CTFR 18/794,210 CTFR 81148 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Rejections - 35 USC §101 07-04-01 AIA 07-04 1. 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. 2. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Subject Matter Eligibility Standard 3. The examiner contends that, under the judicial exceptions enumerated in the MPEP § 2106, to determine the patent-eligibility of an application, a two- part analysis has to be conducted. Part 1: it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. See MPEP 2106 .03. Part 2A: Prong 1: (1) Determine if the claims are directed to an abstract idea or one of the judicial exceptions. Examples of abstract ideas referenced in Alice Corp. include: 1. Certain method of organizing human activity such as Fundamental Economic Practices, Commercial and Legal Interactions, or Managing Personal Behavior or Relationships or Interactions Between People. 2. A mental process. 3. Mathematical relationships/formulas. Part 2A: Prong 2: determine if the claim as a whole integrates the judicial exception into a practical application. Part 2B: determine if the claim provides an inventive concept. Analysis 4. Under Step 1 of the analysis, it is found that the claim indeed recites a series of steps and therefore, is a process - one of the statutory categories. Under Step 2A (Prong 1), using claim 1 as the representative claim, it is determined that apart from generic hardware and extra-solution activity discussed in Step 2A, Prong 2 below, the claim as a whole recites a method of organizing human activity. For instance, the claim language “providing…a bill detail for a bank-as-biller account at a second entity….; establishing a connection…using the open banking identifier; receiving…a request to view transaction detail history for the bank-as-biller account; receiving…the transaction detail history; and generating…a transaction history view…using the received transaction detail history” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. Thus, the claim recites a judicial exception, i.e., an abstract idea. Under Step 2A (Prong 2), the examiner contends that the claim recites a combination of additional elements including “calling…a first open banking API of the plurality of open banking APIs over the established connection between the financial institution application server associated with the first entity and the bank-as-biller account at the second entity to obtain the transaction detail history for the bank-as-biller account at the second entity over the established connection with the bank-as-biller account to obtain the transaction detail history for the bank- as-biller account at the second entity.” This additional element, considered in the context of claim 1 as a whole, does not integrate the abstract idea into a practical application because it merely recites an insignificant extra-solution activity over a generic computer system. In other words, the application programming interfaces (APIs) are merely being called (i.e. “calling…a first open banking API of the plurality of open banking APIs over the established connection between the financial institution application server associated with the first entity and the bank-as-biller account at the second entity…”) for a routine data gathering step (i.e. obtaining the transaction detail history for the bank-as-biller account at the second entity over the established connection with the bank-as-biller account to obtain the transaction detail history for the bank-as-biller account at the second entity), where data gathering steps are considered to be insignificant extra-solution activities-- See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Also, the recited graphical user interface, financial institution application server and the application programming interface, with their already available basic functions, are merely being applied to the abstract idea and being used as tools in executing the claimed process. Lastly, the limitation “wherein the bank-as-biller account has a biller identifier for electronic payment to the bank-as-biller account and an open banking identifier associated with the bank-as-biller account” is recited to further narrow the scope of the abstract idea. Thus, it is determined that claim 1 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception. Under Step 2B, it is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 1 are the generically recited “financial institution application server; graphical user interface and application programming interface (API).” The specification does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional hardware components or systems being used in their ordinary manner. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself. The examiner contends that the ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188— 89 (1981).” A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.” Specifically, an improvement to an abstract idea cannot be a basis for determining that the claim recites significantly more than an abstract idea. Furthermore, relying on a “processor” to “perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OJP Techs., Inc. v. Amazon.com, Inc., 7788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, the examiner concludes that the claim does not recite additional elements that amount to significantly more than the judicial exception within the meaning of the 2019 Guidance. Note: The analysis above applies to all statutory categories of invention. As such, the independent claims otherwise styled as a computer-readable medium encoded to perform specific tasks, machine or manufacture, for example, would be subject to the same analysis. Furthermore, the limitations in the dependent claims are thus subject to the same analysis as in claim 1 and are rejected using the same rationale as in claim 1 above. More specifically, dependent claims 2, 5-6, 11-14, 16, 19-20 do not recite additional elements but merely further narrow the scope of the abstract idea. However, dependent claim 3, 7, 17 recites additional elements, but these additional elements comprise the analyses of data, which is nothing but the automation of mental tasks. See Benson, Bancorp and Cyberphone. Also s ee Electric Power, 830 F.3d at 1354 (“[W]e have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes”). Lastly, dependent claims 4 and 18 are directed merely to data gathering-- See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – 07-08-aia AIA (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. 07-15 AIA Claim (s) 1-5, 7-12 and 14-19 are rejected under 35 U.S.C. 102 ( a)(1 ) as being anticipated by Dhar et al (Dhar hereinafter, US PAT: 2021/0406847) . Re claim 1. Dhar discloses a method comprising: providing, by a financial institution application server associated with a first entity (i.e. service provider server, see paras 0047 and 0070), a bill detail for a bank-as-biller account at a second entity within a graphical user interface of a banking application associated with a first entity (i.e. “mobile application,” see para 0020), wherein the bank-as-biller account has a biller identifier for electronic payment to the bank-as-biller account and an open banking identifier conforming to an open-banking standard through which the first and second entities securely communicate financial transaction data via a plurality of open banking programming interfaces (APIs) (see paras 0016-0017, 0047 and 0070); establishing a connection between the financial institution application server associated with the first entity and the bank-as-biller account at the second entity using the open banking identifier (see paras 0031); receiving, via the graphical user interface of the banking application associated with the first entity, a request to view transaction detail history for the bank-as-biller account at the second entity (see paras 0010, 0023); and in response to the request to view transaction detail history at the graphical user interface of the banking associated with the first entity for the bank-as-biller account at the second entity; calling, by the financial institution application server associated with the first entity, a first open banking API of the plurality of open banking APIs over the established connection between the financial institution application server associated with the first entity and the with the bank-as-biller account at the second entity to obtain the transaction detail history for the bank-as-biller account at the second entity (see paras 0030, 0040, 0047-0048); receiving, by the financial institution application server associated with the first entity, the transaction detail history from the bank-as-biller account at the second entity; and generating, by the financial institution application server associated with the first entity, a transaction history view at the graphical user interface of the banking application associated with the first entity using the received transaction detail history (see paras 0015) (see paras 0016-0020). Re claim 2. Dhar discloses the method of claim 1, wherein the first open banking API gets a specified customer’s account transactions associated with a specified bank-as-biller account at the second entity identified by the open banking identifier (see paras 0015). Re claim 3. Dhar discloses the method of claim 1, further comprising: receiving, by a financial institution application server associated with a first entity, a payment request to effect payment for the bank-as-biller account at the second entity; performing, by a financial institution application server associated with a first entity, a first electronic payment using the biller identifier associated with the bank-as-biller account at the second entity to effect the payment for the bank-as-biller account at the second entity; confirming, by a financial institution application server associated with a first entity, payment to the bank-as-biller account at the second entity is reflected in a balance for the bank-as-biller account using the established connection between the financial institution application server and the bank-as-biller account at the second entity; and generating by a financial institution application server associated with a first entity, a confirmation transaction view for displaying updated account information of the bank-as-biller account at the second entity at the graphical user interface of the banking application associated with the first entity that reflects an application of the payment to the bank-as-biller account at the second entity by the bank-as-biller account at the second entity (see paras 0015-0018, 0020, see 0047 and 0070). Re claim 4. Dhar discloses the method of claim 3, wherein confirming the payment to the bank-as-biller account is reflected in the balance for the bank-as-biller account at the second entity comprises: calling by a financial institution application server associated with a first entity a second open banking API of the plurality of open banking API of the plurality of open banking APIs over the established connection between the financial institution application server associated with the first entity the bank-as-biller account to obtain updated information including a balance due and an account balance (see paras 0015, 0020). Re claim 5. Dhar discloses the method of claim 4, wherein the second open banking API gets updated customer account information comprising the updated information of at least the balance due and the account balance (see 0056, 0068). Re claim 7. Dhar discloses the method of claim 1, where establishing the connection between the financial institution application server associated with the first entity and the bank-as-biller account using the open banking identifier comprises: performing authentication, registration, and connection with a financial institution of the bank-as-biller account at the second entity using one or more of the plurality of open banking APIs (see paras 0011, 0013, 0028, 0047). Re claim 8. Claim 8 recites similar limitations to claim 1, and thus rejected using the same art and rationale as in claim 1, above. Re claim 9. Claim 9 recites similar limitations to claim 2, and thus rejected using the same art and rationale as in claim 2, above. Re claim 10. Claim 10 recites similar limitations to claim 3, and thus rejected using the same art and rationale as in claim 3, above. Re claim 11. Claim 11 recites similar limitations to claim 4, and thus rejected using the same art and rationale as in claim 4, above. Re claim 12. Claim 12 recites similar limitations to claim 5, and thus rejected using the same art and rationale as in claim 5, above. Re claim 14. Claim 14 recites similar limitations to claim 7, and thus rejected using the same art and rationale as in claim 7, above. Re claim 15. Claim 15 recites similar limitations to claim 1, and thus rejected using the same art and rationale as in claim 1, above. Re claim 16. Claim 16 recites similar limitations to claim 2, and thus rejected using the same art and rationale as in claim 2, above. Re claim 17. Claim 17 recites similar limitations to claim 3, and thus rejected using the same art and rationale as in claim 3, above. Re claim 18. Claim 18 recites similar limitations to claim 4, and thus rejected using the same art and rationale as in claim 4, above. Re claim 19. Claim 19 recites similar limitations to claim 5, and thus rejected using the same art and rationale as in claim 5, above . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 6, 13 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Dhar . Re claims 6, 13 and 20. Dhar does not explicitly disclose the method, nor the system wherein the instruction to call the second open banking API is performed once each day. However, official notice is taken that the system can be instructed to call open banking API at any time of the day. Thus it would have been obvious to one of ordinary skill in the art to instruct the system of Dhar to call the banking API once daily in order to process the payment transaction . Response to Arguments 07-37 AIA Applicant's arguments filed on 02/02/2026 have been fully considered but they are not persuasive. In response to applicant’s argument, citing DDR and Finjan, that the claims are directed to a practical application that provides a technical solution (e.g., “establishing a connection between the financial institution application server associated with the first entity and the bank-as-biller account at the second entity using the open banking identifier" and "calling, by the financial institution application server associated with the first entity, a first open banking API of the plurality of open banking APIs over the established connection between the financial institution application server associated with the first entity and the bank-as-biller account at the second entity to obtain the transaction detail history for the bank-as-biller account at the second entity") to a technical problem, the examiner disagrees. The examiner contends that there is a clear difference between the improvements in computer functionality, on one hand, and the use of existing computer as tools to perform a particular task, on the other; the solution addressed by the applicant’s claims is a business problem and not a technical problem. Rather than addressing a problem unique to the technology in which the solution is implemented, applicant’s claim merely automates, using generic computer technology, a business process in which profitability is increased by providing an online bill-pay opportunity. Thus, it is determined that claim 1 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception. The alleged advantages and improvements that applicant touts do not concern an improvement to computer capabilities but instead relate to an alleged improvement in computer- based process; that is, a process in which a computer is used as a tool in its ordinary capacity to receive, process, and output data. The examiner further contends that while the patent claims in DDR Holdings, as described by the Court, involve conventional computers and the Internet, the claims addressed the problem of retaining website visitors who, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be instantly transported away from a host’s website after “clicking” on an advertisement and activating a hyperlink. DDR Holdings , 773 F.3d at 1257. “[T]he claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” However, this is just not the case with the claimed subject matter. Further still, it is held that the claims in Finjan are directed to a behavior-based virus scanning which employs a new kind of file that enables a computer security system to do things it could not do before including “accumulating and utilizing newly available, behavior-based information about potential threats.” 2018 WL 341882 at *4 (Fed. Cir. Jan. 10, 2018). The claimed behavior-based scans, in contrast to prior art systems which searched for matching code, enabled more “nuanced virus filtering” in analyzing whether “a downloadable’s code . . . performs potentially dangerous or unwanted operations.” Id. at *3. Finjan’s claims, compared to the present claims, constitute non-abstract improvements in functionality, rather than the abstract idea of computer security. The claims in Finjan are not similar to the claims in the pending application. In response to applicant’s argument that the additional elements as currently amended integrate the judicial exception into a practical application, the examiner disagrees. The examiner contends that the claim recites a combination of additional elements including “calling…a first open banking API of the plurality of open banking APIs over the established connection between the financial institution application server associated with the first entity and the bank-as-biller account at the second entity to obtain the transaction detail history for the bank-as-biller account at the second entity over the established connection with the bank-as-biller account to obtain the transaction detail history for the bank-as-biller account at the second entity.” This additional element, considered in the context of claim 1 as a whole, does not integrate the abstract idea into a practical application because it merely recites an insignificant extra-solution activity over a generic computer system. In other words, the application programming interfaces (APIs) are merely being called (i.e. “calling…a first open banking API of the plurality of open banking APIs over the established connection between the financial institution application server associated with the first entity and the bank-as-biller account at the second entity…”) for a routine data gathering step (i.e. obtaining the transaction detail history for the bank-as-biller account at the second entity over the established connection with the bank-as-biller account to obtain the transaction detail history for the bank-as-biller account at the second entity), where data gathering steps are considered to be insignificant extra-solution activities. Also, the recited graphical user interface, financial institution application server and the application programming interface, with their already available basic functions, are merely being applied to the abstract idea and being used as tools in executing the claimed process. Lastly, the limitation “wherein the bank-as-biller account has a biller identifier for electronic payment to the bank-as-biller account and an open banking identifier associated with the bank-as-biller account” is recited to further narrow the scope of the abstract idea. Thus, it is determined that claim 1 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception. In response to applicant’s argument that the primary art of record, Dhar, does not describe a banking application, the examiner disagrees. Dhar discloses a mobile application and service provider application (see paras 0012, 0020 0046-0047), which reads on banking application. Conclusion 07-39 AIA 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 OJO O OYEBISI whose telephone number is (571)272-8298. The examiner can normally be reached on Monday-Friday, 9am-7pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine 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. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. 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If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /OJO O OYEBISI/Primary Examiner, Art Unit 3695 Application/Control Number: 18/794,210 Page 2 Art Unit: 3695 Application/Control Number: 18/794,210 Page 3 Art Unit: 3695 Application/Control Number: 18/794,210 Page 4 Art Unit: 3695 Application/Control Number: 18/794,210 Page 5 Art Unit: 3695 Application/Control Number: 18/794,210 Page 6 Art Unit: 3695 Application/Control Number: 18/794,210 Page 7 Art Unit: 3695 Application/Control Number: 18/794,210 Page 8 Art Unit: 3695 Application/Control Number: 18/794,210 Page 9 Art Unit: 3695 Application/Control Number: 18/794,210 Page 10 Art Unit: 3695 Application/Control Number: 18/794,210 Page 11 Art Unit: 3695 Application/Control Number: 18/794,210 Page 12 Art Unit: 3695 Application/Control Number: 18/794,210 Page 13 Art Unit: 3695 Application/Control Number: 18/794,210 Page 14 Art Unit: 3695 Application/Control Number: 18/794,210 Page 15 Art Unit: 3695
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