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 .
Claim Status
Claims 1-6, 8-13, and 15-19 are currently pending and are presented for examination on the merits.
Double Patenting
***Applicant’s request to hold this rejection in abeyance during further prosecution is acknowledged. ***
Claim 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent Appl. No. 17/634,258 (U.S. Patent No. 12,125,352). Although the claims at issue are not identical, they are not patentably distinct from each other because the (substantially) broader instant claims recite the same limitations contained in the narrower claims of the parent applications. The independent claims map like independent claims and the dependents map numerically. As such, the instant claims are obvious in light of the parent claims.
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 reLongi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Omum, 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 §§ 706.02(1)(1) - 706.02(1)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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 e-Terminal 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/process/file/efs/guidance/eTD-info-I.jsp.
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 1-6, 8-13, and 15-19 are rejected under 35 U.S.C. § 101, because they recite non-patentable subject matter under MPEP § 2106. The claimed invention is directed to a judicial exception (e.g., an abstract idea, etc.) without practical application or significantly more.
More particularly, when considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Broad categories of abstract ideas include fundamental economic practices, certain methods of organizing human activities, an idea itself, and mathematical relationships/formulas. See, generally Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,132 S. Ct. 1289, 1294, 1297-98 (2012)); Federal Register notice titled 2014 Interim Guidance on Patent Subject Matter Eligibility (79 FR 74618), which is found at: http:// www. gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf; 2015 Update to the Interim Guidance; the 2019 Revised Patent Subject Matter Eligibility Guidance, Fed. Reg., Vol. 84, No. 4, January 7, 2019; and associated Office memoranda.
Under the 2019 PEG, Step 2a-prong 1, Claims 1-6, 8-13, and 15-19 recite a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle). The invention involves the performance of a transaction, which is economic activity. More particularly, the entirety of the method steps are directed towards the detection of fraud during an ATM transaction, detecting fraud based on a user profile and a threshold, detecting fraud using a machine learning model trained on aggregate transactions, and the authorization of a transaction, accordingly. These are long-standing commercial practices previously performed by humans (e.g., security centers, fraud prevention, cyber-crime departments, etc.) manually and via mental steps, and using computers in other contexts at the time of filing. As such, the inventions include an abstract idea(s) under MPEP § 2106 (e.g., the 2019 PEG, and Alice Corporation).
Under Step 2a-prong 2, the claims fail to recite a practical application of the exception, because the extraneous limitations (e.g., the structure—a system, distributed cache, at least one processor, an ATM, wherein the metric is travel time in comparison to a threshold, etc.) merely add insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g), generally link the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)), and/or generally instruct an artisan to apply it (the method) across generic computing technology. A claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit. See Alice, 573 U.S. at 222; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014). “[I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (citations omitted). More particularly, the claims fail to recite an improvement to the functioning of a computer or technology (under MPEP § 2106.05(a)), the use of a particular machine (under § 2106.05(b)), effect a transformation or reduction of a particular article (§ 2106.05(c)), or apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (§ 2106.05(e)).
Under part 2b, the additional elements offered by the dependent claims either further delineate the abstract idea, recite insignificant extra-solution activity, or instruct the artisan to apply it (the abstract ideas) across generic computing technology. The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because no one claim effects an improvement to another technology or technical field, an improvement to the functioning of a computer itself, or move beyond a general link of the use of the abstract idea to a particular, albeit well-understood, routine and conventional technological environment. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Under Alice, merely applying or executing the abstract idea on one or more generic computer system (e.g., a computer system comprising a generic database; a generic element (NIC) for providing website access, etc.; a generic element for receiving user input; and a generic display on the computer, in any of their forms) to carry out the abstract idea more efficiently fails to cure patent ineligibility. See, e.g., Content Extraction, 776 F.3d at 1347 (claims reciting a “scanner” are nevertheless directed to an abstract idea); Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea).
Courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: performing repetitive calculations, receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data, MPEP 2106.05(d), wherein the italicized tasks are particularly germane to the instant invention.
Claims 1-20 are rejected under 35 U.S.C. § 103 as being anticipated by US 20130024373 to Choudhuri et al.
With respect to Claims 1, 8, and 15, Choudhuri teaches a computer-implemented method, system, and a computer program product comprising non-transitory computer readable medium ([0024]) for real-time automated teller machine (ATM) fraud detection and prevention ([0003];[0120]), the method comprising:
Generate at least one predetermined ATM activity threshold at least partly by a machine learning model trained on historic transaction data for a plurality of payment devices ([0120];[0146];FIG. 7;[0110];[0057;[0122]).
receiving, with at least one processor ([0011]), transaction data of a plurality of transactions completed by at least one ATM, the transaction data received in real-time during transaction processing at a transaction service provider system ([0052];[0055];[0065];[0120]);
storing the transaction data in a distributed cache ([0066];[0088];[0089]);
receiving a transaction request for a user transaction at an ATM using a payment device, ([0065];[0083];[0092-93];[0056];[0110];[0120]);
in response to receiving the transaction request, and before completion of the user transaction at the ATM:
modifying, with at least one processor, a profile of ATM activity stored in the distributed cache ([0065];[0083];[0055-57];[0109];[0120])
comparing, with at least one processor, at least one metric of the profile of ATM activity to at least one predetermined ATM activity threshold ([0053];[0066];[0098]); and
in response to determining that the at least one metric satisfies the at least one predetermined ATM activity threshold, decline the user transaction ([0039], decline; [0053-54];[0072-73];[0119]).
Choudhuri further teaches wherein the at least one metric comprises ATM transaction time data and ATM transaction location data ([0098-104]), and wherein the declining of the user transaction is performed in response to determining a time interval between a first ATM transaction of a payment device and a second ATM transaction of the payment device satisfies the at least one predetermined ATM activity threshold comprising a lower threshold time interval, the lower threshold time interval representative of an unlikely travel time between a location of the first ATM transaction and a location of the second ATM transaction. [0054];[0065];[0098-100]
With respect to Claims 2, and 9 Choudhuri teaches wherein the ATM is communicatively connected to the distributed cache and programmed and/or configured to aggregate the transaction data with data from the user transaction during processing of the user transaction ([0055];[0065-66]).
With respect to Claims 3, 10, and 16, Choudhuri teaches wherein (i) comparing the at least one metric to the at least one predetermined ATM activity threshold and (ii) activating, or causing the activation of, the fraud prevention operation, are executed by the ATM in real-time with processing the user transaction ([0053];[0054];[0073];[0120]).
With respect to Claims 4, 11, and 17, Choudhuri teaches wherein the machine learning model is regularly updated based on the transaction data received in real-time during processing of the transaction data, and wherein the at least one predetermined ATM activity threshold is regenerated at regular intervals at least partly by the machine learning model ([0057];[0068];[0122];[0123]).
With respect to Claim 5, 12, and 18, Choudhuri teaches wherein the at least one metric further comprises ATM transaction time data, and wherein the fraud prevention operation is activated in response to determining a count of ATM transactions associated with the payment device identifier in a time period satisfies the at least one predetermined ATM activity threshold comprising an upper threshold count of transactions ([0065];[0068]).
With respect to Claim 6, 13, and 19, Choudhuri teaches wherein the at least one metric further comprises ATM transaction location data, and wherein the fraud prevention operation is activated in response to determining a count of ATM transactions associated with the payment device identifier in a geographic region satisfies the at least one predetermined ATM activity threshold comprising an upper threshold count of transactions in the geographic region ([0060];[0065];[0068];[0092]).
Response to remarks
Applicants remarks submitted on 4/30/2026 have been fully considered, but are not persuasive where objections/rejections are maintained. The amendment primarily raises the scope of original (now canceled) Claims 7, 14, and 20, into the independent claims.
After an updated search, the § 101 rejection is maintained because considering travel time between transaction locations fails to recite an innovative concept. See, prior art references of record, including newly added, US 2016/0203490 (SYSTEM AND METHODS FOR TRAVEL-RELATED ANOMALY DETECTION); US 2016/0210633 (FRAUD DETECTION SYSTEMS UTILIZING REASONABLE TRAVEL TIME VALUES FROM TRANSACTION DATA); and US 2018/0197182 (SYSTEMS AND METHODS FOR IMPLEMENTING FRAUD PREVENTION RULES AT PROXIMATE MERCHANTS). Moreover, the primary reference teaches this as well, as it contemplates time, location, and distance, though it does not use the same terminology verbatim. Limiting the metric to travel time also fails to recite significantly more than the abstract idea(s), because travel-time consideration were well-known, routine, and conventional at the time of filing. (Again see prior art references of record). In regards to Ex Parte Desjardins, the instant case does not present an improvement to the functioning or training of the machine learning model recited, rather it broadly recites the use of an ML model (to supplant previous human decision-making capabilities). Again the primary reference teaches “real-time” fraud prevention ([0057]), which distinguishes from actual improved computer components. As such, the 101 rejection, and the § 102 rejection are maintained.
Applicant’s remark regarding the claim language in the office action being more narrow than what is claimed in the child application is acknowledged, but it does not affect the application of the reference to the broader claim language. There is no requirement to cut and paste verbatim claim language into the Office action, and the differences herein do not obfuscate the rejection. Please note that the applied reference(s) need not use the same terminology, or disclose the limitation verbatim, and also that the entirety of a prior art reference is to be applied to the respective claim(s), such that the pinpoint citations above are exemplary and provided for Applicant’s benefit; other locations within the applied reference(s) may further support the rejection. MPEP 2141.02(VI).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J JACOB whose telephone number is (571)270-3082. The examiner can normally be reached on M-F 8:00-5:00, alternating Fri. off.
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, Matthew Gart can be reached on 5712723955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/WILLIAM J JACOB/Examiner, Art Unit 3696
Prosecution Insights