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 .
DETAILED ACTION
This is a reply to the application filed on 9/16/2024, in which, claims 21-40 are pending. Claims 21, 28, and 35 are independent.
When making claim amendments, the applicant is encouraged to consider the references in their entireties, including those portions that have not been cited by the examiner and their equivalents as they may most broadly and appropriately apply to any particular anticipated claim amendments.
Information Disclosure Statement
The information disclosure statement (IDS) submitted is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings filed on 9/16/2024 are accepted.
Specification
The disclosure filed on 9/16/2024 is accepted.
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.
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. Claim(s) 21-40 is/are directed to a method, system, and medium (apparatus). The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more. Based upon consideration of all of the relevant factors with respect to the claims as a whole, claims are held to claim an unpatentable abstract idea, and are therefore rejected as ineligible subject matter under 35 U.S.C. § 101.
Inventions for a “new and useful process, machine, manufacture, or composition of matter” generally constitute patent-eligible subject matter. 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ - i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 217-18 (alteration in original).
The USPTO published revised guidance on January 7, 2019, for use by USPTO personnel in evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the USPTO's examination procedure with respect to the first step of the Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that [are] considered an abstract idea”; and (2) clarifying that a claim is not “directed to” a judicial exception if the judicial exception is integrated into a practical application of that exception. Id. at 50. 1
The first step, as set forth in the 2019 Revised Guidance (i.e., Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to whether the claim recites a judicial exception, e.g., one of the following three groupings of abstract ideas: (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. See 2019 Revised Guidance, 84 Fed. Reg. at 54; MPEP §§ 2106.04(II)(A)(l), 2106.04(a). If so, we next determine, in Step 2A, Prong Two, whether the claim as a whole integrates the recited judicial exception into a practical application of that exception, i.e., whether the additional elements recited in the claim beyond the judicial exception, apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. See 2019 Revised Guidance, 84 Fed. Reg. at 54-55; MPEP §§ 2106.04(II)(A)(2), 2106.04(d). Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we conclude that the claim is “directed to” the judicial exception, e.g., an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 54-55; MPEP § 2106.04(II)(A)(2).
If the claim is determined to be directed to a judicial exception under Step 2A, we next evaluate the additional elements, individually and in combination, in Step 2B, to determine whether they provide an inventive concept, i.e., whether the additional elements or combination of elements amounts to significantly more than the judicial exception itself; only then, is the claim patent eligible. See 2019 Revised Guidance, 84 Fed. Reg. at 56; MPEP § 2106.05.
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
2019 Revised Guidance, Step 2A, Prong 1
The abstract idea to which claims 21, 28, 35 are directed to is mental process such as concepts performed in the human mind (including an observation, evaluation, judgement, opinion) and “Certain Methods of Organizing Human Activity”. In particular, the claims recite the following abstract concepts:
(a) “determining, by an intermediary entity, a plurality of accounts that a user has with a data provider” (i.e., abstract idea of mental process of analyzing data to make a judgment as found abstract by the Courts in TLI Comms, Digitech, SmartGene, Bancorp Servs, Electric Power Group, Classen, FariWarning, CyberSource)
(b) “identifying a list of accounts, from the plurality of accounts, that a data recipient is permitted to access data from via the intermediary entity” (i.e., abstract idea of mental process of analyzing data to make a judgment as found abstract by the Courts in TLI Comms, Digitech, SmartGene, Bancorp Servs, Electric Power Group, Classen, FariWarning, CyberSource)
(c) “providing, to the data recipient, information indicating the identified list of accounts” (i.e., abstract idea of mental process of obtaining/providing data as found abstract by the Courts in Electric Power Group, CyberSource, Classen, FariWarning, TLI Comms),
(d) “determining a modified list of accounts that has an account that has been added to, or removed from, the identified list of accounts” (i.e., abstract idea of mental process of analyzing data to make a judgment as found abstract by the Courts in TLI Comms, Digitech, SmartGene, Bancorp Servs, Electric Power Group, Classen, FariWarning, CyberSource)
(e) “providing, to the data recipient, updated information indicating the modified list of accounts” (i.e., abstract idea of mental process of obtaining/providing data as found abstract by the Courts in Electric Power Group, CyberSource, Classen, FariWarning, TLI Comms)
(f) “obtaining, by the intermediary entity and based on the modified list of accounts, user information data and providing the user information data to the data recipient” (i.e., abstract idea of mental process of obtaining/providing data as found abstract by the Courts in Electric Power Group, CyberSource, Classen, FariWarning, TLI Comms. Court has noted “merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis.” See e.g., Electric Power Group, 830 F.3d 1350, 1351, 1353–54)
The Supreme Court and Federal Circuit have identified abstract ideas in patent claims by making comparisons to concepts found in past decisions to be judicial exceptions to eligibility. The 2019 IEG summarizes concepts the courts have considered to be abstract ideas by associating eligibility decisions with judicial descriptors (e.g., “an idea of itself,” “certain methods of organizing human activities”, “mathematical relationships and formulas”) based on common characteristics. These associations define the judicial descriptors in a manner that stays within the confines of the judicial precedent, with the understanding that these associations are not mutually exclusive, i.e., some concepts may be associated with more than one judicial descriptor.
The abstract functions of the claims in the case are claim(s) is/are directed to system and method of data processing to provide a subset of data to a recipient (i.e., abstract idea mental process and certain methods of organizing human activity) as defined by the claimed steps above.
The present claims, as a whole, and individual limitations, are reciting abstract concept of data collection, categorization to provide the data to a recipient. As such the claims are analogous to FairWarning, 839 F.3d at 1093-94 (concluding claims directed to "collecting and analyzing information to detect misuse and notifying a user when misuse is detected" to be mental processes within the abstract-idea category); Electric Power Group; and TLI Comms (i.e., tracking, classifying and distributing information). Looking at the steps of the claims, for each of the claims, data is simply being collected, analyzed, and distributed which was ruled abstract in:
a. Collecting and comparing known information (Classen);
b. Comparing information regarding a sample or test subject to a control or target data (Ambry/Myriad CAFC);
c. Collecting and analyzing information to detect misuse and notifying a user when misuse is detected (FairWarning);
d. Data recognition and storage (Content Extraction);
e. Obtaining and comparing intangible data (Cybersource);
f. Collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group);
g. Organizing and manipulating information through mathematical correlations (Digitech);
h. Virus Screening (Int. Ventures v. Symantec ‘610 patent);
i. A mathematical formula for calculating parameters indicating an abnormal condition (Grams);
j. Classifying and storing digital images (TLI Comms);
k. Tailoring content based on information about the user (Int. Ventures v. Cap One Bank)
Furthermore, the invention is nothing more than data collecting, categorizing, organizing and distribution as described in the claims that can be performed mentally (or with a pen and piece of paper). The steps are similar to concepts and ideas that have been identified as abstract by the courts. For example, collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group); a mathematical formula for calculating parameters indicating an abnormal condition (Grams); collecting and analyzing information to detect misuse and notifying a user when misuse is detected (FairWarning); and obtaining and comparing intangible data (Cybersource). While the specific facts of the case differ from these cases, the claims are still directed to collecting and categorizing data and distributing data. Further, each and every step can be performed mentally and with pen and paper. A computer is not necessary to generate, receive and correlate, and distribute data. Even further still, any steps that deal with generating, receiving, analyzing are insignificant, extra solution activity because receiving, analyzing and transmitting data, analyzing and processing collected data are all well-known in the computer network security arts.
2019 Revised Guidance, Step 2A, Prong 2
The 2019 Revised Guidance sets forth a non-exhaustive listing of considerations indicative that an additional element or combination of elements may have integrated a recited judicial exception into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 55; MPEP § 2106.04(d). In particular, the Guidance describes that an additional element may have integrated the judicial exception into a practical application if, inter alia, the additional element reflects an improvement in the functioning of a computer or an improvement to other technology or a technical field. Id. At the same time, the Guidance makes clear that merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea; adding insignificant extra-solution activity to the judicial exception; or only generally linking the use of the judicial exception to a particular technological environment or field are not sufficient to integrate the judicial exception into a practical application. Id.
The abstract functions of the claims in the case are claim(s) is/are directed to system and method of data processing to provide a subset of data to a recipient (i.e., abstract idea mental process and certain methods of organizing human activity) as defined by the claimed steps above. The claims do not require an arguably inventive set of components, methods, or algorithms. The abstract idea is implemented using generic computing elements (“processing circuitry”, “processor”, “medium”) that do not integrate a practical application of the abstract idea in the claims (step 2A, prong 2). Accordingly, even in combination, these additional generic computing elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims recite a mental process, i.e., an abstract idea, and that the additional elements recited in the claim beyond the abstract idea are no more than generic computer components used as tools to perform the recited abstract idea and insignificant extra-solution activity. As such, they do not integrate the abstract idea into a practical application. See Alice Corp., 573 U.S. at 223-24 ("[W]holly generic computer implementation is not generally the sort of ‘additional featur[ e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)); 2019 Revised Guidance, 84 Fed. Reg. at 55 (identifying “an additional element adds insignificant extra-solution activity to the judicial exception” and “an additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use” as examples in which a judicial exception has not been integrated into a practical application).
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
The relevant question under Step 2B is whether claim includes an additional element or combination of elements adds specific limitations beyond the judicial exception that are not “well-understood, routine, conventional activity” in the field or simply appends well-understood, routine, conventional activities previously known to the industry to the judicial exception. Here, the additional elements of claim beyond the abstract idea, namely, a “processing circuitry”, “processor”, “medium”, “instructions” are a conventional computing equipment used in a well-understood, routine, and conventional manner. These additional elements do not provide an inventive concept; rather, they simply append well-understood, routine, conventional activities previously known to the industry to the judicial exception.
Applying the test to the claims in the application, the structural elements of the claims, which include a computer when taken in combination with the functional elements claim(s) is/are directed to system and method to collect data, categorizing the data, and providing the data to a recipient, together do not offer “significantly more” than the abstract idea itself because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of any computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment (a general purpose computer and/or environment of the user). When considered as an ordered combination, the Examiner does not find any combination of the additional elements that amounts to more than the sum of the parts. The Examiner finds that the individual elements of the claims are performing their intended roles and functions. In most cases, the additional elements are applied merely to carry out data processing, as discussed above, fall under well-understood, routine, and conventional functions of generic computers – in our common day-to-day interactions. Note: Applicant’s disclosure states a generic hardware and/or software is used to implement the claimed invention (¶63); note also cited art of record discloses processors; devices, programs (see, US 20210081947 A1: ¶59). Therefore, the claimed interactions of the various generically recited methods / devices lacks an unconventional step that confines the claim to a particular useful application in the sense that the result is equivalent to purely mental activity.
Dependent claims do not add an inventive step to the abstract idea of the independent claims and are therefore rejected based on the aforementioned rationale discussed in the rejection.
Dependent claims 22-27, 29-34, and 36-40, pertain to revoking access to the data; making determination on the type of data to be provided to the recipient; and determining status of the user without adding any inventive concept or using an unconventional computing element or improving the underlying computer technology.
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.
2. Claims 28-34 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
6. Based upon consideration of all the relevant factors with respect to the claim as a whole, claims 28-34 are held to claim software per se, and are therefore rejected as non-statutory subject matter under 35 U.S.C. 101. The rationale for this finding is explained below:
Claims 28-34 are rejected under 35 U.S.C. 101 as directed to non-statutory subject matter of software, per se. The claims lack the necessary physical articles or objects to constitute a machine or manufacture within the meaning of 35 U.S.C. 101. In this case, applicant has claimed a "system" in the preamble to the claim without reciting any hardware element in the body of the claim; this implies that Applicants are claiming a system of software, per se, lacking the hardware necessary to realize any of the underlying functionality. Note that the “processing circuitry” in the body of the claim may be software per Applicant’s disclosure. Therefore, claims 28-34 are directed to non-statutory subject matter as computer programs, per se.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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 –
(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.
Claim(s) 21-40 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20210081947 A1 (hereinafter ‘Hockey’).
As regards claim 21, Hockey (US 20210081947 A1) discloses: A method comprising: determining, by an intermediary entity, a plurality of accounts that a user has with a data provider; (Hockey: Fig. 30A, ¶107, “when starting the linking process a view may be presented guiding the user to select an institution the user wants to link to the application, after the user selects the appropriate institution, a user interface guides the user through establishing an account link with the appropriate account service”, ¶¶205-206, “The user (e.g., User A and/or User B) may have a user account with the external institution (e.g., an online bank account). An application proxy instance (e.g., one of proxy instances 121, 122, and/or 123) can be created during the initial registration or at a later time, which will provide access to account information of the external institution. Once created, the application proxy instance of that user can be persisted and used at a later time for that given user-institution combination (e.g., “User A-Bank 1”, “User A-Bank 2”, “User B-Bank 2”)… The initial request may be received through a normalized API (e.g., API 110) as a connection request… The API request may additionally include authentication credentials such as a client identifier and secret token that is associated with the account in the system”)
identifying a list of accounts, from the plurality of accounts, that a data recipient is permitted to access data from via the intermediary entity; (Hockey: Fig. 30A, ¶206, ¶241, “the method may include selecting an institution, which functions to dynamically select a connected account to participate in a transaction. Various conditions may be set to respond to events when receiving a transaction request, collecting information for the transaction, and/or executing a transaction”, ¶357, “the user may have more than one user account with the institution that is accessed. Accordingly, in optional block 1630, the permissions management system 1204 may receive, from the user, a selection of one or more of these accounts that are to be associated with the external user-facing system/application 1208. Such a selection may be obtained from the user via an interactive user interface that may be presented to the user (via, e.g., any combination of the permissions management system 1204, the permissions plug-in 1210, the external user-facing system/application 1208, and/or the user computing device 1214). An example of such a user interface is shown in FIG. 30A”)
providing, to the data recipient, information indicating the identified list of accounts; (Hockey: ¶357, “the user may have more than one user account with the institution that is accessed. Accordingly, in optional block 1630, the permissions management system 1204 may receive, from the user, a selection of one or more of these accounts that are to be associated with the external user-facing system/application 1208. Such a selection may be obtained from the user via an interactive user interface that may be presented to the user (via, e.g., any combination of the permissions management system 1204, the permissions plug-in 1210, the external user-facing system/application 1208, and/or the user computing device 1214). An example of such a user interface is shown in FIG. 30A”)
determining a modified list of accounts that has an account that has been added to, or removed from, the identified list of accounts; (Hockey: Figs. 7-8, ¶102-¶103, i.e., adding, updating, removing linked accounts)
providing, to the data recipient, updated information indicating the modified list of accounts; and (Hockey: ¶357, “the user may have more than one user account with the institution that is accessed. Accordingly, in optional block 1630, the permissions management system 1204 may receive, from the user, a selection of one or more of these accounts that are to be associated with the external user-facing system/application 1208. Such a selection may be obtained from the user via an interactive user interface that may be presented to the user (via, e.g., any combination of the permissions management system 1204, the permissions plug-in 1210, the external user-facing system/application 1208, and/or the user computing device 1214). An example of such a user interface is shown in FIG. 30A”)
obtaining, by the intermediary entity and based on the modified list of accounts, user information data and providing the user information data to the data recipient. (Hockey: Figs. 5-6B, i.e., the account linking service i.e., the intermediary provides access to user information to 3rd parties based on permissions)
Claims 28 and 35 recite substantially the same features recited in claim 21 above and are rejected based on the rationale discussed in the rejection.
As regards claim 22, Hockey discloses the method of claim 21, wherein: determining the modified list of accounts comprises receiving, at the intermediary entity, an indication from the data provider that the access of the data recipient to the account has been revoked; and (Hockey: ¶172, i.e., revoking access) the indication received from the data provider is based on the data provider determining to revoke the access of the data recipient to the account. (Hockey: ¶172, i.e., revoking access to the account)
Claims 29 and 36 recite substantially the same features recited in claim 22 above and are rejected based on the rationale discussed in the rejection.
As regards claim 23, Hockey discloses the method of claim 21, wherein: determining the modified list of accounts comprises receiving, at the intermediary entity, an indication from the data provider that the access of the data recipient to the account has been revoked; and (Hockey: Figs. 7-8, ¶102-¶103, ¶172, i.e., adding, updating, removing linked accounts) the indication received from the data provider is based on user input received at the data provider requesting that the access of the data recipient to the account be revoked. (Hockey: ¶172, i.e., revoking access to the account)
Claims 30 and 37 recite substantially the same features recited in claim 23 above and are rejected based on the rationale discussed in the rejection.
As regards claim 24, Hockey discloses the method of claim 21, wherein identifying the list of accounts further comprises: receiving a request for user information from the data recipient; (Hockey: Figs. 5-6B, ¶55, i.e., the account linking service i.e., the intermediary provides access to user information to 3rd parties based on permissions) determining a context of the request for user information; and (Hockey: Figs. 5-6B, ¶55, ¶68-¶69) identifying the list of accounts based on the context. (Hockey: Figs. 5-6B, ¶55, ¶68-¶69)
Claims 31 and 38 recite substantially the same features recited in claim 24 above and are rejected based on the rationale discussed in the rejection.
As regards claim 25, Hockey discloses the method of claim 21, wherein: determining the modified list of accounts comprises receiving, at the intermediary entity, an indication from the data provider to add the account to the identified list of accounts; and (Hockey: Figs. 7-8, ¶102-¶103, i.e., adding, updating, removing linked accounts) the indication received from the data provider is based on user input received at the data provider requesting to permit the data recipient to access the account. (Hockey: ¶55)
Claims 32 and 39 recite substantially the same features recited in claim 25 above and are rejected based on the rationale discussed in the rejection.
As regards claim 26, Hockey discloses the method of claim 21, wherein identifying the list of accounts, from the plurality of accounts, that the data recipient is permitted to access data from via the intermediary entity further comprises determining the data recipient is registered with the intermediary entity. (Hockey: ¶206)
Claims 33 and 40 recite substantially the same features recited in claim 26 above and are rejected based on the rationale discussed in the rejection.
As regards claim 27, Hockey discloses the method of claim 21, wherein identifying the list of accounts, from the plurality of accounts, that the data recipient is permitted to access data from via the intermediary entity further comprises determining the user is registered with the data recipient. (Hockey: ¶206)
Claim 34 recites substantially the same features recited in claim 27 above and is rejected based on the rationale discussed in the rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SYED A ZAIDI whose telephone number is (571)270-5995. The examiner can normally be reached Monday-Thursday: 5:30AM-5:30PM.
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, Jeffrey Nickerson can be reached at (469) 295-9235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SYED A ZAIDI/Primary Examiner, Art Unit 2432
1 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates the revised guidance and subsequent updates at § 2106 (9th ed. Rev. 10.2019, rev. June 2020).
