DETAILED ACTION
This action is in response to the application filed 9 September 2024, claiming benefit back to 30 July 2021.
Claims 1 – 20 are pending and have been examined.
This action is Non-Final.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 19 December 2024 has been considered by the examiner.
Continuation
This application is a continuation application of U.S. application no. 18/461,405 filed on 5 September 2023, now U.S. Patent 12,086,876 (“Parent Application”). See MPEP §201.07. In accordance with MPEP §609.02 A. 2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the Parent Application need not be resubmitted in this application unless Applicants desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, Applicants are reminded that the prosecution history of the Parent Application is relevant in this application. See e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
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 non-statutory subject matter. The claimed invention, when the claims are taken as a whole, is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 2A – 1: The claims recite a Judicial Exception. Exemplary independent claim 1 recites the limitations of:
receiving pending transaction data associated with a transaction and a client of a software-as-a-service (SaaS) platform, the pending transaction data including a transaction identifier and unstructured data with an unprocessed named entity;
determining whether the transaction can be assigned to an existing named entity based on the pending transaction data and one or more named entity identification rules;
responsive to determining that the transaction cannot be assigned to an existing named entity, performing an Internet search to determine a candidate named entity to which the transaction can be assigned;
assigning the transaction to the candidate named entity;
receiving cleared transaction data associated with the transaction and the client of the SaaS platform, the cleared transaction data including the transaction identifier and additional information;
reassigning the transaction to a different named entity based on the cleared transaction data.
These limitations (bolded and italicized), as drafted, are a process that, under its broadest reasonable interpretation, covers certain methods of organizing human activity, e.g., managing interactions between people, and further fall with the mental process groupings as they can performed in the human mind, including observation, evaluation, judgment, and opinion. See MPEP 2106.04(a)(2) II. and MPEP 2106.04(a)(2) III. For example, the claim limitations determining whether the transaction can be assigned to an existing named entity based on the pending transaction data and one or more named entity identification rules, assigning the transaction to the candidate named entity, and reassigning the transaction to a different named entity based on the cleared transaction data all deal with assigning work to a person, the work having to do with transactions, which can be considered both fundamental economic activities and managing interactions between people / entities, both of which fall under certain methods of organizing human activity.
Additionally, the claim limitations of determining whether the transaction can be assigned to an existing named entity based on the pending transaction data and one or more named entity identification rules, responsive to determining that the transaction cannot be assigned to an existing named entity, performing an Internet search to determine a candidate named entity to which the transaction can be assigned, assigning the transaction to the candidate named entity and reassigning the transaction to a different named entity based on the cleared transaction data can all be performed using observation, evaluation, judgment, and opinion, which falls under the mental process grouping.
“Unless it is clear that a claim recites distinct exceptions, such as a law of nature and an abstract idea, care should be taken not to parse the claim into multiple exceptions, particularly in claims involving abstract ideas.” MPEP 2106.04, subsection II.B. However, if possible, the examiner should consider the limitations together as a single abstract idea rather than as a plurality of separate abstract ideas to be analyzed individually. “For example, in a claim that includes a series of steps that recite mental steps as well as a mathematical calculation, an examiner should identify the claim as reciting both a mental process and a mathematical concept for Step 2A, Prong One to make the analysis clear on the record.” MPEP 2106.04, subsection II.B. Under such circumstances, however, the Supreme Court has treated such claims in the same manner as claims reciting a single judicial exception. Id. (discussing Bilski v. Kappos, 561 U.S. 593 (2010)). The highlighted and bolded limitations are considered together as a single abstract idea for further analysis.
Step 2A – 2: This judicial exception is not integrated into a practical application, and the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Exemplary claim 1 recites the additional limitations of receiving pending transaction data associated with a transaction and a client of a software-as-a-service (SaaS) platform, the pending transaction data including a transaction identifier and unstructured data with an unprocessed named entity and receiving cleared transaction data associated with the transaction and the client of the SaaS platform, the cleared transaction data including the transaction identifier and additional information, however these are recited at a high level of generalization, i.e., the claims put no limits or details on how the data is received (noting that the data is not even claimed as being received by a computer or over a network, for example), and as such are insignificant extra-solution activity. See MPEP 2106.05(g)1.
Independent claim 9 recites the additional limitation of one or more non-transitory computer readable media configured to store computer code comprising instructions, however this is recited at a high level of generality, and amounts to no more than mere instructions to apply the exception using a generic computer. See MPEP 2106.05(f).
Independent claim 17 recites the additional limitations of a software-as-a-service (SaaS) platform and a computing server in communication with the SaaS platform, the computing server comprising a processor and a memory, however these are also recited at a high level of generality, and are merely used as tools on which to perform the abstract idea. See MPEP 2106.05(f).
Further, the claims do not provide for or recite any improvements to the functioning of a computer, or to any other technology or technical field; applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; applying the judicial exception with, or by use of, a particular machine; effecting a transformation or reduction of a particular article to a different state or thing; or applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
The claim is directed to the abstract idea.
The dependent claims have the same deficiencies as their parent claims as being directed towards an abstract idea, as the dependent claims merely narrow the scope of their parent claims, and it has been held that “[i]n defining the excluded categories, the Court has ruled that the exclusion applies if a claim involves a natural law or phenomenon or abstract idea, even if the particular natural law or phenomenon or abstract idea at issue is narrow.” (buySAFE, Inc. v. Google, Inc., 765 F.3d 1350. )
Turning to the dependent claims, none of the claimed features of the dependent claims further limit the claimed invention in such a way to direct the claimed invention to statutory subject matter (e.g. change the scope of the claimed invention as to no longer be directed towards an abstract idea, or include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements or combination of elements in the claims other than the abstract idea per se), nor do they add limitations that, when taken as a combination, result in the claim as a whole amounting to significantly more than the judicial exception. In respect to exemplary dependent claims 2 – 8:
Claims 2 – 4 merely further describes the determining step;
Claim 5 merely further describes the received data;
Claims 6 and 7 merely further describe the internet search step;
Claim 8 recites an additional judicial exception step;
Step 2B: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, explained with respect to Step 2A, Prong Two, the additional elements or combination of elements in the claims other than the abstract idea per se amount to no more than mere instructions to implement the idea on a computer, or the recitation of generic computer structure that serves to perform generic computer functions previously known to the industry2 [e.g. performing repetitive calculations; receiving, processing, and storing data; electronically scanning or extracting data from a physical document; electronic recordkeeping; automating mental tasks; receiving or transmitting data over a network, e.g., using the Internet to gather data] .
Applicant’s specification, at, e.g., paragraphs [0036], [0058], [0112], FIG. 2, provides evidence of generic computer hardware performing generic, well-known, computer functions.
Viewed as a whole, these additional claim elements, both individually and in combination, do not provide meaningful limitations to transform the above identified abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more (e.g. improvements to another technology or technical fields, improvements to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment) than the abstract idea itself. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds 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. Their collective functions merely provide conventional computer implementation3.
Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank International, 573 U.S. No. 13–298.
Allowable Subject Matter
Claims 1 – 20 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 101, set forth in this Office action. See parent Applications 17/390,701 and 18/461,405.
Conclusion
The prior art made of record and not relied upon considered pertinent to Applicant’s disclosure.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN S MILLER whose telephone number is (571)270-5288. The examiner can normally be reached on M-F 10am-6pm. Examiner’s fax phone number is (571) 270-6288.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Beth Boswell can be reached at (571) 272-6737. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALAN S MILLER/Primary Examiner, Art Unit 3625
1 It is noted that the two quoted receiving steps could possibly be considered as a part of the abstract idea itself, as noted by the CAFC in Electric Power Group v Alstom S.A. No. 2015-1778 (Fed. Cir. 1 August 2016), in which the court stated that “Information as such is an intangible. See Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 451 n.12 (2007); Bayer AG v. Housey Pharm., Inc., 340 F.3d 1367, 1372 (Fed. Cir. 2003). Accordingly, we have treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas. See, e.g., Internet Patents, 790 F.3d at 1349; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)” (emphasis added).
2 “It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. Rather, the components must involve more than performance of “‘well understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294)”. Id, pages 10-11. “Likewise, the server fails to add an inventive concept because it is simply a generic computer that “administer[ s]” digital images using a known “arbitrary data bank system.” Id. at col. 5 ll. 45–46. But “[f]or the role of a computer in a computer-implemented invention to be deemed meaningful in the context of this analysis, it must involve more than performance of ‘well-understood, routine, [and] conventional activities previously known to the industry.’” Content Extraction, 776 F.3d at 1347–48 (quoting Alice, 134 S. Ct at 2359). “These steps fall squarely within our precedent finding generic computer components insufficient to add an inventive concept to an otherwise abstract idea. Alice, 134 S. Ct. at 2360 (“Nearly every computer will include a ‘communications controller’ and a ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”); Content Extraction, 776 F.3d at 1345, 1348 (“storing information” into memory, and using a computer to “translate the shapes on a physical page into typeface characters,” insufficient confer patent eligibility); Mortg. Grader, 811 F.3d at 1324–25 (generic computer components such as an “interface,” “network,” and “database,” fail to satisfy the inventive concept requirement); Intellectual Ventures I, 792 F.3d at 1368 (a “database” and “a communication medium” “are all generic computer elements”); BuySAFE v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive.”)”. TLI Communications LLC v. AV Automotive L.L.C., (No. 15-1372, (Fed. Cir. May 17, 2016)), at *12-13.
See additionally MPEP 2106.05(d).
3 “Nor, in addressing the second step of Alice, does claiming the improved speed or efficiency inherent with applying the abstract idea on a computer provide a sufficient inventive concept. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”); CLS Bank, Int’l v. Alice Corp., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en banc) aff’d, 134 S. Ct. 2347 (2014) (“[S]imply appending generic computer functionality to lend speed or efficiency to the performance of an otherwise abstract concept does not meaningfully limit claim scope for purposes of patent eligibility.” (citations omitted))”. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 115 U.S.P.Q.2d 1636 (Fed. Cir. 2015).