DETAILED ACTION
Status of the Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The following is in response to an amendment dated February 2, 2024. Claims 1-2, 5, 13 and 20 are amended. Claims 1-20 are pending. All pending claims are examined.
Response
Art Rejection and 101 Analysis
Art Rejection
In light of remarks and the amendments to the claims, the art rejection is withdrawn.
101 Analysis
101 In line with the "2019 Revised Patent Subject Matter Eligibility Guidance," which explains how we must analyze patent-eligibility questions under the judicial exception to 35 U.S.C. § 101. 84 Fed. Reg. 50-57 ("Revised Guidance"), the first step of Alice (i.e., Office Step 2A) consists of two prongs. In Prong One, we must determine whether the claim recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural phenomenon. 84 Fed. Reg. at 54 (Section III.A. I.). If it does not, the claim is patent eligible. Id.
An abstract idea must fall within one of the enumerated groupings of abstract ideas in the Revised Guidance or be a "tentative abstract idea, "with the latter situation predicted to be rare. Id. at 51-52 (Section I, enumerating three groupings of abstract ideas), 54 (Section III.A. I., describing Step 2A Prong One), 56-57 (Section III.D., explaining the identification of claims directed to a tentative abstract idea).
If a claim does recite a judicial exception, the next is Step 2A Prong Two, in which we must determine if the "claim as a whole integrates the recited judicial exception into a practical application of the exception." Id. at 54 (Section II.A.2.) If it does, the claim is patent eligible. Id.
If a claim recites a judicial exception but fails to integrate it into a practical application, we move to the second step of Alice (i.e., Office Step 2B). to evaluate the additional limitations of the claim, both individually and as an ordered combination, to determine whether they provide an inventive concept. Id. at 56 (Section III.B.). In particular, we look to whether the claim:
• Adds a specific limitation or combination of limitations that are not well-understood, routine, conventional in the field, which is indicative that an inventive concept may be present; or
• simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
“In accordance with judicial precedent and in an effort to improve consistency and predictability, the 2019 Revised Patent Subject Matter Eligibility Guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes the following groupings of subject matter, when recited as such in a claim limitation(s) (that is, when recited on their own or per se):
(b) Certain methods of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)1 – See Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019 / p.52.
Independent Claim 13, which is illustrative of the independent claims including 1 and 20 and recites:
“13. A method comprising:
maintaining, by a processor of an electronic device, within a personal knowledge base (PKB), a payee contact having at least one payee attribute of a payee used for a future payment;
receiving, via a communication subsystem of the electronic device, information of a change in electronic payee attribute associated with a payment account; and
in response to identifying a reported change of the at least one payee attribute associated with the future payment to the payee associated with a transaction:
generating and presenting a notice, via at least one output device of an electronic device, of the reported change required in at least one payee attribute associated with the transaction; and
in response to receiving a user input to record a corresponding change to the at least one payee attribute corresponding to the reported change, updating the at least one payee attribute stored in the payee contact in the PKB [[for]] the at least one payee attribute associated with the future payment for the transaction, wherein the PKB is updated”
2A, Prong One.
The invention is directed to a method of organizing human activity that is a fundamental economic practice or and commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) of verifying that the details of a payee based on an evaluation predefined criteria to determine if certain conditions are satisfied for notifications to be issued to the payee at the correct address (see App Spec. paras. 0010-0015, 0032-0039,0043-0051).
This is a process whereby transaction details are exchanged between transacting parties or sources. Reviewing the different factors serve as the basis for updating the payee’s details based on meeting the predefined criteria as recited in the claims are nothing more than gathering data and applying a set of instructions to the data.
2A- Prong Two
Beyond the abstract idea, the additional elements such as processors (see App. Spec. paras. 0015, 0024; see also para. 0033), there does not appear to be any technology being improved.
They are described at a high level of generality where each step does no more than require a generic computer to perform generic computer functions. Absent is any support in the specification that the claims as recited require specialized computer hardware or other inventive computer components.
McRo looked at the specificity of the rules which involved a specific improvement in the 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 not in the abstract idea (see McRo p. 21-22).
The specification noted that the human artists did not use the claimed rules but rather relied on subjective determination. The court relied on the specification’s explanation of the how the claimed rules enabled the automation of the specific animation tasks, automation of tasks that previously could not be automated and the incorporation of the particular claimed rules in the computer animation that improved the existing technological process as opposed to where the computer was merely used as a tool to perform the existing process. (Alice).
The McRo decision specifically pointed out that the specific animation technique used was different and unique in comparison to other animation techniques used, and therefore the invention was not simply automating known manual animation techniques, but was using new techniques, and therefore even if a generic computer implemented the animation techniques the computer was improved by its ability to perform technically improved animation.
Unlike, McRO, the present claims contain improvements to the context which is the update is made and not one of a technology or technological field.
Although the claims recite:
receiving, via a communication subsystem of the electronic device, information of a change in electronic payee attribute associated with a payment account; and
in response to identifying a reported change of the at least one payee attribute associated with the future payment to the payee associated with a transaction:
generating and presenting a notice, via at least one output device of an electronic device, of the reported change required in at least one payee attribute associated with the transaction;.”
As recited it suggests it suggests evaluating data albeit from multiple sources, absent is any support for the claims as recited for how it is an improvement to the computer or technical field beyond automating the evaluation and notification process.
In particular, there is a lack of improvement to a computer or technical field of data updating because the data processing performed merely uses a system as a tool to perform an abstract idea- see MPEP 2106.05(f). Therefore, the claims are directed to an abstract idea. The invention as claimed recites a generic computer component and the claim does not pass step 2A, Prong Two.
Step 2B; The next step is to identify any additional limitations beyond the judicial exception. The additional element is processor (see App. Spec. paras. 0033-0035) which is disclosed in the specification at a high degree of generality. Absent is any genuine issue of material fact that this component requires any specialized hardware or inventive computer component.
Likewise, the dependent claims 2-12, 14-19 provide additonal details about the types of data elements collected or output generated. For example, claims 14-16 provide additional descriptions of the type of conditions factored into the evaluation process and do not address the issues raised in the independent claims and therefore do not amount to a technical improvement or an integration of a practical application.
In conclusion, merely “applying” the exception using generic computer components cannot provide an inventive concept. Therefore, the claims 1-20 are not patent eligible under 35 USC 101.
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 (abstract idea) without significantly more.
The claim recites abstract idea of organizing human activities. This judicial exception is not integrated into a practical application and the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Analysis
The claims are directed to one or more of the following statutory categories: a process, a machine, a manufacture, and a composition of matter.
Independent Claim 13, which is illustrative of the independent claims 1 and 20 recite:
“13. A method comprising:
maintaining, by a processor of an electronic device, within a personal knowledge base (PKB), a payee contact having at least one payee attribute of a payee used for a future payment;
receiving, via a communication subsystem of the electronic device, information of a change in electronic payee attribute associated with a payment account; and
in response to identifying a reported change of the at least one payee attribute associated with the future payment to the payee associated with a transaction:
generating and presenting a notice, via at least one output device of an electronic device, of the reported change required in at least one payee attribute associated with the transaction; and
in response to receiving a user input to record a corresponding change to the at least one payee attribute corresponding to the reported change, updating the at least one payee attribute stored in the payee contact in the PKB [[for]] the at least one payee attribute associated with the future payment for the transaction, wherein the PKB is updated”
Taking the broadest reasonable interpretation, the invention is directed to a method of organizing human activity that is a fundamental economic practice of financial transaction verification based on an evaluation predefined criteria to determine if certain conditions are satisfied for notifications to be issued.
Besides reciting the abstract idea, the remaining claim limitation is the computing device or processor which is described in terms that suggest it comprises generic computer components (see App Spec. para. 0020-0029, 0033; see also Figs. 1-2).
Further, the dependent 2-12 and 14-19 recite additional details about the information required for processing the request. For example, claims 14-16 provide additional description of the elements of the verification request, however, the recited abstract idea is not integrated into a practical application.
In particular, the claims only recite generic computer to process and transmit the submitted information used in the maintaining, identifying and generating process. These additional elements are recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception using generic computer components.
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. Therefore, 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 amount to no more than mere instructions to apply the abstract idea using generic computer components. In conclusion, merely “applying” the exception using generic computer components cannot provide an inventive concept. Therefore, Independent claims 1, 13 and 20 and the dependent claims 2-12 and 14-19 are not patent eligible under 35 USC 101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Benkreira, USP No. 11514414, Performing An Action Based On Predicted Information
Bain, USP Pub. No. US 20110302085, Methods And Systems For Verifying Customer Supplied Financial Account Information Using Debit And Credit Transactions.
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 CHIKA OJIAKU whose telephone number is (571)270-3608. The examiner can normally be reached Monday - Friday: 8.30 AM -5:00 PM EST.
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/CHIKAODINAKA OJIAKU/Primary Examiner, Art Unit 3696
1 Interval Licensing, 896 F.3d at 1344–45 (concluding that ‘‘[s]tanding alone, the act of providing someone an additional set of information without disrupting the ongoing provision of an initial set of information is an abstract idea,’’ observing that the district court ‘‘pointed to the nontechnical human activity of passing a note to a person who is in the middle of a meeting or conversation as further illustrating the basic, longstanding practice that is the focus of the [patent ineligible] claimed invention.’’); Voter Verified, Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 1385 (Fed. Cir. 2018) (finding the concept of ‘‘voting, verifying the vote, and submitting the vote for tabulation,’’ a ‘‘fundamental activity’’ that humans have performed for hundreds of years, to be an abstract idea);
In re Smith, 815F.3d 816, 818 (Fed. Cir. 2016) (concluding that ‘‘[a]pplicants’ claims, directed to rules for conducting a wagering game’’ are abstract).
14 If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir . 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016)(holding that computer-implemented method for ‘‘anonymous loan shopping’’ was an abstract idea because it could be ‘‘performed by humans without a computer’’); Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (‘‘Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.’’); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding that the incidental use of ‘‘computer’’ or ‘‘computer readable medium’’ does not make a claim otherwise directed to process that ‘‘can be performed in the human mind, or by a human using a pen and paper’’ patent eligible); id. at 1376 (distinguishing Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010), as directed to inventions that ‘‘could not, as a practical matter, be performed entirely in a human’s mind’’). Likewise, performance of a claim limitation using generic computer components does not necessarily preclude the claim limitation from being in the mathematical concepts grouping, Benson, 409 U.S.at 67, or the certain methods of organizing human activity grouping, Alice, 573 U.S. at 219–20 - – See Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019
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