DETAILED ACTION
Status of the Claims
This office action is submitted in response to the amendment filed on 1/23/26.
Examiner notes that this application is a continuation of 17/258325, which is now abandoned.
Claims 1, 3, and 5 have been amended.
Therefore, claims 1-5 are currently pending and have been examined.
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 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 1-5 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.
The claimed invention falls within the statutory category of a process (claim 1), a machine (claim 3), and an article of manufacture (claim 5), thus satisfying Step 1 of the Alice test. See MPEP 2106.03.
Next, independent claims 1, 3, and 5, in part, describe an invention comprising: determining whether a suitability score falls within a suitability score range based on a suitability tolerance; generating an acceptability indicator based on the determination; and controlling processing of a subscription-based transaction according to the acceptability indicator. As such, the invention is directed to the abstract idea of determining whether an entity is suitable to engage in a transaction based on a calculated score, which, pursuant to the 2019 Eligibility Guidance, is aptly categorized as a method of organizing human activity and a mental process. Therefore, under Step 2A, Prong One, the claims recite a judicial exception.
Next, the aforementioned claims recite additional elements that are associated with the judicial exception, including: receiving a selection of a transaction objective and a suitability tolerance; storing the transaction objective and the suitability tolerance in association with a first entity; receiving a transaction request from a second entity; retrieving the stored transaction objective; and retrieving the stored suitability tolerance. Examiner understands these limitations to be insignificant extrasolution activity. (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Cf. Diamond v. Diehr, 450 U.S. 175, 191-192 (1981) ("[I]nsignificant post-solution activity will not transform an unpatentable principle into a patentable process.")).
The aforementioned claims also recite additional elements including an "interaction engine" for sending, receiving, and processing data; a "memory" to store data; a "non-transitory computer-readable storage medium" for storing executable instructions; and a "communications network" for transmitting data. These limitations are recited at a high level of generality, and appear to be nothing more than generic computer components. Claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110 USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at 1984.
Furthermore, looking at the elements individually and in combination, under Step 2A, Prong Two, the claims as a whole do not integrate the judicial exception into a practical application because they fail to: improve the functioning of a computer or a technical field, apply the judicial exception in the treatment or prophylaxis of a disease, apply the judicial exception with a particular machine, effect a transformation or reduction of a particular article to a different state or thing, or apply the judicial exception beyond generally linking the use of the judicial exception to a particular technological environment. Rather, the claims merely use a computer as a tool to perform the abstract idea(s), and/or add insignificant extra-solution activity to the judicial exception, and/or generally link the use of the judicial exception to a particular technological environment (e.g., generic computers connected to a communications network).
Next, under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, when considered both individually and as an ordered combination, do not amount to significantly more than the abstract idea. Furthermore, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. Simply put, there is no indication that the combination of elements improves the functioning of a computer (or any other technology), and their collective functions merely provide conventional computer implementation.
Additionally, pursuant to the requirement under Berkheimer, the following citations are provided to demonstrate that the additional elements amount to activities that are well-understood, routine, and conventional. See MPEP 2106.05(d).
Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Receiving and transmitting data over a communications network, Affinity Labs of Texas v. DIRECTV, LLC, 838 F.3d 1253, 1257, 120 USPQ2d 1201, 1204 (Fed. Cir. 2016).
Thus, taken alone and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea), and are ineligible under 35 USC 101.
Claims 2 and 4 are dependent on the aforementioned independent claims, and include all the limitations contained therein. These claims do not recite any additional technical elements, and simply disclose additional limitations that further limit the abstract idea with details regarding how the suitability score is generated based on past behavior of the second entity. Thus, the dependent claims merely provide additional non-structural details that fail to meaningfully limit the claims or the abstract idea(s).
Therefore, claims 1-5 are not drawn to eligible subject matter, as they are directed to an abstract idea without significantly more.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-5 are rejected under 35 U.S.C. § 103 as being unpatentable over Celka (US20130173450) in view of Zalik (US20080177655).
Claims 1, 3, and 5: Celka discloses a method, system, and non-transitory computer readable medium comprising:
"receiving, at the interaction engine from a second entity connected to the communications network, a transaction request containing an identifier associated with the second entity, the transaction request including a request to initiate a subscription-based transaction with the first entity" (Paragraphs 0030, 0050, 0052, 0066, 0068; Fig. 7. The system receives an application for a credit account or credit data from an applicant (i.e., the second entity) via a network (¶0066: "an application for a credit account or a consumer's credit data is received from a third-party source for example, an applicant"). Celka explicitly identifies cellular phone companies and utility service providers as first entities using the system (¶0068: "a cellular phone company can use the never-pay data filters/models application system to determine whether to require a deposit from a new consumer"; ¶0030: "those entities providing services, such as utility services, phone services, and the like"), such that the received application constitutes a transaction request from the second entity to initiate a subscription-based transaction — i.e., phone or utility service — with the first entity (the phone or utility company). The identifying information contained in the application serves as the identifier associated with the second entity (¶0052: "the never-pay data filters/models application system receives individuals/customers data, including without limitation identification and/or demographic information/data about the individuals/customers").);
"obtaining at the interaction engine a suitability score for the second entity based on the identifier and the transaction objective" (Paragraphs 0050, 0052; Fig. 4, Fig. 5. The system uses the consumer's identifying information to retrieve the consumer's credit data and applies the developed never-pay data filters, models, and/or profiles to that data to determine a never-pay score predicting the likelihood of the consumer never making a payment, the applicable model being selected based on the client's account and type of transaction (¶0050: "the selection of an appropriate data filter can be based on various factors such as price, speed of response, geographic region, the client's account"), such that the suitability score is obtained based on the identifier and the transaction objective (i.e., the first entity's objective of identifying never-pay consumers for subscription-based services).);
"retrieving, at the interaction engine, the stored transaction objective, based on the subscription-based transaction indicated in the transaction request" (Paragraph 0050; Fig. 4. The never-pay data filters/models application system retrieves and applies the applicable never-pay model from the data filter repository based on the type of transaction and the client's account (¶0050: "the selection of an appropriate data filter can be based on various factors such as...the client's account"), the applicable model constituting the stored transaction objective associated with the subscription-based service provider's business goal of identifying and avoiding never-pay consumers.);
"retrieving, at the interaction engine, the stored suitability tolerance associated with the objective, the suitability tolerance further associated with a suitability score range" (Paragraphs 0066-0067; Fig. 7. The system retrieves a threshold level associated with the never-pay score to determine whether to approve or deny the transaction (Paragraph 0066: "the never-pay data filters/models application system determines whether the never pay score is above a threshold"), the threshold constituting the suitability tolerance associated with a suitability score range.);
"determining, at the interaction engine, whether the suitability score falls within the suitability score range based on the suitability tolerance" (Paragraphs 0066-0067; Fig. 7. The system determines whether the applicant's never-pay score is above or below the predetermined threshold, constituting a determination of whether the suitability score falls within the suitability score range based on the suitability tolerance.); and
"generating, at the interaction engine, an acceptability indicator based on the determination; and controlling processing of the requested subscription-based transaction according to the acceptability indicator" (Paragraphs 0066-0068; Fig. 7. Based on whether the never-pay score satisfies the threshold, the system generates an approval or denial determination (i.e., the acceptability indicator) and controls processing of the transaction accordingly — for example, approving the subscription-based service request or sending a denial correspondence, or determining whether to require a deposit from the new consumer seeking phone service (Paragraph 0068)).
Celka fails to explicitly disclose: receiving, at the interaction engine, a selection of a transaction objective and a suitability tolerance associated with the transaction objective from a first entity connected to the communications network, the suitability tolerance reflecting a target degree of conformity with the transaction objective; and storing, at the interaction engine, the transaction objective and the suitability tolerance in association with the first entity.
Zalik, however, discloses "receiving, at the interaction engine, a selection of a transaction objective and a suitability tolerance associated with the transaction objective from a first entity connected to the communications network, the suitability tolerance reflecting a target degree of conformity with the transaction objective; and storing, at the interaction engine, the transaction objective and the suitability tolerance in association with the first entity" (Paragraphs 0006, 0034, 0043-0044; Fig. 4. Zalik discloses a credit management system wherein the creditor (i.e., the first entity) specifies pre-determined credit approval rules and a pre-established acceptable range of trade credit scores reflecting the creditor's transaction objective and suitability tolerance (Paragraph 0006: "comparing the trade credit score with a pre-established acceptable range of trade credit scores"; Paragraph 0044: "the credit approval module 200 compares the scores to pre-determined credit approval rules specified by the creditor"), the pre-established acceptable score range constituting the suitability tolerance associated with a suitability score range and reflecting a target degree of conformity with the transaction objective (i.e., the creditor's goal of approving only creditworthy buyers). These creditor-specified rules and score ranges are stored in the system's database in association with the creditor (i.e., the first entity) (¶0034: "the credit management system 95 is configured for retrieving data from, and storing data to, a database 30"; Paragraph 0044).);
Therefore, it would have been obvious to one of ordinary skill in the art prior to the filing date of the invention to combine the first-entity-configurable objective and suitability tolerance framework of Zalik with the never-pay scoring and transaction evaluation system of Celka. One would have been motivated to do so because Celka's threshold criteria are generically predetermined without regard to the specific business objectives of individual service providers. Incorporating Zalik's framework would allow each subscription-based service provider to specify and store its own transaction objective and acceptable score range, thereby providing a configurable, first-entity-controlled mechanism for evaluating the suitability of prospective subscribers prior to initiating subscription-based transactions.
Claims 2 and 4: Celka discloses a method wherein the obtaining of the suitability score comprises generating the suitability score based on past behavior of the second entity (Paragraphs 0008, 0047-0050; Fig. 4, Fig. 5. The never-pay score is generated based on the consumer's credit bureau data, tradeline data, and historical balance data — all directly reflecting the past financial behavior of the second entity (¶0008: "a data storage device storing a plurality of consumer records comprising credit bureau data, tradeline data, historical balance data, and demographic data"; ¶0047: "the never-pay records data includes without limitation consumer demographic, credit, and other data for example, bureau data, tradeline data, historical balance data for a period of time").);
The rationale for combining Zalik with Celka is articulated above and incorporated herein by reference.
Other Relevant Prior Art
Though not cited in the above rejections, the following references are nevertheless deemed to be relevant to Applicant’s disclosures:
Song et al. (8412593), directed to a method of matching credit cards to credit worthy consumers.
Witchel et al. (20090076971), directed to a method of automated lending.
Malcolms et al. (10475048), directed to a method for managing a customer loyalty reward program.
Oskolkov et al. (20140074688), directed to a method for observing and interpreting behaviors to generate scores.
Response to Arguments
Applicant’s arguments regarding the sufficiency of the claims under 35 USC 101 are unpersuasive.
First, Applicant contends that the claims are directed to patentable subject matter because they are directed to a "system of machines," namely a communications network of computing devices. This argument is not persuasive because it conflates Step 1 of the Alice test with the Step 2A analysis. Examiner has already acknowledged that the claims satisfy Step 1 of the Alice test, as the claimed invention falls within the statutory category of a process (claim 1), a machine (claim 3), and an article of manufacture (claim 5). See MPEP 2106.03. The issue is not whether the claims fall within a statutory category, but whether the claims are directed to a judicial exception without significantly more under Step 2A and Step 2B of the Alice test. The mere recitation of generic computer components such as an interaction engine, a memory, and a communications network does not render the claims patent-eligible. Alice Corp., 134 S. Ct. at 2358, 110 USPQ2d at 1983.
Next, Applicant contends that the claims are integrated into a practical application because the interaction engine "enhances the operation of the communications network as a whole" by improving security. This argument is not persuasive. The claims do not recite any improvement to the security of a communications network. Rather, the claims recite generic computer components performing the abstract idea of determining whether an entity is suitable to engage in a transaction based on a calculated score. Any alleged security improvement is a downstream effect of performing the abstract idea, not a technical improvement to the network itself. Arguments based on the specification alone are unpersuasive where, as here, the claims do not recite the alleged improvement. See Accenture, 728 F.3d at 1344, 108 USPQ2d at 1179. Furthermore, simply using a computer network as the environment in which the abstract idea is performed does not integrate the abstract idea into a practical application. See Alice Corp., 134 S. Ct. at 2358, 110 USPQ2d at 1983.
Finally, Applicant contends that the claims improve resource utilization within the communications network by pre-screening entities before initiating transactions, thereby reducing unnecessary bandwidth consumption and exception handling traffic. This argument is not persuasive. The purported reduction in network load is merely a downstream effect of performing the abstract idea itself — determining whether an entity is suitable for a transaction. Pre-screening to avoid unsuitable transactions is the very essence of the abstract idea, not a technical improvement to the network. This is distinguishable from cases where claims recite a specific technical improvement to computer functionality. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336, 118 USPQ2d 1684, 1689 (Fed. Cir. 2016) (claims directed to a specific improvement to computer memory structures found eligible). Here, the claims recite no such improvement, as they merely use generic computer components to perform the abstract idea of suitability-based transactional decision-making.
Therefore, for at least these reasons, the rejection under 35 USC 101 is sustained.
Next, Applicant’s arguments regarding the alleged shortcomings of the prior art references are unpersuasive.
Applicant argues that neither Celka nor Zalik teaches receiving a selection of a transaction objective and a suitability tolerance associated with the transaction objective from a first entity. Applicant specifically attacks Zalik at paragraphs 0006, 0034, 0043, 0060, and 0073, arguing that none of these paragraphs teach a transaction objective associated with a first entity or a tolerance based on such an objective. However, Applicant's arguments fail to address Zalik at paragraph 0044, which is dispositive.
Zalik at paragraph 0044 explicitly discloses that "the credit approval module 200 compares the scores to pre-determined credit approval rules specified by the creditor." The creditor is the first entity. The pre-determined credit approval rules are specified — i.e., selected and transmitted — by the creditor (first entity) to the system. These rules, which include pre-established acceptable score ranges (Paragraph 0006), constitute a transaction objective associated with the first entity (i.e., the creditor's objective of approving only creditworthy buyers) and a suitability tolerance reflecting a target degree of conformity with that objective (i.e., the pre-established acceptable range of trade credit scores that defines what constitutes conformity with the credit approval objective). These creditor-specified rules and ranges are stored in the system's database in association with the creditor, i.e., the first entity (Paragraph 0034).
Applicant's argument that Zalik's pre-established score range is a "suitability score range" but not a "suitability tolerance associated with a transaction objective" is unpersuasive. The claims themselves define the suitability tolerance as being "further associated with a suitability score range" — meaning the tolerance and the score range are related concepts, not mutually exclusive. Zalik's pre-established acceptable range of trade credit scores is the suitability tolerance, implemented as a score range, that reflects the creditor's target degree of conformity with its transaction objective (creditworthy buyer approval). The fact that Zalik does not use the specific words "objective" or "tolerance" is not determinative. Under the broadest reasonable interpretation, Zalik's creditor-specified credit approval rules and acceptable score ranges read squarely on the claimed transaction objective and suitability tolerance limitations.
Furthermore, Applicant's concession that Celka does not teach the transaction objective and suitability tolerance limitations associated with the first entity actually supports the rejection as drafted — these limitations are explicitly attributed to Zalik in the combination, not to Celka. The combination of Celka (which provides the never-pay scoring and transaction evaluation framework) with Zalik (which provides the first-entity-configurable objective and tolerance framework) renders the claimed subject matter obvious for the reasons set forth in the rejection.
Finally, Applicant argues that a person of ordinary skill in the art (PHOSITA) could not arrive at the claimed subject matter without an inventive step. However, this argument is premised entirely on the faulty predicate that neither Celka nor Zalik teaches the transaction objective and suitability tolerance limitations. As established above, paragraph 44 of Zalik explicitly teaches a first entity (creditor) specifying and the system storing pre-determined credit approval rules and acceptable score ranges — which read on the claimed transaction objective and suitability tolerance. Once these teachings are properly recognized, Applicant's argument that an inventive step is required collapses, as the combination of Celka and Zalik with a motivation to combine (allowing subscription-based service providers to configure their own suitability criteria rather than relying on generic thresholds) would have been well within the capability of a PHOSITA.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 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.
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/CHRISTOPHER C BUSCH/Examiner, Art Unit 3621
/WASEEM ASHRAF/Supervisory Patent Examiner, Art Unit 3621