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 communication is in response to Applicant’s amendment filed 27 February 2026. Claims 1, 13 and 19 have been amended. Claims 1-20 are pending. Examiner withdraws the rejections of claims 1-20 under 35 USC § 103. However, the rejection of claims 1-20 under 35 USC § 101 directed to non-statutory subject matter is maintained. The rejections are as stated below.
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 (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more as discussed in the previous office action mailed on 17 December 2025. Further:
Applicant amended the claims to include,
retrieve consumer data associated with the consumer from an internal database of the digital identity verification system; using a machine learning system trained on historical transaction data and fraud outcomes, process the consumer identifying information, the business identifying information, the transaction details, and the retrieved consumer data to determine, a probability that the consumer is legitimate, the probability represented as a confidence score, wherein the machine learning system applies weighted factors to each of the consumer identifying information, the business identifying information, and the transaction details to calculate the confidence score;
As mentioned previously, the limitations as drafted are a process that under its broadest reasonable interpretation, covers Certain Methods of Organizing Activity" grouping of abstract ideas ((such as a fundamental economic concept). (see analysis of previous office action). See MPEP § 2106.04(a)(2).
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of a processor, a memory and a machine learning system. The additional elements are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of receiving data and outputting results) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Accordingly, the additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of a processor, a memory a machine learning system amounts to no more than mere instructions to apply the exception using a generic computer component, such as those described in paragraphs 52-56 and paragraphs 37 and 48 (generic machine learning system). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
Furthermore, the dependent claims do not resolve the issues raised in the independent claims.
As mentioned above with respect to the independent claims, the generic processor limitations are no more than mere instructions to apply the exception using generic computer component. Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional 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 claim is directed to the abstract idea.
These claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer. The claim merely amounts to the application or instructions to apply the abstract idea on a server, and is considered to amount to nothing more than requiring a generic server to merely carry out the abstract idea itself.
The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as integrating the abstract idea into a practical application.
Accordingly, claims 1-20 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Response to Arguments
Applicant’s amendments/arguments with respect to the 35 U.S.C. § 103 rejection are deemed persuasive and the rejection under 35 U.S.C. § 103 is withdrawn. However, Applicant's arguments with respect to 35 USC § 101 directed to non-statutory subject matter been fully considered but they are not persuasive.
Applicant's arguments with respect to 35 USC § 101 directed to non-statutory subject matter been fully considered but they are not persuasive.
The proposed amendments do not overcome the 35 U.S.C. 101 rejection. Applicant amended the claims to include the above-mentioned steps. The same updated analysis based on the new 2019 Patent Eligibility Guidance (2019 PEG) applies to the newly added claimed limitations as discussed above and in the previous office action rejections. The instant claims do not attempt to solve an unconventional technological solution, but rather use the processor as a tool to implement the abstract idea.
Applicant argues in substance that the claims integrate the abstract idea into a practical application and are directed to a technical solution to a technical problem and would amount to significantly more
Under Step 2A Prong 1, Applicant submits that the amended claims are eligible because they do not recite a judicial exception that “falls within any of the groupings of abstract ideas enumerated in Section I of the 2019 PEG certain methods of organizing human activity. Examiner respectfully disagrees. The claims are directed to the abstract idea of “identifying a consumer of an asset (rental or purchase) using consumer identifying information”. Throughout the specification, and the claims, the system verifies the identity of the consumer, which is clearly a fundamental economic practice that falls under a method of organizing human activity. Therefore, it seems reasonable for the Examiner to refer to group the abstract idea under “Certain methods of organizing human activity” as enumerated in Section I of the 2019 PEG.
The claims here do not recite an improvement in computers. The claims do not improve the functioning of the computer, or solve any technological problem. Rather, the claim simply “includes instructions to implement an abstract idea on a computer” and “does no more than generally link the use of a judicial exception to a particular technological environment or field of use.” 2019 Revised Guidance, 84 Fed. Reg. at 55. The claim uses generic computer components and generic computer functionality to make payments. The claims merely uses instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea. Here, the additional limitations do not integrate the judicial exception into a practical application.
The claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem/internet-centric problem. Limiting the use of an abstract idea “‘to a particular technological environment’ does not confer patent eligibility as this cannot be considered an improvement to computer or technology and so cannot be “significantly more.”
In addition, Applicant submits that the claims show an integration of the technical improvement into a practical application.
Examiner respectfully disagrees that the claims are directed to an improvement computer technology. As found by the courts “In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly . . ..” SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010); see also Content Extraction, 2013 WL 3964909, at *12 (“the mere use of a computer to more quickly and efficiently . . . accomplish a given task does not create meaningful limitation on an otherwise abstract and wide-ranging concept”).
A claim may be found to be eligible if it integrates a judicial exception into a practical application as cited by Applicant. However, examiner notes that "claiming the improved efficiency inherent with applying the abstract idea on a computer" does not provide an inventive concept (see MPEP §2106.05(f)(2).) Claiming improved data processing efficiency inherent with applying any improvement to the judicial exception itself on a computer does not provide an inventive concept. The claims do not integrate the judicial exception into a practical application.
The claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem.
Under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to 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 exception. Limitations that are not indicative of integration into a practical application are those that are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea.-see MPEP 2106.05(f).
According to 2019 Patent Eligibility Guidelines (2019 PEG), limitations that are indicative of integration into a practical application include:
• Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
• Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition - see Vanda Memo
• Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
• Effecting a transformation or reduction of a particular article to a different state or thing -see MPEP 2106.05(c)
• 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 - see MPEP 2106.05(e).
In the instant case, the judicial exception is not integrated into a practical application, because none of the above criteria is met. The amended limitations of the claims do not result in computer functionality improvement or technical/technology improvement when the underlying abstract idea is implemented using technology. The amendments to the claims only further define the data being used however, a specific abstract idea is still an abstract idea. All the features in the Applicant’s claims can at best be considered an improvement in the abstract idea. The advantages over conventional systems are directed towards improving the abstract idea. Hence, the additional elements in the claims are all generic components suitably programmed to perform their respective functions. The additional elements are recited at a high level of generality and under their broadest reasonable interpretation comprises a generic computer arrangement. The presence of a generic computer arrangement is nothing more than mere instructions to implement the abstract idea on a computer (MPEP 2106.05(f)). 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. Hence, the claims as a whole are not integrated into a practical application.
In response to the Enfish argument, the claims here are unlike the claims in Enfish. In Enfish, the claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement-a particular database technique-in how computers could carry out one of their basic functions of storage and retrieval of data. In Enfish v. Microsoft, the United States Court of Appeals for the Federal Circuit decision… that “the self-referential table recited in the claims on appeal is a specific type of data structure designed to improve the way a computer stores and retrieves data in memory” which is “directed to a specific implementation of a solution to a problem in the software arts.” See also details in re TLI Communication LLC. In the instant case, the claims provide a generically computer-implemented solution to a business-related or economic problem.
Moreover, Applicant’s citation of McRo is non-persuasive because the claims at issue in McRo are readily distinguishable over the instant claims.
In McRO, the Federal Circuit held the claimed methods of automatic lip synchronization and facial expression animation using computer-implemented rules patent eligible under 35 U.S.C. § 101, because they were not directed to an abstract idea. The basis for the McRO court's decision was that the claims were directed to an improvement in computer-related technology (allowing computers to produce "accurate and realistic lip synchronization and facial expressions in animated characters" that previously could only be produced by human animators), and thus did not recite a concept similar to previously identified abstract ideas. In McRO, timing phonemes in milliseconds represents both the problem being solved and the inventive solution. On the other hand, timing in the instant application represents nothing more than a sequence of events that occur time – a feature common to most process/method patent applications. The timing is not critical to accomplishing the process. For example, a few second delay in a network transmission will not materially affect the outcome of the ordered combination of method steps. Timing is not a problem introduced by the technology itself or arising in the realm of computer networks that the instant application seeks to solve...”
Applicant’s citation of DDR is non-persuasive because the claims at issue in DDR are readily distinguishable over the instant claims. In the case of DDR Holdings "E-Commerce Outsourcing System/Generating a Composite Web Page", the claims were directed to automatically generating and transmitting a web page in response to activation of a link using data identified with a source web page having certain visually perceptible elements.
In contrast, the instant claims provide a generically computer-implemented solution to a business-related or economic problem and are thus incomparable to the claims at issue in Enfish, McRO or DDR. The present case is different, 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 generic technology in a well-known environment, without any claim that the invention reflects an inventive solution to any computer specific problem.
Applicant cites the Kim Memorandum regarding integration into practical application. The Kim memorandum emphasizes the recitation of a specific technological improvement and not just automation of a business process using generic computers. The present claims improve how a business process is performed using a computer.
In Ex parte Desjardins, the claims are related to a specific improvement to machine learning models and to computer security architecture (improved authentication techniques), to ‘effectively learn new tasks in succession whilst protecting knowledge about previous tasks.’ In contrast, the instant claims do not improve the functioning of the computer. The claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem. Also, limiting the use of an abstract idea “‘to a particular technological environment’ does not confer patent eligibility as this cannot be considered an improvement to computer or technology.
The claims as a whole do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are generic computer components claimed to perform their basic functions. The processor is a general-purpose processor that performs general-purpose functions. The recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer (using the processor as a tool to implement the abstract idea). Taking the additional elements individually and in combination, each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The claim does not amount to significantly more than the abstract idea itself. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply a generic recitation of a computer processor performing its generic computer functions. Accordingly, claims are ineligible.
For these reasons the rejection under 35 USC § 101 directed to non-statutory subject matter set forth in this office action is maintained.
Conclusion
Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hani Kazimi whose telephone number is (571) 272-6745. The examiner can normally be reached Monday-Friday from 8:30 AM to 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas can be reached on (571) 270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Respectfully Submitted
/HANI M KAZIMI/
Primary Examiner, Art Unit 3691
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