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 1-20 are currently pending and are presented for examination on the merits.
Priority
Applicant's claim for priority to US application 17/634,258, filed February 10, 2022 is acknowledged.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 8/4/2025, 4/29/2025, and 11/5/2024 were filed before the filing of a first office action on the merits. As such, the submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Double Patenting
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.). 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 1-20 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 1-20 recite a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle). 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, 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)).
For example, the extraneous limitations of Claim 1 are delineated in bold below:
1. A system comprising:
a distributed cache; and
at least one processor configured to:
generate at least one predetermined automated teller machine (ATM) activity threshold at least partly by a machine learning model trained on historic transaction data for a plurality of payment devices;
receive 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;
store the transaction data in the distributed cache;
receive a transaction request for a user transaction at a first ATM of the at least one ATM using a payment device; and
in response to receiving the transaction request, and before completion of the user transaction at the first ATM:
modify a profile of ATM activity stored in the distributed cache based on the transaction request, wherein, when modifying the profile of ATM activity, the at least one processor is configured to aggregate at least one metric of the profile based on the user transaction;
compare at least one metric of the profile of ATM activity to the at least one predetermined ATM activity threshold; and
in response to determining that the at least one metric satisfies the at least one predetermined ATM activity threshold, decline the user transaction.
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.
Claim Rejections - 35 USC § 102
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.
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 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.
Claims 1-20 are rejected under 35 U.S.C. § 102 (a)(1) as being anticipated by U.S. 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 and associated with the payment device identifier and/or an identifier of the ATM, the profile comprising metrics comprising at least ATM transaction value data and ATM transaction count data ([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]).
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]).
With respect to Claim 7, 14, and 20, Choudhuri teaches wherein the at least one metric further comprises ATM transaction time data and ATM transaction location data ([0114]), and wherein the fraud prevention operation is activated in response to determining a time interval between a first ATM transaction of the 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 representative of an unlikely or impossible travel time between a location of the first ATM transaction and a location of the second ATM transaction ([0098];[0113-14]).
Conclusion
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.
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/WILLIAM J JACOB/Examiner, Art Unit 3696