Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
This action is in reply to the application filed on 01/14/2026.
Claims 1, 14 and 20 are currently amended.
Claims 1-20 are currently pending and have been examined.
Response to Arguments
Applicant's arguments filed 1/14/2026 have been fully considered but they are not persuasive.
Regarding the double patenting rejection, the claim amendments are similar to elements of the allowed claim 1 in the 12051103 patent.
Regarding 35 U.S.C. § 101
Applicant argues step 2a priong2 starting page 10 of the response.
Applicant argues that the newly amended claims elements are not methods of organizing human activity. Examiner asserts that the newly amended claim elements are additional elements, however they claims still recite fundamental economic practice and therefore are abstract.
Applicate argues step 2a prong 2 starting on page 10 of the response.
Applicant argues the amended claim elements help solve a technical problem of improved verification systems, and helps a user open a new account without visiting a branch location.
Examiner asserts that the newly amended claim elements do not integrate the claims into a practice application, but instead provide mere instructions to apply the exception toa computer environment. See MERE 2106.05(f)(2).
Applicant further argues step 2bfor the same reasons as step32A prong 2, examiner assets the same arguments as stated above sot step 2a prong 2.
For at least the reasons stated above applicant’s arguments regarding 35 U.S.C. § 101 are not persuasive.
Double Patenting
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No 12051103. Although the claims at issue are not identical, they are not patentably distinct from each other because
Regarding claims 1, 14 and 20
a network interface configured to communicate data over a network with a user device; (See 103’ Claim 1 “A computing system comprising: a network interface configured to communicate data over a network with a user device,”
an accounts database configured to store information regarding a plurality of customer accounts associated with a plurality of customers of a provider institution; and (See 103’ Claim 1 “an accounts database configured to store information regarding a plurality of customer accounts associated with a plurality of customers of a provider institution”)
a processing circuit communicably coupled to the network interface and the accounts database, the processing circuit comprising one or more processors communicably coupled to one or more memory devices, the one or more memory devices storing instructions that, when executed, cause the processing circuit to: (See 103’ Claim 1 “an account management circuit communicably coupled to the network interface and the accounts database, the account management circuit comprising one or more processors communicably coupled to one or more memory devices, the one or more memory devices storing instructions that, when executed by the one or more processors, cause the one or more processors to:”)
generate, responsive to receiving an input from the user device via a user interface regarding establishment of a new account, a user interface prompting a user to capture a first image of an identification item of the user; (See 103’ Claim 1 “generate, responsive to receiving an input from the user device via the user interface regarding establishment of a new account, an interface overlay on the user interface, the interface overlay comprising an outline for the identification item;”)
and a graphic on the user interface based on the identification item; (See 103’ Claim 1 “determine that the identification item is contained within the outline of the interface overlay;”
automatically capture the first image of the identification item responsive to a position of the identification item in relation to the graphic; (See 103’ Claim 1 “actuate, automatically based on the determination that the identification item is contained within the outline, a camera of the user device to capture the first image of the identification item of the user;”
prompt the user, via the user interface, to capture a second image of the user; (See 103’ Claim 1 “prompt the user, via the user interface, to capture a second image of the user using the user device;”)
identify an issuing entity of the identification item based on the first image; (See 103’ Claim 1 “identify an issuing entity of the identification item based on the first image;”)
compare a template signature of an identification template associated with the issuing entity with an identification item signature of the identification item from the first image; (See 103’ Claim 1 “compare a template signature of the identification template with an identification item signature of the identification item from the first image;”)
verify an authenticity of the identification item based on the identification item signature matching the template signature within a threshold tolerance; (See 103’ Claim 1 “verify an authenticity of the identification item based on the identification item signature matching the template signature”)
extract, via an image extraction logic responsive to verifying the authenticity of the identification item, user information from the first image of the verified identification item; (See 103’ Claim 1 “extract, via an image extraction logic responsive to verifying the authenticity of the identification item, user information from the first image of the verified identification item”)
transmit a validation request to a validation computing system, the validation request comprising the user information; (See 103’ Claim 1 “transmit a validation request to a second data repository, the validation request comprising the user information”)
receive, from the validation computing system, a validity notification verifying the user information; (See 103’ Claim 1 “receive, from the second data repository, a validity notification verifying the user information”)
verify an identity of the user based on a comparison of the first image with the second image of the user; and (See 103’ Claim 1 “verify an identity of the user based on a comparison of the first image with the second image of the user”)
create, responsive to the verification of the identity of the user and the user information and the authenticity of the identification item, the new account for the user. (See 103’ Claim 1 “create, responsive to the verification of the identity of the user and the user information and the authenticity of the identification item, the new account for the user”)
Regarding claim 2
The computing system of claim 1, wherein the instructions, when executed, further cause the processing circuit to: prompt the user, via the user interface, to capture a third image of a payment vehicle associated with a payment account of the user; (See 103’ Claim 2 “wherein the instructions further cause the one or more processors to: prompt the user, via the user interface, to capture a third image of a payment vehicle associated with a payment account of the user;”)
extract, via the image extraction logic, information regarding the payment vehicle from the third image; and (See 103’ Claim 2 “extract, via the image extraction logic, information regarding the payment vehicle from the third image; and”)
create, responsive to the verification of the identity of the user and the user information, the new account, wherein creating the new account is based on the extracted user information and the extracted information regarding the payment vehicle. (See 103’ Claim 2 “create, responsive to the verification of the identity of the user and the user information, the new account, wherein creating the new account is based on the extracted user information and the extracted information regarding the payment vehicle”)
Regarding claim 3
The computing system of claim 2, wherein the user device is a mobile device, and wherein the instructions, when executed, further cause the processing circuit to verify the identity of the user based on: receipt of a verification message from the issuing entity that issued the identification item; and (See 103’ Claim 3 “wherein the user device is a mobile device, and wherein the account management circuit is further configured to verify the identity of the user based on: receipt of a verification message from the issuing entity that issued the identification item; and”)
receipt of a mobile device verification message from a third party external service provider identity verification computing system associated with a third party external service provider, wherein the third party external service provider is a provider of a cellular service on the mobile device, and wherein the mobile device verification message indicates that the user is an authorized user of the user device. (See 103’ Claim 3 “receipt of a mobile device verification message from a third party external service provider identity verification computing system associated with a third party external service provider, wherein the third party external service provider is a provider of a cellular service on the mobile device, and wherein the mobile device verification message indicates that the user is an authorized user of the user device. ”)
Regarding claim 4
The computing system of claim 3, wherein the instructions, when executed, further cause the processing circuit to: identify, based on the user information extracted from the first image, additional information to be obtained from the user to establish the new account; (See 103’ Claim 4 “identify, based on the user information extracted from the first image, additional information to be obtained from the user to establish the new account;”)
provide a registration prompt to the user via the user device instructing the user to input the additional information; and (See 103’ Claim 4 “provide a registration prompt to the user via the user device instructing the user to input the additional information;”)
receive, over the network via the network interface, the additional information from the user device. (See 103’ Claim 4 “receive, over the network via the network interface, the additional information from the user device.”)
Regarding claims 5 and 16
The computing system of claim 4, wherein the identification item comprises a driver’s license, and wherein the issuing entity of the driver’s license comprises a government entity. (See 103’ Claim 5 “The computing system of claim 4, wherein the identification item comprises a driver's license, and wherein the issuing entity of the driver's license comprises a government entity..”)
Regarding claims 6 and 17
The computing system of claim 5, wherein the instructions, when executed, further cause the processing circuit to: transmit, over the network via the network interface, an information request to a data repository associated with the government entity, the information request requesting at least a portion of the extracted user information; (See 103’ Claim 6 “The computing system of claim 5, wherein the instructions further cause the one or more processors to: transmit, over the network via the network interface, an information request to the first data repository associated with the government entity, the information request requesting at least a portion of the extracted user information;)
receive, over the network via the network interface, a portion of the requested information from the data repository; and (See 103’ Claim 5 “receive, over the network via the network interface, a portion of the requested information from the first data repository”)
verify an authenticity of the driver’s license by comparing the extracted user information to the information received from the data repository, wherein the additional information is requested from the user responsive to the verification of the authenticity of the driver’s license. (See 103’ Claim 6 “verify an authenticity of the driver's license by comparing the extracted user information to the information received from the first data repository, wherein the additional information is requested from the user responsive to the verification of the authenticity of the driver's license.”)
Regarding claims 7 and 18
The computing system of claim 4, wherein the additional information includes a user phone number associated with the user device, and wherein the instructions, when executed, further cause the processing circuit to: transmit, by the network interface over the network, a mobile device verification request to the third party external service provider identity verification computing system including the user phone number. (See 103’ Claim 7 “wherein the additional information includes a user phone number associated with the user device, and wherein the instructions further cause the one or more processors to: transmit, by the network interface over the network, a mobile device verification request to the third party external service provider identity verification computing system including the user phone number.”)
Regarding claims 8
wherein the instructions, when executed, further cause the processing circuit to cause the user device to navigate to a webpage in response to receiving the input regarding establishing the new account, the webpage configured to facilitate the capture of the first image and the second image. (See 103’ Claim 8 “wherein the instructions further cause the one or more processors to cause the user device to navigate to a webpage in response to receiving the input regarding establishing the new account, the webpage configured to facilitate the capture of the first image and the second image.”)
Regarding claims 9
wherein the second image comprises a video captured by the user, wherein the webpage is configured to instruct the user to perform an action while capturing the video, and wherein verifying the identity of the user includes determining, by comparing successive frames of the video, that the user performed the action. (See 103’ Claim 9 “wherein the second image comprises a video captured by the user, wherein the webpage is configured to instruct the user to perform an action while capturing the video, and wherein verifying the identity of the user includes determining, by comparing successive frames of the video, that the user performed the action.”)
Regarding claims 10
wherein the action comprises at least one of blinking, smiling, opening a user’s mouth, or turning a user’s head, and wherein the action is part of a movement pattern. (See 103’ Claim 10 “wherein the action comprises at least one of blinking, smiling, opening a user's mouth, or turning a user's head, and wherein the action is part of a movement pattern.”)
Regarding claims 11
wherein the new account comprises at least one of a savings account, a checking account, or a line of credit. (See 103’ Claim 11 “wherein the new account comprises at least one of a savings account, a checking account, or a line of credit.”)
Regarding claims 12 and 19
wherein the template includes a signature associated with an authentic identification item issued by the issuing entity, wherein the processing circuit is configured to determine whether the signature associated with the authentic identification item is present in the first image of the identification item to verify the authenticity of the identification item. (See 103’ Claim 19 “wherein the template signature includes a signature associated with an authentic identification item issued by the issuing entity, wherein the account management circuit is configured to determine whether the signature associated with the authentic identification item is present in the first image of the identification item to verify the authenticity of the identification item”)
Regarding claims 13
wherein the second image comprises a video captured by the user, and wherein verifying the identity of the user further includes selecting a frame of the video to compare with the first image. (See 103’ Claim 19 “wherein the second image comprises a video captured by the user, and wherein verifying the identity of the user further includes selecting a frame of the video to compare with the first image.”)
Regarding claims 15
identifying, by the computing system, based on the user information extracted from the first image, additional information to obtain from the user to create the new account; (See 103’ Claim 16 “identifying, by the computing system, based on the user information extracted from the image of the verified identification item, additional information to obtain from the user to create the new account;”)
transmitting, by the computing system, a registration prompt to the user device, the registration prompt instructing the user to input the additional information; and (See 103’ Claim 16 “transmitting, by the computing system, a registration prompt to the user device, the registration prompt instructing the user to input the additional information.”)
receiving, by the computing system, the additional information from the user device. (See 103’ Claim 16 “receiving, by the computing system, the additional information from the user device.”)
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
In the instant case, claims 1, 14 and 20 are directed to a method, system, and non-transitory computer-readable recording medium.
Claim 14 recites “account creation” which is a grouped under “Certain methods of organizing human activity — fundamental economic practices” in prong one of step 2A (MPEP 2106.04(a)). Claim 14 recites
generating, by a computing system, responsive to receiving an input from a user device via a user interface regarding establishment of a new account, a user interface prompting a user to capture a first image of an identification item of the user and a graphic on the user interface based on the identification item;
automatically capture the first image of the identification item responsive to a position of the identification item in relation to the graphic;
prompting the user, via the user interface, to capture a second image of the user;
identifying, by the computing system, an issuing entity of the identification item based on the first image of the identification item;
comparing, by the computing system, a template signature of an identification template associated with the issuing entity with an identification item signature of the identification item from the first image;
verifying, by the computing system, an authenticity of the identification item based on the identification item signature matching the template signature within a threshold tolerance;
extracting, by the computing system via image extraction logic responsive to verifying the authenticity of the identification item, user information from the first image;
transmitting, by the computing system, a validation request to a validation computing system, the validation request comprising the user information;
receiving, from the validation computing system, a validity notification verifying the user information;
verifying, by the computing system, an identity of the user based on comparing the first image with the second image; and
creating, responsive to verifying the identity of the user and the user information and authenticating the identification item, by the computing system, the new account for the user.
The additional elements of claim 14 such as “…by a computing system… user interface… and a graphic on the user interface based on the identification item; ”, “automatically capture the first image of the identification item responsive to a position of the identification item in relation to the graphic;”, “comparing, by the computing system, a template signature of an identification template associated with the issuing entity with an identification item signature of the identification item from the first image”, “extracting, by the computing system via image extraction logic responsive to verifying the authenticity of the identification item, user information from the first image”, “transmitting, by the computing system, a validation request to a validation computing system, the validation request comprising the user information”, “receiving, from the validation computing system, a validity notification verifying the user information”, “verifying, by the computing system, an identity of the user based on comparing the first image with the second image” represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use. And, as the additional element does no more than provide a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use, it does computer functionality or improve another technology or technical field.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration into a practical application, the additional elements amount to no more than mere instructions to apply the abstract idea of using generic computer components. The claim elements when considered separately and in an ordered combination, do not add significantly more than implementing the abstract idea of account creation.
Hence, claims 1, 14 and 20 are not patent eligible.
Claim 2 recites “prompt the user, …e, to capture a third image of a payment vehicle associated with a payment account of the user”, “create, responsive to the verification of the identity of the user and the user information, the new account, wherein creating the new account is based on the extracted user information and the extracted information regarding the payment vehicle.” However, this does no more than describe the abstract idea. The additional elements of “…via the user interface…extract, via the image extraction logic, information regarding the payment vehicle from the third image” does no more than use a computer as a tool to perform an abstract idea and do no more than generally link the abstract idea to a particular field of use. Therefore, as it is no more than apply it does not improve the functioning of a computer, or improve other technology or technical field.
Claim 3 recites “verify the identity of the user based on: receipt of a verification message from the issuing entity that issued the identification item”, “receipt of a … verification message from a third party external service provider identity … associated with a third party external service provider, wherein the third party external service provider is a provider of a …, and wherein … indicates that the user is an authorized user ….” However, this does no more than describe the abstract idea. The additional elements of “…mobile device… verification computing system… cellular service on the mobile device” does no more than use a computer as a tool to perform an abstract idea and do no more than generally link the abstract idea to a particular field of use. Therefore, as it is no more than apply it does not improve the functioning of a computer, or improve other technology or technical field.
Claim 4 recites “identify, based on the user information extracted from the”, “first image, additional information to be obtained from the user to establish the new account provide a registration prompt to the user … instructing the user to input the additional information; and receive, … the additional information from the ….” However, this does no more than describe the abstract idea. The additional elements of “…via the user device… over the network via the network interface… user device” does no more than use a computer as a tool to perform an abstract idea and do no more than generally link the abstract idea to a particular field of use. Therefore, as it is no more than apply it does not improve the functioning of a computer, or improve other technology or technical field.
Claims 5 and 16 recites “wherein the identification item comprises a driver’s license, and wherein the issuing entity of the driver’s license comprises a government entity.” However, this does no more than describe the abstract idea.
Claims 6 and 17 recites “transmit, …, an information request to a data repository associated with the government entity, the information request requesting at least a portion of the extracted user information”, “ receive, …, a portion of the requested information from the data repository”, “verify an authenticity of the driver’s license by comparing the extracted user information to the information received from the data repository, wherein the additional information is requested from the user responsive to the verification of the authenticity of the driver’s license.” However, this does no more than describe the abstract idea. The additional elements of “…over the network via the network interface…” does no more than use a computer as a tool to perform an abstract idea and do no more than generally link the abstract idea to a particular field of use. Therefore, as it is no more than apply it does not improve the functioning of a computer, or improve other technology or technical field.
Claims 7 and 18 recites “includes a user phone number associated with …, and wherein the instructions, when executed, further cause …: transmit, by the network interface over the network, … verification request … including the user phone number.” However, this does no more than describe the abstract idea. The additional elements of “…the user device… the processing circuit to… a mobile device… to the third party external service provider identity verification computing system” does no more than use a computer as a tool to perform an abstract idea and do no more than generally link the abstract idea to a particular field of use. Therefore, as it is no more than apply it does not improve the functioning of a computer, or improve other technology or technical field.
Claim 8 recites “wherein the instructions, when executed, … to navigate to a webpage in response to receiving the input regarding establishing the new account, the webpage configured to facilitate the capture of the first image and the second image.” However, this does no more than describe the abstract idea. The additional elements of “…further cause the processing circuit to cause the user device…” does no more than use a computer as a tool to perform an abstract idea and do no more than generally link the abstract idea to a particular field of use. Therefore, as it is no more than apply it does not improve the functioning of a computer, or improve other technology or technical field.
Claim 9 recites “wherein the second image comprises a video captured by the user, wherein the webpage is configured to instruct the user to perform an action while capturing the video, and wherein verifying the identity of the user includes determining, by comparing successive frames of the video, that the user performed the action.” However, this does no more than describe the abstract idea.
Claim 10 recites “wherein the action comprises at least one of blinking, smiling, opening a user’s mouth, or turning a user’s head, and wherein the action is part of a movement pattern.” However, this does no more than describe the abstract idea.
Claim 11 recites “wherein the new account comprises at least one of a savings account, a checking account, or a line of credit.” However, this does no more than describe the abstract idea.
Claims 12 and 19 recites “wherein the template includes a signature associated with an authentic identification item issued by the issuing entity, … is configured to determine whether the signature associated with the authentic identification item is present in the first image of the identification item to verify the authenticity of the identification item.” However, this does no more than describe the abstract idea. The additional elements of “…wherein the processing circuit…” does no more than use a computer as a tool to perform an abstract idea and do no more than generally link the abstract idea to a particular field of use. Therefore, as it is no more than apply it does not improve the functioning of a computer, or improve other technology or technical field.
Claim 13 recites “wherein the second image comprises a video captured by the user, and wherein verifying the identity of the user further includes selecting a frame of the video to compare with the first image.” However, this does no more than describe the abstract idea.
Claim 15 recites “identifying, …, based on the user information extracted from the first image, additional information to obtain from the user to create the new account”, “transmitting, …, a registration prompt to …, the registration prompt instructing the user to input the additional information” However, this does no more than describe the abstract idea. The additional elements of “…by the computing system… the user device … receiving, by the computing system, the additional information from the user device.” does no more than use a computer as a tool to perform an abstract idea and do no more than generally link the abstract idea to a particular field of use. Therefore, as it is no more than apply it does not improve the functioning of a computer, or improve other technology or technical field.
The claims as a whole do not amount to significantly more than the abstract idea itself. This is because the claims do not affect an improvement to another technology or technical field, the claims do not amount to an improvement to the functioning of a computer system itself, and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
Prior Art of Record Not Currently Relied Upon
Cunningham (US 2017/0004577 A1) Teaches: method of enabling account opening.
Ekpenyong (US 2018/0211243 A1) Teaches: Document image capture and processing.
Conclusion
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 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.
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/GREGORY M JAMES/Examiner, Art Unit 3692
/RYAN D DONLON/Supervisory Patent Examiner, Art Unit 3692 March 26, 2026