0013). The limitations of the invention as claimed describe steps of a process for making a decision based on received financial data analyzed and ensuring the data privacy is maintained. (See App. Spec. paras. 0002, 0012-0013) The solution involves securely accessing, analyzing and extracting financial data relevant to a financing decision
Beyond the abstract idea, the additional elements recite hardware components such as processor (see App. Spec. para. 0045 – Machine (e.g., computer system) 600 may include a hardware processor 602 (e.g., a central processing unit (CPU), a graphics processing unit (GPU), a hardware processor core, or any combination thereof), a main memory 604 and a static memory 606, some or all of which may communicate with each other via an interlink (e.g., bus) 608. The machine 600 may further include a display unit 610, an alphanumeric input device 612 (e.g., a keyboard), and a user interface (UI) navigation device 614 (e.g., a mouse). In an example, the display unit 610, alphanumeric input device 612 and UI navigation device 614 may be a touch screen display. The machine 600 may additionally include a storage device (e.g., drive unit) 616, a signal generation device 618 (e.g., a speaker), a network interface device 620, and one or more sensors 621, such as a global positioning system (GPS) sensor, compass, accelerometer, or other sensor. The machine 600 may include an output controller 628, such as a serial (e.g., universal serial bus (USB), parallel, or other wired or wireless (e.g., infrared (IR), near field communication (NFC), etc.) connection to communicate or control one or more peripheral devices (e.g., a printer, card reader, etc.); see also Figs. 3-4; paras. 0017-0020),
These are described at a high level of generality where each step does no more than require a generic computer to perform generic computer functions. Absent is any support in the specification that the claims as recited require specialized computer hardware or other inventive computer components. there does not appear to be any technology being improved.
Although the claims recite
before executing the autonomous decision bot, loading client data into a secure operating environment of the client system and severing a data connection between the client system and the secure operating environment;
executing the autonomous decision bot at the secure operating environment of the client system, the secure operating environment being isolated from other components of the client system to prevent external access to data processed in the secure operating environment
this suggests having a go between the source and the recipient of data in which the autonomous bot is the go between in which there is a separating of the source of the data from where the data is processed and making assessments in an independent or isolated environment.
Although the bot may use a feedback loop approach (see App. Spec. paras 0018, 0036; see also paras. 0012-0014), the use of a bot may suggest an improvement in minimizing data breach risks, and ensuring customer information confidentiality, however absent is support (explanation) for how the identified improvement to the technology is executed. As recited it suggests a process in which once the data is received from one environment or source, the decisioning on the data is executed in a different environment.
Unlike, McRO, the present claims contain improvements to the context in which the evaluation is made and not one of a technology or technological field.
In particular, there is a lack of improvement to a computer or technical field of data evaluation and decision making utilizing bots that extract and analyze historical data of a client’s activity because the data processing performed merely uses a system as a tool to perform an abstract idea- see MPEP 2106.05(f). Therefore, the claims are directed to an abstract idea. The invention as claimed recites a generic computer component and the claim does not pass step 2A, Prong Two.
The innovation as claimed appears to be directed to the user’s objective of data processing in response to the inputs received, rather than the integration of a practical application.
Step 2B; The next step is to identify any additional limitations beyond the judicial exception. The additional elements which include processors, computing system (see App. Spec. para. 0045) which is disclosed in the specification at a high degree of generality. Absent is any genuine issue of material fact that this component requires any specialized hardware or inventive computer component.
Likewise, the dependent claims 2-8, 10-13 and 15-20 are rejected under 35 U.S.C. § 101. For example, claims 2-5 provide descriptive material of the rules, conditions, components, parameters or and format for outputs that are used as part of the determination of the financing decision. These claim limitations recite steps at a high level of generality and performed in a traditional manner and therefore do not integrate the abstract idea into a practical application or provide an inventive concept.
Independent claims 1, 9 and 14 are rejected under 35 U.S.C. § 101 including dependent claims 2-8, 10-13 and 15-20 which fall with claims 1, 9 and 14. Therefore, claims 1-20 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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Claim 1: Ineligible
Claim 1 which is illustrative of the invention is rejected under 35 U.S.C. 101 because the claimed invention is directed to 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. For claim 1, which is illustrative of claims 9 and 14 and recites an abstract idea of data processing in a secure environment.
1. A method comprising:
receiving from a financial institution, an autonomous decision bot at a client system in response to a client financial request;
before executing the autonomous decision bot, loading client data into a secure operating environment of the client system and severing a data connection between the client system and the secure operating environment;
executing the autonomous decision bot at the secure operating environment of the client system, the secure operating environment being isolated from other components of the client system to prevent external access to data processed in the secure operating environment
accessing, by the autonomous decision bot, client data relevant to a financing decision on the client financial request from the secure operating environment of the client system;
analyzing, by the autonomous decision bot, the client data based on financing rules established by [[a]] the financial institution associated with the autonomous decision bot the secure operating environment of the client system without transmitting the client data outside the secure operating environment of the client system;
determining, using the autonomous decision bot, the financing decision based on the client data;
sending, from the autonomous decision bot, the financing decision to the financial institution without transmitting the client data to the financial institution;
receiving confirmation of the financing decision from the financial institution at the autonomous decision bot; and
automatically outputting, to a user interface of the client system
from the autonomous decision bot in response to receiving the confirmation, a notification including an indication of the financing decision
This is an abstract idea of financial decision making, a certain method of organizing human activity that is a form of commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations) in which there is data analysis used in financial decision making for accuracy and reliability while maintaining the confidentiality of sensitive client data.
This involves gathering data for analysis. Besides reciting the abstract idea, the remaining claim limitations recite generic computer components. This recited abstract idea is not integrated into a practical application. In particular, the claim only recites generic computer components ( - processor, computing device - see App, Spec. para. 0045) initiating, accessing, analyzing, sending receiving and outputting the decision. 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 computer 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.
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., client system) amount to no more than mere instructions to apply the abstract idea using generic computer components.
Further, the dependent claims 2-8, 10-13 and 15-20, for example, recite additional descriptive details about the criteria or rules applied to the evaluation of request to release funds. For example, claims 2-3 describe with additional specificity details about the the additional inputs used factored into the evaluating the request, however the recited abstract idea is not integrated into a practical application. In particular, the claims only recite generic computer components (e.g., general-purpose 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, 9 and 14 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 1-20 are not patent eligible under 35 USC 101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Garg, USP. Pub. No. 20080195514, Automated Review And Hold Placement
Hurry et. al , USP Pub. No. 20170286663, System and Method Employing Reduced Time Device Processing.
Reed, USP. Pub. No. US 20210081244, System For Intelligent Routing Of Resources Associated With Resource Entities.
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/CHIKAODINAKA OJIAKU/Primary Examiner, Art Unit 3696
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
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