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 .
Status of Claims
2. This action is in reply to the responsive to communication(s) filed on 07/03/2024.
3. Claims 1-20 are currently pending and are rejected for the reasons set forth below.
Related Application(s) – Prior Art of Record
4. 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.
Information Disclosure Statement
5. The Information Disclosure Statements (IDS) filed on 07/03/2024 have been considered. Initialed copies of the Form 1449 are enclosed herewith.
Claim Rejections - 35 USC § 101
6. 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.
7. Claims 1-20 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.
8. 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 1-9 are directed to a computer-implemented method (i.e., process), claims 10-18 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 held by a second financial institution, 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”, and “a first application proxy instance of the first user application”. 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”, and “a first application proxy instance of the first user application” 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 held by a second financial institution, 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 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”, and “a first application proxy instance of the first user application”. 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 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”, and “a first application proxy instance of the first user application” 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 held by a second financial institution, 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”, and “a first application proxy instance of the first user application”. 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”, and “a first application proxy instance of the first user application” 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 2-9, 11-18, and 20 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 claims 6 and 15: simply provide further definition to “the user of the first financial account” recited in independent claims 1 and 10. 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 claims 7 and 16: simply provide further definition to “the user of the first financial account” recited in independent claims 1 and 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 claims 8 and 17: simply provide further definition to “the request for the transaction associated with at least the first financial account” recited in independent claims 1 and 10. 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).
Double Patenting
9. 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.
10. Claims 1-20 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 1-20 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 1-20 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 7 of the instant application: Dependent claim 7 of Patent No. 12,067,537 is the same version of dependent claim 7 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.
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 proxy instances in an application proxy system, 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, by the application proxy system, using the first application proxy 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 proxy system from the first financial institution and using the first application proxy 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. 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.
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.
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/LIZ P NGUYEN/
Examiner, Art Unit 3696
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696
Prosecution Insights