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 .
Status of Claims
The following is Office Action on the merits in response to the communication received on 5/8/26.
Claim status:
Amended claims: 1, 11, 13 and 20
Canceled claims: 9-10
Added New claims: 21-22
Pending claims: 1-8 and 11-22
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 1-8 and 11-22 are rejected under 35 U.S.C. § 101 because the claimed invention is not directed to statutory subject matter. Specifically, the invention of claims 1-8 and 11-22 is directed to an abstract idea without significantly more.
Independent claims 1, 13 and 20 are directed to a method (claims 1 and 13), and a system, (claim 20). Therefore on its face, each of claims 1, 13 and 20 is directed to a statutory category of invention under Step 1 of the 2019 PEG. However each of claims 1, 13 and 20 is also directed to an abstract idea without significantly more, under Step 2A (Prong One and Prong Two) and Step 2B of the 2019 PEG, which is a judicial exception to 35 U.S.C. 101, as detailed below. Using the language of independent claim 1 to illustrate the claim recites the limitations of, (i) identifying, via a browser extension associated with a first entity and based on content scraped from a portal associated with a second entity different from the first entity, a data requirement associated with an individual for an interaction, the portal being output on a third entity different than the first and second entities; (ii) verifying in near real time, via the browser extension and by accessing a first entity, whether a data element associated with the individual satisfies the data requirement by determining whether (i) a formatting of data in the data element matches a corresponding formatting and (ii) the data element matches corresponding data stored; (iii) determining, via the browser extension and by accessing the first entity, first information associated with the interaction based on verifying that the data element associated with the individual satisfies the data requirement and based on the second entity; and (iv) causing, via the browser extension, to output a first visual indication of a result of the verifying proximate to the content presented on the display, the first visual indication including a selectable element configured to upload a file and subsequently (ii) a second visual indication of the first information associated with the interaction in place of the first visual indication, wherein the first visual indication and the second visual indication are injected into or overlaid on the portal by the browser extension under the broadest reasonable interpretation (BRI) covers methods of organizing human activity – fundamental economic principles or practices - mitigating risk but for the recitation of generic computers and generic computer components. (Independent claims 13 and 20 recite similar limitations and the analysis is the same).
That is, other than reciting a display of a user device, a computing system and a database nothing in the claim precludes the steps from being directed to organizing human activity – fundamental economic principles or practices - mitigating risk. If a claim limitation under its BRI, covers methods of organizing human activity but for the recitation of generic computers, then the limitations fall within the “methods of organizing human activity” grouping of abstract ideas. Therefore, claim 1 recites an abstract idea under Step 2A Prong One of the Revised Patent Subject Matter Eligibility Guidance 84 Fed.Reg 50 (“2019 PEG”).
This “methods of organizing human activity” is not integrated into a practical application under Step 2A prong Two of the 2019 PEG. In particular claim 1 recites the following additional elements of, a display of a user device, a computing system and a database. This judicial exception is not integrated into a practical application. In particular, the claim only recites the additional elements – a display of a user device, a computing system and a database.
The display of a user device, computing system and database are recited at a high-level or generality (i.e. as a generic computer performing generic computer functions) such that, they amount to no more than instructions to apply the abstract idea with a computer (see MPEP 2106.05(h). 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. The claims are directed to an abstract idea.
Under Step 2B of the 2019 PEG independent claim 1 does not include additional elements that are sufficient to amount to significantly more than the abstract idea. The claim(s) do 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 of using a display of a user device, a computing system and a database, identifying, via a browser extension associated with a first entity and based on content scraped from a portal associated with a second entity different from the first entity, a data requirement associated with an individual for an interaction, the portal being output on a third entity different than the first and second entities; verifying in near real time, via the browser extension and by accessing a first entity, whether a data element associated with the individual satisfies the data requirement by determining whether (i) a formatting of data in the data element matches a corresponding formatting and (ii) the data element matches corresponding data stored; determining, via the browser extension and by accessing the first entity, first information associated with the interaction based on verifying that the data element associated with the individual satisfies the data requirement and based on the second entity; and causing, via the browser extension, to output a first visual indication of a result of the verifying proximate to the content presented on the display, the first visual indication including a selectable element configured to upload a file and subsequently (ii) a second visual indication of the first information associated with the interaction in place of the first visual indication, wherein the first visual indication and the second visual indication are injected into or overlaid on the portal by the browser extension, amount to instructions to apply the abstract idea with a computer. The claims are not patent eligible.
The dependent claims have been given the full two part analysis including analyzing the additional limitations both individually and in combination. The Dependent claim(s) when analyzed individually are also held to be patent ineligible under 35 U.S.C. 101 because for the same reasoning as above and the additional recited limitation(s) fail to establish that the claim(s) are not directed to an abstract idea. The additional limitations of the dependent claim(s) when considered individually do not amount to significantly more than the abstract idea. Claims 2-8, 11-12, 14-19 and 21-22 merely further explain the abstract idea.
When viewed individually the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea. Accordingly claims 1-8 and 11-22 are ineligible.
Response to Arguments
Applicant's arguments filed 5/8/26 have been fully considered but they are not persuasive.
The Applicant states “the verification step of amended claim 1 represents a specific technical solution that integrates any alleged abstract idea into a practical application” (page 10) and “This verification involves specific technical operations including comparing formatting of data and matching data against a database, that go beyond abstract "data verification” (page 10). The Examiner disagrees with the sentences because the claims are an improvement of the abstract idea only. It is a business solution to a business problem of data verification. The applicant has not shown how the claims improve a computer or other technology, invoke a particular machine, transform matter, or provide more than a general link between the abstraction and the technology, MPEP 2106.05(a)-(c) & (e). The Examiner disagrees that “claim 1 recites a specific technical solution in which a browser extension injects functionality (new functionality) into a third-party portal that does not natively include such functionality” (page 11). The claims do not improve the functioning of the computer. Rather the layout of the GUI is improved only. The amended claims provide a different way of presenting information only, which is not functional. Applicant’s remarks about why these limitations provide a practical application fail to surface any technical improvement identified in the specification and, therefore this is not an inventive concept and significantly more.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARLA HUDSON whose telephone number is (571)272-1063. The examiner can normally be reached M-F 9:30 a.m. - 5:30 p.m. ET.
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/M.H./Examiner, Art Unit 3694
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694
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