DETAILED ACTION
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 Applicant Response filed on 11/24/2025.
Claims 1, 9 and 15 have been amended and are hereby entered.
Claims 1-20 are currently pending and have been examined.
This action is made FINAL.
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 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12079795. Although the claims at issue are not identical, they are not patentably distinct from each other, because the current application and its independent claims are more broad than US Pat. 12079795, include several of the same limitations such as receiving an API call, identifying a first API associated with the API call, routing the API call, and transmitting an API response, and it would be obvious to include “determining an authentication of an account with the second application based on information included in the API call,” since this step allows the association between the common account holder and another account.
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 (abstract idea) without significantly more.
Under the broadest reasonable interpretation, the following claim terms are presumed to have their plain meaning consistent with the specification as it would be interpreted by one of ordinary skill in the art. MPEP § 2111.
Step 1: Does the Claim Fall within a Statutory Category? (see MPEP 2106.03)
Claim 1 recites an apparatus (product), which is a statutory category of invention (Step 1: YES). Claim 9 recites a system, which is a statutory category of invention (Step 1: YES). Claim 15 recites a process, which is a statutory category of invention (Step 1: YES).
Step 2A, Prong One: Is a Judicial Exception Recited? (see MPEP 2106.04(a)). Yes.
The claims are analyzed to determine whether it is directed to a judicial exception. The following claims identify the limitations that recite additional elements in bold and the abstract idea without bold. Underlined claim limitations denote newly added claim limitations:
The claims are analyzed to determine whether it is directed to a judicial exception. Claim 1 and 15 recites an application programming interface (API) gateway, comprising: an interface configured to receive inbound API calls for a plurality of respective APIs managed by the API gateway, the plurality of respective APIs corresponding to a first application; one or more processors configured to: receive, via the interface, an API call from a server associated with a second application, the API call intended for a first API of the plurality of APIs; determine an authentication of an account with the second application based on information included in the API call, the authentication indicating that the account is associated with a common account holder corresponding to another account with the first application identify, responsive to the authentication of the account with the second application, the first target API associated with the API call; route the API call to the first target API, to execute the API call for retrieving data for providing to the server; and transmit, via the interface, an API response to the API call to the server associated with the second application. These limitations, as drafted, under its broadest reasonable interpretation, covers performance via certain methods of organizing human activity, but for the recitation of generic computer components. Under human activity, the limitations are fundamental economic practice. More specifically, under fundamental economic practice, the claims involve placing trades (Trading Technologies Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1092, 2019 USPQ2d 138290 (Fed. Cir. 2019)). The claims also involve commercial interactions, such as sales activities and business relations, as well as managing interactions between people, such as following instructions. Accordingly, the claim recites an abstract idea. The mere recitation of generic computer components in the claims do not necessarily preclude that claim from reciting an abstract idea. (Step 2A-Prong 1: Yes. The claims recite an abstract idea).
Step 2A, Prong Two: Is the Abstract Idea Integrated into a Practical Application? (see MPEP 2106.04(d)). No.
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of an application programming interface gateway, processors, server, first and second application, an interface. The additional elements of an application programming interface gateway, processors, server, first and second application, are just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)). The additional elements of an interface are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of Graphical User Interfaces (MPEP 2106.05(h)). The computer components are recited at such a high-level of generality (i.e. as a generic computer components) such that it amounts to no more than mere instructions to apply the exception using generic computer components, and the claims fail to recite technological detail as to how the step of the judicial exception is accomplished. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. (Step 2A-Prong 2: NO. The judicial exception is not integrated into a practical application).
Step 2B: Does the Claim Provide an Inventive Concept? (see MPEP 2106.05). No.
The claims are next analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). Next, the claims are analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed with respect to Step 2A2 above, the additional elements of (application programming interface gateway, processors, server, first and second application, an interface) in the claims amount to no more than mere instructions to apply the exception using a generic computer component and generally linking the use of GUI’s to judicial exception. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer component and generally linking the use of GUI’s to judicial exception cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claims do not amount to significantly more than the recited abstract idea (Step 2B: NO; The claims do not provide significantly more, and are not patent eligible).
Claim 2 recites wherein the API call includes information corresponding to authentication of the application executing on the server, and wherein the application is authenticated for accessing data via the API gateway based on the information. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of the API gateway are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 3 recites wherein the server comprises a first server, wherein a second application hosted on a second server is associated with the API gateway. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of second application, server, and API gateway are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 4 recites wherein the one or more processors are further configured to establish, responsive to receiving the API call and authentication of the information, a connection between the first application and the second application. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of the API gateway, processors, first and second application are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 5 recites wherein the one or more processors establish the connection between the first application and the second application is responsive to a common account holder registering a first account for the first application with a second account for the second application. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of the API gateway, processors, first and second application are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 6 recites wherein the first application comprises at least one of an enterprise resource planning (ERP) application or a customer relationship management (CRM) application and wherein the second application comprises a financial institution application. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of the API gateway, first application, ERP application, CRM application, second application, and financial institution application are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 7 recites wherein the one or more processors are further configured to: receive, via the interface, a second API call from a third server associated with a third application, the second API call intended for a second target API of the plurality of APIs; identify the second target API associated with the API call; route the second API call to the second target API, to execute the second API call for retrieving second data for providing to the third server; and transmit, via the interface, a second API response to the second API call to the third server associated with the third application. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of the system, processors, third server, and third application are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra. Further, these limitations are also part of the abstract idea identified in claim 1, and the additional elements of interface are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of GUI’s (MPEP 2106.05(h)), and the claim fails to recite technological detail as to how the step of the judicial exception is accomplished.
Clam 8 recites wherein the API call comprises at least one of an account aggregation API call, an account balance API call, a transaction detail API call, an account information API call, a validation API call, a lending API call, a foreign exchange API call, a payment initiation API call, or a confirmation of funds API call. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of the API gateway are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Step 2A, Prong One: Is a Judicial Exception Recited? (see MPEP 2106.04(a)). Yes.
The claims are analyzed to determine whether it is directed to a judicial exception. The following claims identify the limitations that recite additional elements in bold and the abstract idea without bold. Underlined claim limitations denote newly added claim limitations:
Claim 9 recites a system comprising: a first server hosting a first application; an interface configured to receive inbound API calls for a plurality of respective APIs managed by an API gateway associated with the first server, the plurality of respective APIs corresponding to a first application; one or more processors configured to: receive, via the interface, an API call from a second server associated with a second application, the API call intended for a first target API of the plurality of APIs; determine an authentication of an account with the second application based on information included in the API call, the authentication indicating that the account is associated with a common account holder corresponding to another account with the first application; identify, responsive to the authentication of the account with the second application, the first target API associated with the API call; route the API call to the first target API, to execute the API call for retrieving data for providing to the second server; and transmit, via the interface, an API response to the API call to the second server associated with the second application. These limitations, as drafted, under its broadest reasonable interpretation, covers performance via certain methods of organizing human activity, but for the recitation of generic computer components. Under human activity, the limitations are fundamental economic practice. More specifically, under fundamental economic practice, the claims involve placing trades (Trading Technologies Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1092, 2019 USPQ2d 138290 (Fed. Cir. 2019)). The claims also involve commercial interactions, such as sales activities and business relations, as well as managing interactions between people, such as following instructions. Accordingly, the claim recites an abstract idea. The mere recitation of generic computer components in the claims do not necessarily preclude that claim from reciting an abstract idea. (Step 2A-Prong 1: Yes. The claims recite an abstract idea).
Step 2A, Prong Two: Is the Abstract Idea Integrated into a Practical Application? (see MPEP 2106.04(d)). No.
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of a system, an application programming interface gateway, processors, first server, second server, first application, second application, an interface. The additional elements of system, an application programming interface gateway, processors, first server, second server, first application, second application, are just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)). The additional elements of an interface are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of Graphical User Interfaces (MPEP 2106.05(h)). The computer components are recited at such a high-level of generality (i.e. as a generic computer components) such that it amounts to no more than mere instructions to apply the exception using generic computer components, and the claims fail to recite technological detail as to how the step of the judicial exception is accomplished. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. (Step 2A-Prong 2: NO. The judicial exception is not integrated into a practical application).
Step 2B: Does the Claim Provide an Inventive Concept? (see MPEP 2106.05). No.
The claims are next analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed with respect to Step 2A2 above, the additional elements of (an application programming interface gateway, processors, first and second server, first and second application, an interface) in the claims amount to no more than mere instructions to apply the exception using a generic computer component and generally linking the use of GUI’s to judicial exception. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer component and generally linking the use of GUI’s to judicial exception cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claims do not amount to significantly more than the recited abstract idea (Step 2B: NO; The claims do not provide significantly more, and are not patent eligible).
Claim 10 recites wherein the API call includes information corresponding to authentication of the second application executing on the second server, and wherein the second application is authenticated for accessing data via the API gateway based on the information. These limitations are also part of the abstract idea identified in claim 9, and the additional elements of the system, second server, and API gateway are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 9 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 9, supra.
Claim 11 recites wherein the one or more processors are further configured to: receive, via the interface from the second application, a request from a common account holder to register a first account for the first application with a second account for the second application; and establish, responsive to authentication of the information of the API call and receiving the request to register, a connection between the first application and the second application. These limitations are also part of the abstract idea identified in claim 9, and the additional elements of the processors, system, first and second application are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 9 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 9, supra. Further, these limitations are also part of the abstract idea identified in claim 10, and the additional elements of interface are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of GUI’s (MPEP 2106.05(h)), and the claim fails to recite technological detail as to how the step of the judicial exception is accomplished.
Claim 12 recites wherein the first application comprises at least one of an enterprise resource planning (ERP) application or a customer relationship management (CRM) application and wherein the second application comprises a financial institution application. These limitations are also part of the abstract idea identified in claim 9, and the additional elements of the system, first application, ERP application, CRM application, second application, and financial institution application are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 9 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 9, supra.
Claim 13 recites wherein the one or more processors are further configured to: receive, via the interface, a second API call from a third server associated with a third application, the second API call intended for a second target API of the plurality of APIs; identify the second target API associated with the API call; route the second API call to the second target API, to execute the second API call for retrieving second data for providing to the third server; and transmit, via the interface, a second API response to the second API call to the third server associated with the third application. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of the system, processors, third server, and third application are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 9 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 9, supra. Further, these limitations are also part of the abstract idea identified in claim 9, and the additional elements of interface are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of GUI’s (MPEP 2106.05(h)), and the claim fails to recite technological detail as to how the step of the judicial exception is accomplished.
Claim 14 recites wherein the API call comprises at least one of an account aggregation API call, an account balance API call, a transaction detail API call, an account information API call, a validation API call, a lending API call, a foreign exchange API call, a payment initiation API call, or a confirmation of funds API call. These limitations are also part of the abstract idea identified in claim 9, and the additional elements of the system are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 9 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 9, supra.
Claim 16 recites wherein the API call includes information corresponding to authentication of the application executing on the server, the method further comprising: authenticating, by the API gateway, the application for accessing data via the API gateway based on the information included in the API call. These limitations are also part of the abstract idea identified in claim 15, and the additional elements of the server, API gateway, and the application are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 15 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 15, supra.
Claim 17 recites wherein the server comprises a first server, wherein a second application hosted on a second server is associated with the API gateway, the method further comprising: establishing, by the API gateway responsive to receiving the API call and authentication of the application, a connection between the first application and the second application. These limitations are also part of the abstract idea identified in claim 15, and the additional elements of the server, first server, second application, second server, API gateway, application, first and second application are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 15 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 15, supra.
Claim 18 recites wherein establishing the connection is performed responsive to a common account holder registering a first account for the first application with a second account for the second application. These limitations are also part of the abstract idea identified in claim 15, and the additional elements of the API gateway, first application and second application are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 15 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 15, supra.
Claim 19 recites wherein the first application comprises at least one of an enterprise resource planning (ERP) application or a customer relationship management (CRM) application and wherein the second application comprises a financial institution application. These limitations are also part of the abstract idea identified in claim 15, and the additional elements of the first application, the ERP application, CRM application, the second application, and the financial institution application are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 15 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 15, supra.
Claim 20 recites further comprising: receiving, by the API gateway via the interface, a second API call from a third server associated with a third application, the second API call intended for a second target API of the plurality of APIs; identifying, by the API gateway, the second target API associated with the API call; routing, by the API gateway, the second API call to the second target API, to execute the second API call for retrieving second data for providing to the third server; and transmitting, by the API gateway via the interface, a second API response to the second API call to the third server associated with the third application. These limitations are also part of the abstract idea identified in claim 15, and the additional elements of the system, processors, third server, and third application are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 15 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra. Further, these limitations are also part of the abstract idea identified in claim 15, and the additional elements of interface are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of GUI’s (MPEP 2106.05(h)), and the claim fails to recite technological detail as to how the step of the judicial exception is accomplished.
Response to Arguments
Applicant's arguments filed 11/24/2025 have been fully considered but they are not persuasive.
Applicant argues that the currently recited claims are not a fundamental economic activity. Examiner disagrees. The claims also involve commercial interactions, such as sales activities and business relations, as well as managing interactions between people, such as following instructions.
The Supreme Court has identified a number of concepts falling within the "certain methods of organizing human activity" grouping as abstract ideas. In particular, in Alice, the Court concluded that the use of a third party to mediate settlement risk is a ‘‘fundamental economic practice’’ and thus an abstract idea. 573 U.S. at 219–20, 110 USPQ2d at 1982. In addition, the Court in Alice described the concept of risk hedging identified as an abstract idea in Bilski as ‘‘a method of organizing human activity’’. Id. Previously, in Bilski, the Court concluded that hedging is a ‘‘fundamental economic practice’’ and therefore an abstract idea. 561 U.S. at 611–612, 95 USPQ2d at 1010.
The term "certain" qualifies the "certain methods of organizing human activity" grouping as a reminder of several important points. First, not all methods of organizing human activity are abstract ideas (e.g., "a defined set of steps for combining particular ingredients to create a drug formulation" is not a certain "method of organizing human activity"), In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160-61, 129 USPQ2d 1008, 1011 (Fed. Cir. 2018). Second, this grouping is limited to activity that falls within the enumerated sub-groupings of fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior and relationships or interactions between people, and is not to be expanded beyond these enumerated sub-groupings except in rare circumstances as explained in MPEP 2106.04(a)(3). Finally, the sub-groupings encompass both activity of a single person (for example, a person following a set of instructions or a person signing a contract online) and activity that involves multiple people (such as a commercial interaction), and thus, certain activity between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within the "certain methods of organizing human activity" grouping. It is noted that the number of people involved in the activity is not dispositive as to whether a claim limitation falls within this grouping. Instead, the determination should be based on whether the activity itself falls within one of the sub-groupings.
The courts have used the phrases "fundamental economic practices" or "fundamental economic principles" to describe concepts relating to the economy and commerce. Fundamental economic principles or practices include hedging, insurance, and mitigating risks. The term "fundamental" is not used in the sense of necessarily being "old" or "well-known." See, e.g., OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1364, 115 U.S.P.Q.2d 1090, 1092 (Fed Cir. 2015) (a new method of price optimization was found to be a fundamental economic concept); In re Smith, 815 F.3d 816, 818-19, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016) (describing a new set of rules for conducting a wagering game as a "fundamental economic practice"); In re Greenstein, 774 Fed. Appx. 661, 664, 2019 USPQ2d 212400 (Fed Cir. 2019) (non-precedential) (claims to a new method of allocating returns to different investors in an investment fund was a fundamental economic concept). However, being old or well-known may indicate that the practice is fundamental. See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 219-20, 110 USPQ2d 1981-82 (2014) (describing the concept of intermediated settlement, like the risk hedging in Bilski, to be a "‘fundamental economic practice long prevalent in our system of commerce’" and also as "a building block of the modern economy") (citation omitted); Bilski v. Kappos, 561 U.S. 593, 611, 95 USPQ2d 1001, 1010 (2010) (claims to the concept of hedging are a "fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.") (citation omitted); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1313, 120 USPQ2d 1353, 1356 (2016) ("The category of abstract ideas embraces ‘fundamental economic practice[s] long prevalent in our system of commerce,’ … including ‘longstanding commercial practice[s]’").
An example of a case identifying a claim as reciting a fundamental economic practice is Bilski v. Kappos, 561 U.S. 593, 609, 95 USPQ2d 1001, 1009 (2010). The fundamental economic practice at issue was hedging or protecting against risk. The applicant in Bilski claimed "a series of steps instructing how to hedge risk," i.e., how to protect against risk. 561 U.S. at 599, 95 USPQ2d at 1005. The method allowed energy suppliers and consumers to minimize the risks resulting from fluctuations in market demand for energy. The Supreme Court determined that hedging is "fundamental economic practice" and therefore is an "unpatentable abstract idea." 561 U.S. at 611-12, 95 USPQ2d at 1010.
Another example of a case identifying a claim as reciting a fundamental economic practice is Bancorp Services., L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 103 USPQ2d 1425 (Fed. Cir. 2012). The fundamental economic practice at issue in Bancorp pertained to insurance. The patentee in Bancorp claimed methods and systems for managing a life insurance policy on behalf of a policy holder, which comprised steps including generating a life insurance policy including a stable value protected investment with an initial value based on a value of underlying securities, calculating surrender value protected investment credits for the life insurance policy; determining an investment value and a value of the underlying securities for the current day; and calculating a policy value and a policy unit value for the current day. 687 F.3d at 1270-71, 103 USPQ2d at 1427. The court described the claims as an "attempt to patent the use of the abstract idea of [managing a stable value protected life insurance policy] and then instruct the use of well-known [calculations] to help establish some of the inputs into the equation." 687 F.3d at 1278, 103 USPQ2d at 1433 (alterations in original) (citing Bilski).
"Commercial interactions" or "legal interactions" include agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. An example of a claim reciting a commercial or legal interaction, where the interaction is an agreement in the form of contracts, is found in buySAFE, Inc. v. Google, Inc., 765 F.3d. 1350, 112 USPQ2d 1093 (Fed. Cir. 2014). The agreement at issue in buySAFE was a transaction performance guaranty, which is a contractual relationship. 765 F.3d at 1355, 112 USPQ2d at 1096. The patentee claimed a method in which a computer operated by the provider of a safe transaction service receives a request for a performance guarantee for an online commercial transaction, the computer processes the request by underwriting the requesting party in order to provide the transaction guarantee service, and the computer offers, via a computer network, a transaction guaranty that binds to the transaction upon the closing of the transaction. 765 F.3d at 1351-52, 112 USPQ2d at 1094. The Federal Circuit described the claims as directed to an abstract idea because they were "squarely about creating a contractual relationship--a ‘transaction performance guaranty’." 765 F.3d at 1355, 112 USPQ2d at 1096.
An example of a claim reciting business relations is found in Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 123 USPQ2d 1100 (Fed. Cir. 2017). The business relation at issue in Credit Acceptance is the relationship between a customer and dealer when processing a credit application to purchase a vehicle. The patentee claimed a "system for maintaining a database of information about the items in a dealer’s inventory, obtaining financial information about a customer from a user, combining these two sources of information to create a financing package for each of the inventoried items, and presenting the financing packages to the user." 859 F.3d at 1054, 123 USPQ2d at 1108. The Federal Circuit described the claims as directed to the abstract idea of "processing an application for financing a loan" and found "no meaningful distinction between this type of financial industry practice" and the concept of intermediated settlement in Alice or the hedging concept in Bilski. 859 F.3d at 1054, 123 USPQ2d at 1108.
The sub-grouping “managing personal behavior or relationships or interactions between people” include social activities, teaching, and following rules or instructions. An example of a claim reciting managing personal behavior is Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 115 USPQ2d 1636 (Fed. Cir. 2015). The patentee in this case claimed methods comprising storing user-selected pre-set limits on spending in a database, and when one of the limits is reached, communicating a notification to the user via a device. 792 F.3d. at 1367, 115 USPQ2d at 1639-40. The Federal Circuit determined that the claims were directed to the abstract idea of “tracking financial transactions to determine whether they exceed a pre-set spending limit (i.e., budgeting)”, which “is not meaningfully different from the ideas found to be abstract in other cases before the Supreme Court and our court involving methods of organizing human activity.” 792 F.3d. at 1367-68, 115 USPQ2d at 1640.
An example of a claim reciting following rules or instructions is In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1161, 129 USPQ2d 1008, 1011 (Fed. Cir. 2018). The patentee claimed a method of playing a dice game including placing wagers on whether certain die faces will appear face up. 911 F.3d at 1160; 129 USPQ2d at 1011. The Federal Circuit determined that the claims were directed to the abstract idea of “rules for playing games”, which the court characterized as a certain method of organizing human activity. 911 F.3d at 1160-61; 129 USPQ2d at 1011.
Applicant also argues that the currently recited claims are a practical application. Examiner disagrees. The claims are simply a generic API that routes information between different systems. Unlike Enfish, LLC v. Microsoft Corporation (“Enfish”), where the claims were focused on a specific improvement in how the computer functioned, the claim here merely uses the computer as a tool to perform the abstract concepts. Therefore, based on the similarity of the concept described in this claim to abstract idea identified by the courts, claim 1 is directed to an abstract idea (Step 2A: Yes). The court also emphasized that the "directed to" inquiry applies a filter to claims, when interpreted in view of the specification, based on whether their character as a whole is directed to a patent ineligible concept. The Federal Circuit cautioned against describing a claim at a high level of abstraction untethered from the language of the claim when determining the focus of the claimed invention.
Further, in Enfish, the court asked whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database), or instead on a process that qualifies as an "abstract idea" for which computers are invoked merely as a tool. To make the determination of whether these claims are directed to an improvement in existing computer technology, the court looked to the teachings of the specification. Specifically, the court identified the specification's teachings that the claimed invention achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements.
The Federal Circuit in Enfish stated that certain claims directed to improvements in computer related technology, including claims directed to software, are not necessarily abstract (Step 2A). The court specifically noted that some improvements in computer-related technology, such as chip architecture or an LED display, when appropriately claimed, are undoubtedly not abstract. Explaining that software can make non-abstract improvements to computer technology just as hardware can, the court noted that claims directed to software, as opposed to hardware, also are not inherently abstract.
The focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. The claims here are not directed to a specific improvement to computer functionality. Rather, they are directed to the use of conventional or generic technology in a well-known environment, without any claim that the invention reflects an inventive solution to any computer specific problem. More specifically, the claims are limited to a business solution to a technical problem, not a technical solution to a technical problem.
The 103 rejection has been withdrawn, because the prior art does not teach or disclose “determining an authentication of an account with the second application based on information included in the API call, the authentication indicating that the account is associated with a common account holder corresponding to another account with the first application identify, responsive to the authentication of the account with the second application.”
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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/BRANDON M DUCK/Examiner, Art Unit 3693
/ELIZABETH H ROSEN/Primary Examiner, Art Unit 3693