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 the Application
Claims 1-2, 4, 6-10, 12, and 14-16 have been examined in this application.
The filling date of this application number recited above is 22-July-2024. No priority has been claimed in the Application Data Sheet, thus the examination will be undertaken in consideration of the effective filing date as the priority date.
No information disclosure statement (IDS) has been filed to date.
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 1-2, 4, 6-10, 12, and 14-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The Claims are directed to an abstract idea, Methods of Organizing Human Activity. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional computer elements, which are recited at a high level of generality, provide conventional computer functions that do not add meaningful limits to practicing the abstract idea.
As per Claims 1 and 9, the claim recites “a [company] for managing changes within a database file environment, the [company] comprising:
a … user having an account with an active file number;
a [worker] and a [caller] operatively coupled for communication with the [user], storing in the storage … a plurality of files, each of the files being associated with a unique file number, the files including a user file associated with the active file number of the user; and
a change application stored in the storage …, the application including [instructions] that, when executed, causes the [worker] to:
receive from the user … a report related to the active file number of the user;
process the report and, in response to information in the report that a card associated with the active file number has been lost or stolen, close the account associated with the active file number such that subsequent charge requests using the active file number are denied;
generate a new file number and issue to the user a new card associated with the new file number;
analyze activity information in the user file associated with the active file number, the activity information being stored in the user file in the storage …, and generate a list of sources of recurring charges in the activity information;
send the list of sources to the [user] and receive from the [user] a selection of at least one of the sources; and
send a message to the at least one source, the message including the new file number.”
The limitation of the claims recited above, considering the claims without the additional elements (e.g. system, device, processor, etc.), under its broadest reasonable interpretation (BRI), recites certain methods of organizing human activities, specifically under fundamental economic principles or practices and/or commercial or legal interactions. The method recited above is a process of reporting a lost or stolen card, denying transactions associated with the lost or stolen card, generating a new card, providing the new card, analyzing data for recurring payments, and updating the recurring payment options with the new card. The process includes financial information (e.g. new card number), and various interactions to report, receive, generate, and analyze transaction information. Therefore, the claims recite an abstract idea, certain methods of organizing human activities.
This judicial exception is not integrated into practical application. In particular, the claims recite an additional element of “system”, “database”, “communication device”, “processor”, “non-transitory storage device”, and “change application” to perform the method recited above by instructing the abstract idea to be performed “by” these generic computer components. These general computer components are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer system. As disclosed by Figure 1 and Specification:
[0026] “The user 110 accesses services and products by use of one or more user devices, illustrated in separate examples as a computing device 104 and a mobile device 106, which may be, as non-limiting examples, a smart phone, a portable digital assistant (PDA), a pager, a mobile television, a gaming device, a laptop computer, a camera, a video recorder, an audio/video player, radio, a GPS device, or any combination of the aforementioned, or other portable device with processing and communication capabilities”; and
[0055] “Furthermore, the computing device 206, may be or include a workstation, a server, or any other suitable device, including a set of servers, a cloud-based application or system, or any other suitable system, adapted to execute, for example any suitable operating system, including Linux, UNIX, Windows, macOS, iOS, Android, and any known other operating system used on personal computer, central computing systems, phones, and other devices”;
these additional elements are generic, off-the-shelf components available to the public, and does not require any specialized hardware or equipment to perform the claimed method, but are merely applied to perform its basic functionalities, such as: store data, receive data, analyze data, generate data, and send data. Mere instructions to implement the abstract idea on a computer, or merely using the generic computer system as a tool to perform the abstract idea (e.g. mere “apply it”) is not indicative of integration into a practical application; see MPEP 2106.05(f). Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, determine, or send data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., certain methods of organizing human activities) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). 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.
The claims 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, when analyzed as a whole, considering the additional elements individually and/or as an ordered combination, the additional element of using a computer based system is recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer system. The claims lack sufficient technical details to provide how these limitations may provide technological steps or technical details on how it is particularly implemented on a computer to improve its system or any of its underlying hardware or components (e.g. how it is performed on the computer, how it could improve the computer itself, how it could manipulate the computer to function in a specific way other than its generic functionality, and/or how it could improve any of the underlying technology), but merely applies the generic computer system to perform its generic functionalities. Mere instructions to implement the abstract idea on a computer, or merely using the generic computer system as a tool to perform the abstract idea (e.g. mere “apply it”) is not indicative of an inventive concept (aka “significantly more”). In view of the Specification cited above, the judicial exception is not applied with or used by a particular machine. As held in Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 199 (1978) and Bancorp Services v. Sun Life, 687 F.3d 1266, 1276, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012), “the routine use of a computer to perform calculations cannot turn an otherwise ineligible mathematical formula or law of nature into patentable subject matter.” The claims are not patent eligible.
Regarding dependent claims, they are still directed to an abstract idea without significantly more.
Claims 2 and 10 recite “wherein the active file number and the new file number are card account numbers.” The claims provide further details regarding the data, which is still part of the abstract idea, and the additional elements are merely applied to implement the abstract idea, which is not indicative of integration into a practical application.
Claims 4 and 12 recite “wherein the processor sends a message to the communication device, the message including the new file number.” The claims provide further steps of sending data, which is still part of the abstract idea, and the additional elements are merely applied to implement the abstract idea, which is not indicative of integration into a practical application.
Claims 6 and 14 recite “wherein the processor analyzes the activity information over a predetermined time period for monthly charges that: occur on a common date; are of a common amount; are from a common source name; and/or are associated with an installment sale.” The claims provide further steps of analyzing data, which is still part of the abstract idea, and the additional elements are merely applied to implement the abstract idea, which is not indicative of integration into a practical application.
Claims 7 and 15 recite “wherein the processor receives from the communication device a selection of all of the sources, and sends the message to all of the sources.” The claims provide further steps of selecting data, which is still part of the abstract idea, and the additional elements are merely applied to implement the abstract idea, which is not indicative of integration into a practical application.
Claims 8 and 16 recite “wherein the processor receives from the communication device a selection of less than all of the sources, and sends the message to the selected sources.” The claims provide further steps of selecting data, which is still part of the abstract idea, and the additional elements are merely applied to implement the abstract idea, which is not indicative of integration into a practical application.
These additional steps of each claims fail to remedy the deficiencies of their parent claim above because they are merely further limiting the rules used to conduct the previously recited abstract idea, and are therefore rejected for at least the same rationale as applied to their parent claim above.
Claims 2, 4, 6-8, 10, 12, and 14-16, when analyzed as a whole, considering the additional elements individually and/or as an ordered combination, are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are sufficient to integrate into a practical application and do not amount to significantly more than the judicial exception. Similarly to the independent claims, each claim recites using a generic computer component to perform the abstract idea as mentioned above. Mere “apply it” is not “significantly more”. Therefore, prong 2 and step 2B analysis are similar to above and these claims are not eligible.
Therefore, Claims 1-2, 4, 6-10, 12, and 14-16 are not drawn to eligible subject matter as they are directed to an abstract idea without significantly more.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-2, 4, 6-10, 12, and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Beck et al. (US 20160321669 A1) in view of Zhang et al. (US 20200058031 A1).
As per Claims 1 and 9, Beck discloses a system for managing changes within a database file environment, the system comprising (See Figure 1 disclosing the system):
a communication device operated by a user having an account with an active file number (See Figure 1 – Client Device 130);
a processor and a non-transitory storage device operatively coupled for communication with the communication device, storing in the storage device a plurality of files, each of the files being associated with a unique file number, the files including a user file associated with the active file number of the user (See Figure 1 – Financial Service Provider 110 and Figure 3 – database 101 storing plurality of files associated with PAN); and
a change application stored in the storage device (See Figure 1 – Financial Service Provider 110), the application including executable code that, when executed, causes the processor to:
receive from the user via the communication device a report related to the active file number of the user ([0062] “The cardholder may utilize mobile device 130 to report potential fraud and request the FSP 100 cancel or suspend the PAN”);
process the report and, in response to information in the report that a card associated with the active file number has been lost or stolen, close the account associated with the active file number such that subsequent charge requests using the active file number are denied; (See Figure 4A – step 408, as disclosed [0069] “For example, if the cardholder indicates no desire in using the current PAN (e.g., if the cardholder expresses no desire to use the associated account until receiving a new card 132), FSP 110 may continue to step 408 where FSP 110 initiates procedures to deactivate the current PAN. Deactivating the current PAN comprises, for example, sending a message to debit system 150, credit system 160, or database 101, indicating that the PAN is no longer valid and should not be associated with an account” wherein step 401B and 401C indicates the card has been lost or stolen. See also Figure 5 – steps 503 to 504, as disclosed [0081] “In step 503, FSP 110 may determine whether a PAN in the transaction request is included in a database, such as database 101” and [0083] “In either case, if it is determined that the PAN was previously active and/or in database 101, process 500 continues to step 504, where the transaction is declined”);
generate a new file number and issue to the user a new card associated with the new file number (See Figure 4A – step 403, as disclosed [0066] “Whatever the communication, in step 403, FSP 110 may issue a new PAN” and see also [0057] “FSP 110 may generate a new PAN (e.g., as part of generating and sending the cardholder a new card) and insert that new PAN into database 110 as an entry under field 301B”);
analyze activity information in the user file associated with the active file number, the activity information being stored in the user file in the storage device, and generate a list of sources of recurring charges in the activity information (See Figure 4B – step 421, as disclosed [0076] “In step 421, FSP 110 may determine whether there are recurring charges for the card. For example, when a cardholder initiates a recurring payment at merchant 120, merchant system 122 may generate a transaction request that includes data indicating that a similar transaction may be performed on a periodic basis (e.g., monthly).”);
send the list of sources to the communication device … ([0077] “In step 423, FSP 110 generates one or more limitations on the current PAN. For example, FSP 110 may utilize the determinations in steps 411-423 to determine what sorts of transactions the cardholder is likely to initiate using the current PAN … In step 425, FSP 110 may also generate and send the generated limitations to database 101, debit system 150, or credit system 160”); and
Although Beck teaches of a system to report a stolen or lost card, receive a new card, determine the recurring payments associated with the previous card, and generating a list of those limitations to be transmitted, the prior art does not seem to explicitly disclose that the list is sent to the communications device to receive a selection, and sending a message to the selected sources. However, Zhang teaches:
send the list of sources to the communication device and receive from the communication device a selection of at least one of the sources (see Figure 5 – step 520, as disclosed [0053] “At step 510, COF merchants and recurring payments are discovered, as described in more detail with respect to FIG. 6. At step 520, a list of COF merchants and recurring payments are provided to card users and/or to a transaction approval system, as shown with further detail in FIG. 7” which is further disclosed [0055] “At step 720, a list of COF merchants and recurring payment is compiled for display at, for example, a mobile app on a smartphone of the card user. If user actions to list of COF merchants and recurring payments is received at step 730”); and
send a message to the at least one source, the message including the new file number (See Figure 5 – step 540, as disclosed [0053] “If a change to user card data or parameter is detected (e.g., an update to a card for a specific card user is detected) at step 530, at step 540 payment credentials for COF merchants and recurring payments are automatically updated, as described throughout the disclosure” which is further disclosed [0055] “If user actions to list of COF merchants and recurring payments is received at step 730, at step 740, the user control (e.g., cancel, update or limit) is executed against COF merchant and recurring payments”).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize generating a list of recurring payments, and updating the recurring payments with the new card as in Zhang in the system executing the method of Beck with the motivation of offering to [0006] “improve user card data stored by card-on-file merchants and recurring payment transactions between acquirer processors and issuer processors over data communication networks, in cases such as updated card information and other cases” as taught by Zhang over that of Beck.
As per claims 2 and 10, Beck teaches the system according to Claim 1, and the method according to Claim 9, wherein the active file number and the new file number are card account numbers ([0026] “Database 101 may comprise records that contain multiple PANs (Primary Account Numbers). In one aspect, each record may contain a first PAN that is associated with a fraud communication … Each record may also contain a second PAN. The second PAN may be a PAN intended to replace the first PAN, may have been mailed or otherwise communicated to a cardholder, and may be used without the one or more limitations”).
As per claims 4 and 12, Beck teaches the system according to Claim 1, and the method according to Claim 9, wherein the processor sends a message to the communication device, the message including the new file number ([0067] “In step 405, FSP 110 may send the new PAN to the cardholder. Sending the new PAN may comprise … sending a communication to client device 130 to replace a current PAN or other information on client device 130, or the like”).
As per claims 6 and 14, Beck teaches the system according to Claim 1, and the method according to Claim 9, wherein the processor analyzes the activity information over a predetermined time period for monthly charges that:
occur on a common date; are of a common amount; are from a common source name; and/or are associated with an installment sale ([0076] “In step 421, FSP 110 may determine whether there are recurring charges for the card. For example, when a cardholder initiates a recurring payment at merchant 120, merchant system 122 may generate a transaction request that includes data indicating that a similar transaction may be performed on a periodic basis (e.g., monthly). Such data may include, for example, information stored in fields of an ISO 8583 message (e.g., data fields 62 and/or 63) that indicates that a transaction is likely to recur next week, next month, or next year.”).
As per claims 7 and 15, Beck teaches the system according to Claim 1, and the method according to Claim 9, wherein the processor receives from the communication device a selection of all of the sources, and sends the message to all of the sources ([0055] “If user actions to list of COF merchants and recurring payments is received at step 730, at step 740, the user control (e.g., cancel, update or limit) is executed against COF merchant and recurring payments” and see Figure 9 wherein the User Control includes to confirm all of the listed recurring payments).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize user selection for the list of recurring payments as in Zhang in the system executing the method of Beck with the motivation of offering to [0006] “improve user card data stored by card-on-file merchants and recurring payment transactions between acquirer processors and issuer processors over data communication networks, in cases such as updated card information and other cases” as taught by Zhang over that of Beck.
As per claims 8 and 16, Beck teaches the system according to Claim 1, and the method according to Claim 9, wherein the processor receives from the communication device a selection of less than all of the sources, and sends the message to the selected sources ([0055] “If user actions to list of COF merchants and recurring payments is received at step 730, at step 740, the user control (e.g., cancel, update or limit) is executed against COF merchant and recurring payments” and see Figure 9 wherein the User Control includes to confirm or cancel each of the listed recurring payments).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize user selection for the list of recurring payments as in Zhang in the system executing the method of Beck with the motivation of offering to [0006] “improve user card data stored by card-on-file merchants and recurring payment transactions between acquirer processors and issuer processors over data communication networks, in cases such as updated card information and other cases” as taught by Zhang over that of Beck.
Response to Arguments
Applicant's arguments, see pages 2 to 3, filed 24-September-2025, with respect to 35 U.S.C. 101 rejection have been fully considered but they are not persuasive. As discussed above under 35 U.S.C. 101 rejection, the claims recite an abstract idea (e.g. certain methods of organizing human activities), wherein the additional elements are merely applied to implement the abstract idea. Mere “apply it” is not “significantly more”. Therefore, the 35 U.S.C. 101 rejection is maintained.
Applicant's arguments, see pages 3 to 5, with respect to 35 U.S.C. 103 rejection have been fully considered but they are not persuasive. As discussed above under 35 U.S.C. 103 rejection, the combination of the referenced prior arts (e.g. Beck in view of Zhang), and not as individual references, teaches the claim limitations as a whole for at least the cited portions. Therefore, the 35 U.S.C. 103 rejection is maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Torreyson et al. (US 20100258620 A1) discloses [0076] “The cardholder is issued 410 second transaction card 460 that is associated with second secondary account 456 and has a second account number assigned thereto. Second secondary account 456 is linked to first primary account 452, and second transaction card 460 replaces first transaction card 458. First transaction card 458 is replaced because, for example, first transaction card 458 is reported lost and/or stolen” and [0087] “If first transaction card 458 is being used in a recurring transaction, interchange network 28 automatically pushes 534 account data relating to second transaction card 460 to merchant 24 to replace account data relating to first transaction card 458 to make the recurring transaction”.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HENRY H JUNG whose telephone number is (571)270-5018. The examiner can normally be reached Mon - Fri 9:30 - 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine M Tran (Behncke) can be reached at (571) 272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HENRY H JUNG/ Examiner, Art Unit 3695
/CHRISTINE M Tran/ Supervisory Patent Examiner, Art Unit 3695