Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
This action is in response to the application filed November 20, 2024. Claims 1-10 are pending and examined.
Specification
Applicant is required to update the status (pending, allowed, etc.) of all parent priority applications in the first line of the specification. The status of all citations of US filed applications in the specification should also be updated where appropriate.
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 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite the abstract idea of “a client screening engine adapted to obtain client account data based on one or more criteria” which is a mental process (concept performed in the human mind an evaluation or judgement). This judicial exception is not integrated into a practical application and does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Under the 2019 Patent Eligibility Guidance (PEG) Step 1 analysis, it must first be determined whether the claims are directed to one of the four statutory categories of invention (i.e., process, machine, manufacture, or composition of matter). Applying Step 1 of the analysis for patentable subject matter to the claims, it is determined that claims 1-10 are directed to the statutory category of a machine. Therefore, we proceed to Step 2A, Prong 1.
Under the 2019 PEG Step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more designated categories or “buckets” of patent ineligible subject matter (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability.
Claims 1-10
Regarding claim 1, the claims recites an abstract idea of “a client screening engine adapted to obtain client account data based on one or more criteria”. These limitations are a mental process of screening data to establish whether a client is in security compliance. That is judgment being reached based on the data. Therefore, the analysis must proceed to Step 2A, Prong 2.
Under the 2019 PEG Step 2A, Prong 2 analysis, it must be determined whether the identified, recited abstract idea includes additional limitations that integrate the abstract idea into a practical application.
Regarding claim 1, under its broadest reasonable interpretation, the additional elements of “a verification engine adapted to verify client account information; and
a graphical user interface adapted to selectively display client account information and verification status information for one or more selected clients on a screen.” are recited at such a high level of generality that they amount to nothing more than mere instructions to apply the exception to the abstract idea using generic computing components. The claim does not recite how to verify client information. Furthermore, “ a verification engine adapted to verify client account information; and a graphical user interface adapted to selectively display client account information and verification status information for one or more selected clients on a screen.” are nothing more than insignificant extra-solution activities describing receiving, gathering, transmitting, and storing data. (See MPEP 2106.05(g)). Finally, the additional limitations of “a verification” are nothing more than generic computing components that serve as conduits to practice the abstract idea because they merely perform standard data processing, transmission, storage, and gathering functions. (See MPEP 2106.05(f); see also Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161, 1169 (Fed. Cir. 2019).
Under the 2019 PEG Step 2B analysis, the additional elements are evaluated to determine whether they amount to something “significantly more” than the recited abstract idea (i.e., an innovative concept).
Regarding claim 1, the additional elements, considered both individually and in combination, amount to no more than mere instructions to apply the abstract idea using generic computing components and insignificant extra-solution activities. The specification does not allege that the database or graphical user interface are performing anything more than standard data storage, processing, and gathering steps. Also, receiving, displaying, analyzing, gathering, and transmitting data over a network have also been recognized by the courts as well understood, routine, and conventional activities (See Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1321, 120 USPQ2d 1353, 1362 (Fed. Cir. 2016); OIP Techs„ Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015); buySAFE, Inc. v. Google, Inc., 765 F,3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed, Cir. 2014); Solutran, 931 F.3d at 1169. In conclusion, the claim is not patent eligible.
Claims 2-10 are rejected under 35 U.S.C. under a similar rationale as claim 1. The additional elements in claims 2-10 do not integrate the judicial exception into a practical application, nor do they amount to significantly more. They merely include additional data analysis steps recited at a high level of generality such that they amount to nothing more than mere instructions to apply the abstract idea (claim 4 “client screening engine is adapted to associate client account data received from the account custodian with account data stored within the database using a unique client identification tag.”; claim 6 “said graphical user interface includes a means for filtering client account data received from the account custodian based on one or more filtering criteria and displaying a filtered subset of the client account data on the screen”; claim 10 “wherein said system is a computer software system”); and additional insignificant extra-solution activities (claim 2 “wherein said client screening engine is adapted to automatically update a database each time a new account is opened for a new or existing client”; claim 3 “wherein said client screening engine is adapted to automatically update a database when a name and/or address change is received for at least one client”; claim 5 “wherein said graphical user interface includes a verification status field”; claim 7 “wherein said graphical user interface includes an account type field”; claim 8 “wherein said graphical user interface includes an action-to-take field”; claim 9 “action-to-take field includes a selection means for submitting client identifying information for verification, a selection means for bypassing verification of a client's identity, and a selection means for suppressing client identifying information for verification”). Claims 1-10 are not patent eligible.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1, 2, and 4-10, are rejected under 35 U.S.C. 103(a) as being unpatentable over Tibor (U.S. Pat. No. 7,349,557) in view of Melchione (U.S. Pat. No. 5,930,764).
As per claim 1 Tibor teaches:
A system for screening clients for security compliance, the system comprising:
a client screening engine adapted to filter client account data based on one or more filtering criteria; (see at least Tibor col. 12 lines 20-45. Selectively running reports on a customer or customers.)
a verification engine adapted to verify client account information and verification status information; (see at least Tibor col. 6 lines 6-25 teaching verification being requested) and
a graphical user interface adapted to selectively display client account information and verification status information for one or more selected clients on a screen.
While Tibor is not explicit about using a graphical user interface to selectively display client account information such functionality is taught by Melchione. (see at least Melchione column 27 lines 3-12, column 3 lines 4-13, and Figure 5D) Therefore it would have been obvious to a person of ordinary skill in the art of accessing information from databases since it is solving known problems in known ways with an expectation of success.
As per claim 2 Tibor teaches:
The system of claim 1, wherein said client screening engine is adapted to automatically update a database each time a new account is opened for a new or existing client. (see at least Tibor column 4 lines 4-7, column 6 lines 6-26, column 9 lines 29-38, column 12 lines 46-63. The bank computers are updated about when an account is created otherwise they could not validate checks written on those new accounts.)
As per claim 4 Tibor teaches:
The system of claim 2, wherein said client screening engine is adapted to associate client account data received from the account custodian with account data stored within the database using a unique client identification tag. (see at least Tibor col. 6 lines 6-25 teaching checks which have unique identification tags that associate a client)
As per claim 5 Tibor teaches:
The system of claim 1, wherein said graphical user interface includes a verification status field. (see at least Tibor col. 6 lines 6-25 verification system provides the verification status.)
As per claim 6 while Tibor is not explicit about using a graphical user interface to selectively display client account information such functionality is taught by Melchione. (see at least Melchione column 27 lines 3-12, column 3 lines 4-13, and Figure 5D) Therefore it would have been obvious to a person of ordinary skill in the art of accessing information from databases since it is solving known problems in known ways with an expectation of success.
As per claim 7 while Tibor is not explicit about using a graphical user interface to selectively display client account information such functionality is taught by Melchione. (see at least Melchione column 27 lines 3-40, column 3 lines 4-13, and Figure 5D. Determines “profile of households, customers, and/or accounts most likely”) Therefore it would have been obvious to a person of ordinary skill in the art of accessing information from databases since it is solving known problems in known ways with an expectation of success.
As per claim 8 while Tibor is not explicit about using a graphical user interface to selectively display client account information such functionality is taught by Melchione. (see at least Melchione column 27 lines 3-40, column 3 lines 4-13, and Figure 5D. Determining “profile of households, customers, and/or accounts most likely” is an action to take.) Therefore it would have been obvious to a person of ordinary skill in the art of accessing information from databases since it is solving known problems in known ways with an expectation of success.
As per claim 9 Tibor teaches:
The system of claim 8, wherein said action-to-take field includes a selection means for submitting client identifying information for verification, a selection means for bypassing verification of a client's identity, and a selection means for suppressing client identifying information for verification. (see at least Tibor column 5 lines 61-column 6 line 5. Information provided from the verification system.)
As per claim 10 Tibor teaches:
The system of claim 1, wherein said system is a computer software system. (see at least Tibor column 11 lines 44-53)
Claim 3 is rejected under 35 U.S.C. 103(a) as being unpatentable over Tibor (U.S. Pat. No. 7,349,557) in view of Melchione (U.S. Pat. No. 5,930,764) and Sunstein (U.S. Patent 6,985,887 B1).
As per claim 3 while Tibor is not explicit about updating a database for changes of address it is taught in the art as shown by Sunstein. (see at least Sunstein abstract, column 5 lines 1-29, column 11 lines 50-column 12 line 10 ) Therefore it would have been obvious to a person of ordinary skill in the art at the time the invention was made since it was solving a known problem in a known way with an expectation of success.
Conclusion
Any inquiry concerning this communication from the examiner should be directed to Scott S. Trotter, whose telephone number is 571-272-7366. The examiner can normally be reached on 8:30 AM – 5:00 PM, M-F.
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/SCOTT S TROTTER/Primary Examiner, Art Unit 3696