DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The Applicant filed Amendments on 01/12/2026. Claims 1-6, 8-14, 16, and 18-23 are pending and are rejected for the reasons set forth below.
Related Application(s) – Prior Art of Record
3. The instant application is a continuation application (CON) of parent application 18/382,152 (now USPN 12,067,537), which is itself a CON of application 17/533,728 (now USPN 12,056,702), which is itself a CON of application 16/800,543 (now USPN 11,216,814), which is itself a CON of application 15/455,959 (now USPN 10,614,463), which is itself a CON of application 14/790,897 (now USPN 9,595,023). 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 - 35 USC § 101
4. 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.
5. Claims 1-6, 8-14, 16, and 18-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more.
6. Analysis:
Step 1: Statutory Category?: (is the claim(s) directed to a process, machine, manufacture or composition of matter?) - YES: In the instant case, claims 1-6, 8-9, 21-23 are directed to a computer-implemented method (i.e., process), claims 10-14, 16, 18 are directed to a computer platform (i.e., machine), and claims 19-20 are directed to one or more non-transitory computer-readable media (i.e., machine).
Regarding independent claim 1:
Step 2A - Prong 1: Judicial Exception Recited?: (is the claim(s) recited a judicial exception (an abstract idea enumerated in the 2019 PEG, a law of nature, or a natural phenomenon) – YES: Independent claim 1 recites the at least following limitations of “receiving, …, a request for a transaction associated with at least a first financial account held by a first financial institution, wherein the request for the transaction includes identification of transaction addressing information of a second financial account, and wherein the first financial institution … that enables users of the first financial institution to access data stored by the first financial institution …, selecting, …, a first application proxy instance of the first user application, wherein the first application proxy instance is specific to a user of the first financial account and the first financial institution; initiating, …, a communication session with the first financial institution to retrieve transaction addressing information associated with the first financial account; retrieving, …, the transaction addressing information associated with the first financial account; and initiating, … based on the retrieved transaction addressing information associated with the first financial account and the identified transaction addressing information of the second financial account, the transaction.” These recited limitations of the claim, as drafted, under its broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas as they cover performance of the limitations in commercial interactions (including sales activities), namely initiate a transaction based on the retrieved transaction addressing information of financial accounts of users. Accordingly, the claim recites an abstract idea.
Step 2A - Prong 2: Integrated into a Practical Application?: (is the claim(s) recited additional elements that integrate the exception into a practical application of the exception) - NO: This judicial exception is not integrated into a practical application. In particular, independent claim 1 further to the abstract idea includes additional elements of “a computer platform”, “a computing device”, “a normalized application programming interface (API)”, “a first user application”, “a first API”, “a plurality of stored application proxy instances in an application proxy system”, “a first application proxy instance of the first user application”, and “wherein the first application instance is configured to simulate the first user application, wherein the first API specific to the first financial institution is a proprietary API distinct from a web browser interface”. However, the additional elements recite generic computer components such as a computer, computing devices, a server, and/or software programing that are recited a high-level of generality that merely perform, conduct, carry out, implement, and/or narrow the abstract idea itself. Accordingly, the additional elements evaluated individually and in combination do not integrate the abstract idea into a practical application because they comprise or include limitations that are not indicative of integration into a practical application such as adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea -- See MPEP 2106.05(f). The claim is directed to an abstract idea.
Step 2B: Claim provides an Inventive Concept?: (is the claim(s) recited additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception) - NO: 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 of “a computer platform”, “a computing device”, “a normalized application programming interface (API)”, “a first user application”, “a first API”, “a plurality of stored application proxy instances in an application proxy system”, “a first application proxy instance of the first user application”, and “wherein the first application instance is configured to simulate the first user application, wherein the first API specific to the first financial institution is a proprietary API distinct from a web browser interface” evaluated individually and in combination do not amount to more than a recitation of the words "apply it" (or an equivalent) or are not more than mere instructions to implement an abstract idea or other exception on a computer, or are not more than merely using a computer as a tool to perform an abstract idea. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more - See MPEP 2106.05(f)(2). None of the additional elements taken individually or when taken as an ordered combination amount to significantly more than the abstract idea. Accordingly, the claim is patent-ineligible.
Regarding independent claim 10:
Step 2A - Prong 1: Judicial Exception Recited?: (is the claim(s) recited a judicial exception (an abstract idea enumerated in the 2019 PEG, a law of nature, or a natural phenomenon) – YES: Independent claim 10 recites the at least following limitations of “receive, …, a request for a transaction associated with at least a first financial account held by a first financial institution, wherein the request for the transaction includes identification of transaction addressing information of a second financial account, and wherein the first financial institution … enables users of the first financial institution to access data stored by the first financial institution …, select, …, specific to a user of the first financial account and the first financial institution; initiate, …, a communication session with the first financial institution to retrieve transaction addressing information associated with the first financial account; retrieve, …, the transaction addressing information associated with the first financial account; and initiate, based on the retrieved transaction addressing information of the first financial account and the identified transaction addressing information associated with the second financial account, the transaction.” These recited limitations of the claim, as drafted, under its broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas as they cover performance of the limitations in commercial interactions (including sales activities), namely initiate a transaction based on the retrieved transaction addressing information of financial accounts of users. Accordingly, the claim recites an abstract idea.
Step 2A - Prong 2: Integrated into a Practical Application?: (is the claim(s) recited additional elements that integrate the exception into a practical application of the exception) - NO: This judicial exception is not integrated into a practical application. In particular, independent claim 10 further to the abstract idea includes additional elements of “at least one hardware processor”, “a communication interface”, “a non-transitory memory”, “a computing device”, “a normalized application programming interface (API)”, “a first user application”, “a first API”, “a plurality of stored application proxy instances in an application proxy system”, “a first application proxy instance of the first user application”, and “wherein the first application instance is configured to simulate the first user application, wherein the first API specific to the first financial institution is a proprietary API distinct from a web browser interface”. However, the additional elements recite generic computer components such as a computer, computing devices, a server, and/or software programing that are recited a high-level of generality that merely perform, conduct, carry out, implement, and/or narrow the abstract idea itself. Accordingly, the additional elements evaluated individually and in combination do not integrate the abstract idea into a practical application because they comprise or include limitations that are not indicative of integration into a practical application such as adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea -- See MPEP 2106.05(f). The claim is directed to an abstract idea.
Step 2B: Claim provides an Inventive Concept?: (is the claim(s) recited additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception) - NO: 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 of “at least one hardware processor”, “a communication interface”, “a non-transitory memory”, “a computing device”, “a normalized application programming interface (API)”, “a first user application”, “a first API”, “a plurality of stored application proxy instances in an application proxy system”, “a first application proxy instance of the first user application”, and “wherein the first application instance is configured to simulate the first user application, wherein the first API specific to the first financial institution is a proprietary API distinct from a web browser interface” evaluated individually and in combination do not amount to more than a recitation of the words "apply it" (or an equivalent) or are not more than mere instructions to implement an abstract idea or other exception on a computer, or are not more than merely using a computer as a tool to perform an abstract idea. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more - See MPEP 2106.05(f)(2). None of the additional elements taken individually or when taken as an ordered combination amount to significantly more than the abstract idea. Accordingly, the claim is patent-ineligible.
Regarding independent claim 19:
Step 2A - Prong 1: Judicial Exception Recited?: (is the claim(s) recited a judicial exception (an abstract idea enumerated in the 2019 PEG, a law of nature, or a natural phenomenon) – YES: Independent claim 19 recites the at least following limitations of “receive, …, a request for a transaction associated with at least a first financial account held by a first financial institution, wherein the request for the transaction includes identification of transaction addressing information of a second financial account, and wherein the first financial institution provides a first user application specific to the first financial institution that enables users of the first financial institution to access data stored …, select, … specific to a user of the first financial account and the first financial institution; initiate, …, a communication session with the first financial institution to retrieve transaction addressing information associated with the first financial account; retrieve, …, the transaction addressing information associated with the first financial account; and initiate, based on the retrieved transaction addressing information of the first financial account and the identified transaction addressing information associated with the second financial account, the transaction.” These recited limitations of the claim, as drafted, under its broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas as they cover performance of the limitations in commercial interactions (including sales activities), namely initiate a transaction based on the retrieved transaction addressing information of financial accounts of users. Accordingly, the claim recites an abstract idea.
Step 2A - Prong 2: Integrated into a Practical Application?: (is the claim(s) recited additional elements that integrate the exception into a practical application of the exception) - NO: This judicial exception is not integrated into a practical application. In particular, independent claim 19 further to the abstract idea includes additional elements of “a computer platform”, “a computing device”, “a normalized application programming interface (API)”, “a first user application”, “a first API”, “a plurality of stored application proxy instances in an application proxy system”, “a first application proxy instance of the first user application”, and “wherein the first application instance is configured to simulate the first user application, wherein the first API specific to the first financial institution is a proprietary API distinct from a web browser interface”. However, the additional elements recite generic computer components such as a computer, computing devices, a server, and/or software programing that are recited a high-level of generality that merely perform, conduct, carry out, implement, and/or narrow the abstract idea itself. Accordingly, the additional elements evaluated individually and in combination do not integrate the abstract idea into a practical application because they comprise or include limitations that are not indicative of integration into a practical application such as adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea -- See MPEP 2106.05(f). The claim is directed to an abstract idea.
Step 2B: Claim provides an Inventive Concept?: (is the claim(s) recited additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception) - NO: 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 of “a computer platform”, “a computing device”, “a normalized application programming interface (API)”, “a first user application”, “a first API”, “a plurality of stored application proxy instances in an application proxy system”, “a first application proxy instance of the first user application”, and “wherein the first application instance is configured to simulate the first user application, wherein the first API specific to the first financial institution is a proprietary API distinct from a web browser interface” evaluated individually and in combination do not amount to more than a recitation of the words "apply it" (or an equivalent) or are not more than mere instructions to implement an abstract idea or other exception on a computer, or are not more than merely using a computer as a tool to perform an abstract idea. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more - See MPEP 2106.05(f)(2). None of the additional elements taken individually or when taken as an ordered combination amount to significantly more than the abstract idea. Accordingly, the claim is patent-ineligible.
Dependent claims 2-6, 8-9, 11-14, 16, 18, and 20-23 have been given the full two-part analysis, analyzing the additional limitations both individually and in combination. The dependent claims, when analyzed individually and in combination, are also held to be patent-ineligible under 35 U.S.C. 101.
Dependent claims 2, 11, and 20: simply provide further definition to “retrieving the transaction addressing information of the first financial account” recited in independent claims 1 , 10, and 19. Simply stating that wherein retrieving the transaction addressing information associated with the first financial account includes retrieving, using the first application proxy instance, one or more financial documents including the transaction addressing information associated with the first financial account amounts to no more than merely applying generic computer components and/or software programing to implement the abstract idea on a computer (i.e., using the first application proxy instance).Thus, the dependent claims do not add any additional element or 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 or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Dependent claims 3 and 12: simply provide further definition to “retrieving the transaction addressing information associated with the first financial account” recited in dependent claims 2 and 20. Simply stating that wherein retrieving the transaction addressing information associated with the first financial account comprises one of: scraping content of the one or more financial documents to identify the transaction addressing information associated with the first financial account; or executing an extraction script constructed to isolate the transaction addressing information associated with the first financial account amounts to no more than merely applying generic computer components and/or software programing to implement the abstract idea on a computer. Furthermore, the additional claim limitations of “scraping content of the one or more financial documents to identify the transaction addressing information; or executing an extraction script constructed to isolate the transaction addressing information” merely recite additional steps that amount to no more than selecting a particular data source or type of data to be manipulated that the courts have found to be insignificant extra-solution activity. See, e.g., MPEP 2106.05(g) (citing Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016)). Thus, the dependent claims do not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application) and the additional claim limitations of these dependent claims fail to amount to significantly more than the judicial exception because the courts have found selecting a particular data source or type of data to be manipulated to be well-understood, routine, and conventional activity. See, e.g., MPEP 2106.05(d) (citing Electronically scanning or extracting data from a physical document (Content Extraction and Transmission, LLC) and Receiving or transmitting data over a network (Symantec, TLI Communications, OIP Techs, buySafe)), (i.e., a technological inventive concept under Step 2B).
Dependent claims 4 and 13: simply provide further definition to “the one or more financial documents” recited in dependent claims 2 and 11. Simply stating that wherein the one or more financial documents include an account statement of the first financial account does not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application) that results in the claim being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Dependent claims 5 and 14: simply provide further definition to “the transaction addressing information” recited in independent claim 1 and 10. Simply stating that wherein the transaction addressing information includes an account number of a corresponding account and a routing number of a corresponding financial institution does not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application) that results in the claim being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Dependent claim 6: simply provides further definition to “the user of the first financial account” recited in independent claim 1. Simply stating that wherein the user of the first financial account is a same user as a user of the second financial account does not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application) that results in the claim being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Dependent claim 16: simply provides further definition to “the user of the first financial account” recited in independent claim 10. Simply stating that wherein the user of the first financial account is a different user from a user of the second financial account does not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application) that results in the claim being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Dependent claim 8: simply provide further definition to “the request for the transaction associated with at least the first financial account” recited in independent claim 1. Simply stating that wherein the request for the transaction associated with at least the first financial account includes an account token for the first financial account amounts to no more than merely applying generic computer components and/or software programing to implement the abstract idea on a computer (i.e., an account token).Thus, the dependent claims do not add any additional element or 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 or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Dependent claims 9 and 18: simply provide further definition to “selecting at least one of the first application proxy instance or the second application proxy instance” recited in dependent claims 8 and 17. Simply stating that wherein selecting the first application proxy instance is performed using the account token for the first financial account amounts to no more than merely applying generic computer components and/or software programing to implement the abstract idea on a computer (i.e., the first application proxy instance, the account token).Thus, the dependent claims do not add any additional element or 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 or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Dependent claim 21: simply refine the abstract idea because they recite limitations (e.g., authenticating the first application instance with the first financial institution; and mapping communications between the normalized API and the first API specific to the first financial institution), that fall under the category of organizing human activity as described above in independent claim 1. Additionally, merely stating that these process steps are performed by the first application instance amounts to no more than merely applying generic computer components (i.e., the first application instance) to implement the abstract idea on a computer. Thus, the dependent claims do not add any additional element or 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 or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Dependent claim 22: simply provide further definition to “initiating the communication session with the first financial institution” recited in independent claim 1. Simply stating that wherein initiating the communication session with the first financial institution includes establishing a session using credentials of the user of the first financial account, and receiving, from the first financial institution, a unique identifier for access to the first financial institution, wherein the first application instance uses the unique identifier for subsequent communications with the first financial institution amounts to no more than merely applying generic computer components and/or software programing to implement the abstract idea on a computer (i.e., the first application instance).Thus, the dependent claims do not add any additional element or subject matter that provides a technological improvement (i.e., the first application instance) that results in the claims being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Dependent claim 23: simply provide further definition to “the first application instance” recited in independent claim 1. Simply stating that wherein the first application instance is configured via parsing code associated with the first user application or via parsing communication between the first user application and the first financial institution amounts to no more than merely applying generic computer components and/or software programing to implement the abstract idea on a computer (i.e., the first application instance).Thus, the dependent claims do not add any additional element or subject matter that provides a technological improvement (i.e., the first application instance) that results in the claims being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Double Patenting
7. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined 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 MPEP § 2146 et seq. 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/patent/patents-forms. The filing date of the application in which the form is filed determines what 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 www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
8. Claims 1-6, 8-14, 16, and 18-23 of the instant application are rejected on the ground of nonstatutory anticipated-type double patenting as being unpatentable over claims 1-25 of Patent No. 12,067,537.
Although claims 1-6, 8-14, 16, and 18-23 of the instant application and claims 1-25 of Patent No. 12,067,537 are not identical, they are not patentably distinct from each other because claims 1-20 of the instant application are anticipated by 1-25 of Patent No. 12,067,537.
Claims 1-6, 8-14, 16, and 18-23 of the instant application and claims 1-25 of Patent No. 12,067,537 recite a computer-implemented method, a computing platform, and one or more non-transitory computer-readable media of retrieving transaction endpoint data to facilitate transaction processing.
For independent claims 1, 10, and 19 of the instant application: Independent claims 1, 10, and 19 of Patent No. 12,067,537 is a narrower version of independent claims 1, 10, and 19 of the instant application with additional allowed claim limitations of “wherein the second financial institution provides a second user application specific to the second financial institution that enables users of the second financial institution to access data stored by the second financial institution via a second API specific to the second financial institution, selecting, by the computing platform and from the plurality of stored application proxy instances in the application proxy system, a second application proxy instance of the second user application, wherein the second application proxy instance simulates the second user application and is specific to a user of the second financial account and the second financial institution; initiating, by the application proxy system, using the second application proxy instance and via the second API specific to the second financial institution, a communication session with the second financial institution to retrieve transaction addressing information associated of the second financial account; retrieving, by the application proxy system from the second financial institution and using the second application proxy instance, the transaction addressing information of the second financial account.” Therefore, claims 1, 10, and 19 of Patent No. 12,067,537 is in essence a “species” of the generic invention of the instant application independent claims 1, 10, and 19. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
For dependent claims 2 and 20 of the instant application: Dependent claims 2 and 20 of Patent No. 12,067,537 are the same version of dependent claims 2 and 20 of the instant application.
For dependent claim 3 of the instant application: Dependent claim 3 of Patent No. 12,067,537 is the same version of dependent claim 3 of the instant application.
For dependent claim 4 of the instant application: Dependent claim 4 of Patent No. 12,067,537 is the same version of dependent claim 4 of the instant application.
For dependent claim 5 of the instant application: Dependent claim 5 of Patent No. 12,067,537 is the same version of dependent claim 5 of the instant application.
For dependent claim 6 of the instant application: Dependent claim 6 of Patent No. 12,067,537 is the same version of dependent claim 6 of the instant application.
For dependent claim 8 of the instant application: Dependent claim 8 of Patent No. 12,067,537 is the same version of dependent claim 8 of the instant application.
For dependent claim 9 of the instant application: Dependent claim 9 of Patent No. 12,067,537 is the same version of dependent claim 9 of the instant application.
Response to Applicant’s Arguments
9. 35 U.S.C. §101 Rejections: Applicant’s arguments with respect to amended claims 1-6, 8-14, 16, and 18-23 that are rejected under 35 U.S.C. 101 have been considered but they are not persuasive because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more.
1. Applicant’s Argument: From Applicant Arguments/Remarks, Applicants submit that in this instance, the claims are properly characterized as relating to effectively communicating with a financial institution's proprietary API in response to a request from a normalized API via an instance of an application provided by the financial institution … As noted by the Federal Circuit in Finjan Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 125 USPQ2d 1282 (Fed. Cir. 2018), while claims directed to a result itself are not patent-eligible, claims directed to a specific way of achieving that result are patent-eligible … Like the claims at issue in Finjan, the current claims are not directed generally to an end result, but rather to a specific way of interfacing with a proprietary, unexposed API to retrieve financial information requested via a separate normalized API. Therefore, even if the Office's claim interpretation reasonably encompasses the initiating transmission of financial information and/or initiating a financial transaction being a business relationship (which Applicant does not concede), merely involving an alleged exception does not render the claim language directed to an abstract idea, because a person of reasonable skill in the art would not, based on the Specification, believe that the claims are attempting to monopolize the general transmission of financial information. Accordingly, for at least the reasons set forth above in addition to the specific features of each dependent claim, Applicant submits that claims 1-20 do not recite a judicial exception, including the alleged abstract idea(s) set forth by the Office (See Applicant Arguments/Remarks Pages 12-18).
In response to Applicant’s arguments, Examiner respectfully submits that unlike the claims at issue in Finjan, independent claims 1, 10, 19 at issue include the at least claim limitations, as drafted, under its broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas as they cover performance of the limitations in commercial interactions (including sales activities), namely initiate a transaction based on the retrieved transaction addressing information of financial accounts of users). See details of Claim Rejections - 35 USC § 101 of claims 1-6, 8-14, 16, and 18-23 in the section above.
2. Applicant’s Argument: From Applicant Arguments/Remarks, Applicants submit that Claim 1 recites, in part, "receiving, by a computing platform from a computing device and via a normalized application programming interface (API), a request for a transaction associated with at least a first financial account held by a first financial institution," "selecting, by the computing platform and from a plurality of stored application instances in an application instance system, a first application instance of the first user application, wherein the first application instance is specific to a user of the first financial account and the first financial institution … even though the claim need not explicitly recite the improvement, independent claim 1 also directly recites "wherein the first application instance is configured to simulate the first user application, wherein the first API specific to the first financial institution is a proprietary API distinct from a web browser interface," which provides a direct improvement to web interface technology using more secure APIs instead of web browser interfaces that may not accurately request and/or receive data. As such, even if the Office were to maintain that the claims are directed to a judicial exception under Prong One of Step 2A, which Applicant does not concede nor agree with, Applicant respectfully submits that the claims are integrated into a practical application under Prong Two of Step 2A and are therefore patent eligible (See Applicant Arguments/Remarks Pages 18-20).
In response to Applicant’s arguments, Examiner respectfully submits that independent claims 1, 10, 19 at issue include additional elements of “a computer platform”, “a computing device”, “a normalized application programming interface (API)”, “a first user application”, “a first API”, “a plurality of stored application proxy instances in an application proxy system”, “a first application proxy instance of the first user application”, and “wherein the first application instance is configured to simulate the first user application, wherein the first API specific to the first financial institution is a proprietary API distinct from a web browser interface”. However, the additional elements recite generic computer components such as a computer, computing devices, a server, and/or software programing that are recited a high-level of generality that merely perform, conduct, carry out, implement, and/or narrow the abstract idea itself. Accordingly, the additional elements evaluated individually and in combination do not integrate the abstract idea into a practical application because they comprise or include limitations that are not indicative of integration into a practical application such as adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea -- See MPEP 2106.05(f). Also, none of the additional elements taken individually or when taken as an ordered combination amount to significantly more than the abstract idea. See details of Claim Rejections - 35 USC § 101 of claims 1-6, 8-14, 16, and 18-23 in the section above.
3. Applicant’s Argument: From Applicant Arguments/Remarks, Applicants submit that even if the claims are directed to a judicial exception under Step 2A, which Applicant submits the instant claims are not, the Office must then perform evaluations under Step 2B … Here, Applicant's claims are not simply limited to a particular environment, nor do they instruct a practitioner to simply utilize a generic computer to perform a process. Applicant points the Office to Example 21 of the 2015 Update on Subject Matter Eligibility issued by the USPTO, where claim 2 is directed to a stock quote alert subscription service where subscribers receive customizable stock quotes on their local computers from a data source was found to be eligible subject matter … Example 21 further states that "these are meaningful limitations that add more than generally linking the use of the abstract idea (the general concept of organizing and comparing data) to the Internet, because they solve an Internet-centric problem with a claimed solution that is necessarily rooted in computer technology" … Applicant submits that, when comparing the currently rejected claims to claim 2 of Example 21, Applicant's claim 1, for example, does not recite only the idea of a solution or outcome, nor does it simply invoke computers as merely a tool to perform an existing process. Rather, the claim recites specific techniques for communicating a normalized API request with a proprietary API by using an application instance … Regarding consideration of the features of a claim as a whole, in Bascom Global Internet Services, Inc. V. AT&TMobility LLC, the Federal Circuit emphasized that "[t]he inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art … Here, as in Bascom, the inventive concept is readily apparent when the claims are considered in combination, as they provide clear improvements to a computer and to the technical field of financial APIs and financial information retrieval … As discussed in more detail above with respect to both the streamlined analysis and Prong Two of Step 2A, even assuming arguendo that the Office could carry its burden of establishing that the claims are directed to an abstract idea (which it cannot as described above) the claims in combination recite features that amount to significantly more than the alleged abstract idea itself (See Applicant Arguments/Remarks Pages 20-22).
In response to Applicant’s arguments, Examiner respectfully submits that unlike the claims in Example 21 and Bascom, independent claims 1, 10, 19 at issue 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 “a computer platform”, “a computing device”, “a normalized application programming interface (API)”, “a first user application”, “a first API”, “a plurality of stored application proxy instances in an application proxy system”, “a first application proxy instance of the first user application”, and “wherein the first application instance is configured to simulate the first user application, wherein the first API specific to the first financial institution is a proprietary API distinct from a web browser interface” evaluated individually and in combination do not amount to more than a recitation of the words "apply it" (or an equivalent) or are not more than mere instructions to implement an abstract idea or other exception on a computer, or are not more than merely using a computer as a tool to perform an abstract idea. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more - See MPEP 2106.05(f)(2). None of the additional elements taken individually or when taken as an ordered combination amount to significantly more than the abstract idea. See details of Claim Rejections - 35 USC § 101 of claims 1-6, 8-14, 16, and 18-23 in the section above.
10. Double Patenting: Applicant respectfully submits that the double patenting rejection is moot in light of the amendments presented herein, and requests that the rejection be withdrawn (See Applicant Arguments/Remarks Page 12).
Examiner hereby maintains the Double Patenting Rejections of amended claims 1-6, 8-14, 16, and 18-23 because the amended claims 1-6, 8-14, 16, and 18-23 did not overcome the Double Patenting Rejections. See details of Double Patenting Rejections of claims 1-6, 8-14, 16, and 18-23 in the section above.
Relevant Prior Art
11. The prior art made of record and not relied upon are considered pertinent to Applicant’s disclosure. The following references are pertinent for disclosing various features relevant to the claimed invention, but they do not disclose all the claimed features, as explained below.
12. The best prior art of record, Tumminaro (U.S. Pub. No. 2007/0255662), hereinafter, "Tumminaro", Vembu et al. (U.S. Pub. No. 2009/0245521), hereinafter, "Vembu", and VanFleet et al. (U.S. Pub. No. 2005/0234822), hereinafter, "VanFleet", alone or in combination, neither discloses nor fairly suggests the instant application claim limitations of " selecting, by the computing platform and from a plurality of stored application instances in an application instance system, a first application instance of the first user application, wherein the first application instance is specific to a user of the first financial account and the first financial institution; wherein the first application instance is configured to simulate the first user application, wherein the first API specific to the first financial institution is a proprietary API distinct from a web browser interface, and initiating, by the application instance system, using the first application instance and via the first API specific to the first financial institution, a communication session with the first financial institution to retrieve transaction addressing information associated with the first financial account; retrieving, by the application instance system from the first financial institution and using the first application instance, the transaction addressing information associated with the first financial account; and initiating, by the computing platform and based on the retrieved transaction addressing information associated with the first financial account and the identified transaction addressing information of the second financial account, the transaction."
Conclusion
13. 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 extension fee 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 date of this final action.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Liz Nguyen whose telephone number is (571) 272-5414. The examiner can normally be reached on Monday to Friday 8:00 A.M to 5:00 P.M.
15. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Gart, can be reached on (571) 272-3955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
16. Information regarding the status of an application may be obtained from the Patent Center system (visit: https://patentcenter.uspto.gov). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call (800) 786-9199 (USA or CANADA) or (571) 272-1000.
/LIZ P NGUYEN/
Examiner, Art Unit 3696
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696
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