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 office action is in response to an amendment filed on 6/22/26 for patent application 18/969,656.
Claims 1-6, 8-18, 22-26 are amended.
Claims 7,20 are cancelled.
Claim 27-28 are new.
Claims 1-6, 8-19, 21-28 are pending.
Note: Due to time constraints, Examiner is unable to schedule an interview for this application at the present time.
RESPONSE TO ARGUMENTS
Applicant argues#1
Claims objections
In the Office Action the Examiner requested to remove the "_" in each step of the method. The amendment to the claims overcomes the objection.
Examiner Response
The objections for claims 1-14 are hereby withdrawn.
Applicant argues#2
In the Office Action, claim 1 has been rejected under 35 USC 112(b) due to the wording
"said characteristic is suitable for and/or destined to and/or configured to The new wording of claim 1 recites that "said characteristic determines The rejection is thus overcome.
The Office Action recites "Claim 1 further recites, "wherein said element is different from
an element traditionally used for a payment, preferably is different from " Actually this
subject matter is part of claim 2. Anyway, since the preferable clause of claim 2 has been excised, the rejection is thus overcome.
Claim 3 has been rejected as the Examiner did not recognize what a "roughness" device is.
Claim 3 recited "a roughness or weight identifier", and it is apparent that the "identifier" was associated to both the roughness or weight. The new wording of claim 3 recites "roughness identifier or weight identifier", thus the rejection is overcome.
The amendments carried out to the remaining dependent claims, make them meet the
requirements of 35 USC §112.
Examiner Response
Based on the amendments to the claims, the 35 U.S.C 112 rejections are hereby withdrawn.
Applicant agues#3
Amended claim 1 recites, inter alia, a computing system comprising at least one
processor, a non-transitory memory, an acquisition device "configured to identify a characteristic of a real or virtual element," and a remote verification data processing unit in communication with the processor "over a computer network." Operating on that architecture, the claim recites:
(a) electronically acquiring, through the acquisition device, a characteristic of a real or
virtual element, "wherein said characteristic determines a univocal identification of said
element";
(b) electronically generating "a primary file containing at least characteristic electronic
data, univocally identifying said at least a characteristic of said element," and storing it in the non-transitory memory;
(c) providing the remote verification data processing unit with electronic access to
perform "an electronic comparison between at least a comparison file and said primary file," "said electronic comparison being carried out by said remote verification data processing unit";
and
(d) "a minimum threshold of similarity between the characteristic electronic data
stored in said primary file and the characteristic electronic data stored in said comparison
file, wherein said minimum threshold, when exceeded, is destined to force a logical identity between [those two data sets] and to authorize an arrangement of an electronic payment."
It is the combination of (a)-(d) - and specifically the threshold-of-similarity /
forced-logical-identity mechanism of (d) - that renders the claim patent-eligible.
Examiner Response
Examiner respectfully disagrees.
Examiner identifies the abstract elements in (a)-(d) that in combination are reciting the identified abstract idea (the abstract limitations are in bold below):
(a) electronically acquiring, through the acquisition device, a characteristic of a real or virtual element, "wherein said characteristic determines a univocal identification of said element";
(b) electronically generating "a primary file containing at least characteristic data, univocally identifying said at least a characteristic of said element," and storing it in the non-transitory memory;
(c) providing the remote verification data processing unit with electronic access to
perform "an electronic comparison between at least a comparison file and said primary file," "said electronic comparison being carried out by said remote verification data processing unit";
and
(d) "a minimum threshold of similarity between the characteristic electronic data
stored in said primary file and the characteristic electronic data stored in said comparison file, wherein said minimum threshold, when exceeded, is destined to force a logical identity between [those two data sets] and to authorize an arrangement of an electronic payment."
The additional elements (the acquisition device, non-transitory memory, remote verification data processing unit) are recited at a high level of generality and are being used as a tool to implement the steps of the identified abstract idea, see MPEP 2106.05(f).
The limitation, “forcing a logical identity between two data sets” is a commonly used data engineering technique, where two separate data sets are forced to share a single identical identity and is generally linking the identified abstract idea to a particular technological environment (database management techniques), see MPEP 2106.05(h).
The rejection is maintained.
Applicant argues#4
II. The Specification Confirms the Technical Problem the Claimed Threshold Solves
As the specification explains, a characteristic acquired from a real or virtual element does not produce identical electronic data on every acquisition. For real elements, the acquired data relies on capturing micro-physical anomalies such as "an imperfection, a concavity, a convexity, a local variation of reflectivity in the visible and/or infrared and/or ultraviolet spectrum, a roundness, a surface roughness" [as-filed application. page 22, lines 3-5]. For virtual elements, such as digital images, the captured data inherently possesses microscopic digital variations that cannot be perceived by the human eye, resulting in images that may only be "identical by 99.95% of the pixels" upon electronic comparison [as-filed application page 34, lines 16-17].
A conventional exact-match (identity) comparison applied to such variable data therefore yields false-negative readings, such that an element that is in fact the correct element fails authentication.
Amended claim 1 addresses this specific technical problem by reciting a minimum
threshold of similarity [as-filed application page 34, lines 20-30]- rather than an exact-match comparison - between the characteristic electronic data of the primary file and that of the comparison file, and by reciting that, when that threshold is exceeded, the system forces a logical identity between the two data sets and authorizes the electronic payment [as-filed application page 34, lines 26-30]. The claimed mechanism thus resolves inherently variable physical and digital acquisition data into a deterministic,
reliable authentication-and-authorization output. This is a concrete improvement to the operation of an electronic authentication system, not the organization of a human commercial activity.
Examiner Response
Examiner respectfully disagrees.
The spec sections that applicant refers to are reproduced below:
The characteristic 2 can be a characteristic naturally present on an element: an imperfection, a concavity, a convexity, a local variation of reflectivity in the visible and/or 5 infrared and/or ultraviolet spectrum, a roundness, a surface roughness. The characteristic 2 can therefore be a pre-existing characteristic.
To this end, an embodiment of the distributed computing environment, and of the method, here described provides the use of a minimum threshold Th of similarity, which is used to consider two elements 1 and/or two characteristics 2, and/or the characteristic electronic data 14d of two files, "identical".
This threshold is then a threshold of similarity between the characteristic electronic 25 data 14d univocally identifying said at least a characteristic 2 of said element 1, contained in said primary file 14, and the electronic characteristic data identifying said at least a characteristic of said comparison file 414.
The minimum threshold Th, when exceeded, is destined to determine and/or force a logical identity between the characteristic electronic data 14d identifying at least the characteristic of the comparison element 1 and stored in said comparison file 414 and the electronic characteristic data 14d identifying at least the characteristic 2 of the element and stored in said primary file 14 and to authorize an arrangement of an electronic payment through the payment or financial instrument 21, 22.
The cited parts of the specification disclose that the characteristic of the element is being compared to a minimum level of threshold) and when the minimum threshold is exceeded and it is subsequently determined that the payment is authorized, which are steps that are part of the identified abstract idea.
The limitation (forcing a logical identity between the characteristic electronic data and characteristic electronic data is a commonly used technique in database management (coercing or forcing separate data elements to share a single identical identity).
Applicant argued the claims present a technical improvement. Examiner does not find this argument persuasive. Applicant’s claims do not improve technology; the underlying technology remains unaffected by the claims. Applicant is addressing a business problem (steps for determining economic availability of a financial instrument) with a business solution. Applicant is merely using existing technology (for its intended purpose) to implement the business solution. Any improvements lie in the abstract idea itself, not in underlying technology.
The rejection is maintained.
Applicant argues#5
III. Step 2A, Prong One - The Claim Is Not Properly Characterized as a
"Commercial Interaction"
The "Certain Methods of Organizing Human Activity / Commercial Interaction" grouping
is directed to claims in which the financial activity itself is the invention - e.g., hedging risk in commodities markets (Bilski) or intermediated settlement (Alice) - claims from which, on removal of the computer, a recognizable human commercial practice remains.
The character of amended claim 1, considered as a whole, is not the financial transaction but the technical mechanism that authenticates a real or virtual element through a similarity-threshold comparison of electronic data and forces a logical identity to produce a deterministic authorization. The association with a payment instrument, the assignment of an economic availability, and the resulting authorization are the downstream application of that technical mechanism; they are not, individually or in ordered combination, a recognizable pen-and-paper or mental commercial practice. A human mind cannot "electronically acquire" micro-asperities, surface roughness, or pixel variances to generate an electronic data file. Applicant respectfully submits that the claim is therefore not directed to an abstract idea at Prong One.
Examiner Response
Examiner respectfully disagrees.
The claims have been analyzed as a whole and are properly classified as commercial interaction (see the section 101 rejection below).
Furthermore the office action did not characterized the claims as a Mental process.
Also see the Response to Applicant argues#3-4 above.
The rejection is maintained.
Applicant argues#6
Even assuming arguendo that claim 1 recites an abstract idea, the additional elements
integrate it into a practical application under MPEP §2106.05(a), (b) and (e).
A. The claim recites a specific improvement to authentication technology (Enfish /
McRO) A claim directed to a specific improvement in the way a computer or technical system operates integrates any abstract idea into a practical application.
The minimum-threshold-of-similarity limitation and the forced-logical-identity limitation
are a specific, defined technical solution to the specific technical problem identified in Part II. Like the particular rule set in McRO (specific rules resolving the limitations of manual lip-sync animation into deterministic outputs) and the self-referential table in Enfish (a specific data structure improving on conventional databases), the claimed similarity-threshold mechanism is a particular, recited means - not a result claimed at large - by which inherently variable acquisition data is resolved into a reliable authentication decision. The payment authorization that follows is the downstream application of that improvement, not the invention itself.
Examiner Response
Examiner respectfully disagrees.
Applicant is point to MPEP 2106.04(a):
To facilitate examination, the Office has set forth an approach to identifying abstract ideas that distills the relevant case law into enumerated groupings of abstract ideas. The enumerated groupings are firmly rooted in Supreme Court precedent as well as Federal Circuit decisions interpreting that precedent, as is explained in MPEP § 2106.04(a)(2). This approach represents a shift from the former case-comparison approach that required examiners to rely on individual judicial cases when determining whether a claim recites an abstract idea. By grouping the abstract ideas, the examiners’ focus has been shifted from relying on individual cases to generally applying the wide body of case law spanning all technologies and claim types.
The rejection is maintained.
Applicant argues#7
The Examiner's Prong-Two finding (Office Action, p. 11) was that the additional
elements are "recited at a high level of generality" and used "in their ordinary capacity."
Amended claim 1 recites a specific technical role for each element that is not its ordinary capacity:
Acquisition device
"Configured to identify a characteristic of a real or virtual element"; through it the
method "electronically acquires" the characteristic such that the characteristic "determines a univocal identification of said element." Not a generic input peripheral: it is the source of the variable characteristic physical or digital data that the downstream similarity comparison is structured to accommodate.
At least one processor
Generates "characteristic electronic data, univocally identifying said at least a
characteristic of said element," structures it into a primary file, and links that file to a payment instrument and an assigned economic availability - defined, structured data operations, not generic computation.
Non-transitory memory
Stores the primary file as a specifically structured electronic record together with its
association and economic-availability assignment - specific structured storage, not generic data retention.
Remote verification data processing unit
Carries out the electronic comparison between comparison file and primary file, applies
the minimum threshold of similarity, and - when the threshold is exceeded - forces the logical identity and authorizes the payment: a specific, defined automated decision pipeline.
Minimum threshold of similarity
A similarity threshold (not an exact-match comparison) that, when exceeded, is recited to force a logical identity between the two data sets - a limitation with a defined and specific technical function, namely resolving a relative comparison of variable data into a deterministic authentication outcome.
These are not invocations of generic components performing their ordinary functions;
each is recited as performing a defined role within the claimed mechanism. The Examiner's statement that "there are no additional elements recited in the claim beyond the judicial exception" cannot be sustained against amended claim 1: the similarity-threshold limitation and the forced-logical-identity limitation are themselves additional elements that lie outside any abstract idea of "determining economic availability of a financial instrument," because they describe how the authentication data is processed, not the financial transaction.
Examiner Response
Examiner respectfully disagrees.
Applicant is pointed to MPEP 2106.05(a) Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field [R-07.2022]:
If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.
During examination, the examiner should analyze the "improvements" consideration by evaluating the specification and the claims to ensure that a technical explanation of the asserted improvement is present in the specification, and that the claim reflects the asserted improvement
Examiner reproduces specification sections below:
Page 26: lines 14-24:
In a preferred but non-limiting embodiment, the acquisition device 11 is a camera, for example a camera configured to capture images in the visible and/or infrared and/or ultraviolet spectrum. In an embodiment said camera is a three-dimensional camera. Where the element 1 is a virtual image, for example the acquisition device 11 will be a file receiver; this acquisition device 11 can also be a roughness or weight identifier. In an embodiment, the acquisition device 11 can be a two-dimensional camera. In an alternative embodiment, the acquisition device 11 can be a three-dimensional camera; la three-dimensional camera is destined to capture a three-dimensional image of the element 1. This technical characteristic is particularly useful where the characteristic 2 is not arranged on a planar surface
Page 26: lines 11-13:
In the present disclosure the data processing units can be processors of general purpose type, or dedicated processors and/or can include dedicated circuits (e.g., ASICs) or FPGAs appropriately programmed and/or configured
Page 16: lines 4-7:
According to a further non-limiting aspect, the secondary distributed computing 5 10 15 20 25 30 environment is configured to electronically access to a data processing unit (12) operatively associated to a memory (15) upon which it is stored a primary file (14) generated through the computing environment according to one or more of the aspects here described
Page 11: lines 23-28
the distributed computing environment is configured to provide an electronic access, preferably to a remote verification data processing unit (412), to perform an electronic search, on said memory (15), of at least said primary file (14), through an electronic comparison between at least a comparison file (414) containing characteristic electronic data (14d) identifying at least a characteristic of a comparison element (1) and said primary file (14)
It can be seen from the instant specification that there is no technical explanation of the asserted improvement
The additional elements(the acquisition device, at least one processor, remote verification data unit, data processing unit, non-transitory memory) are recited at a high level of generality, operating in their ordinary capacity and as such are being used as a tool to implement the identified abstract idea.
Therefore there are no additional elements in the claims that are indicative of integration into a practical application.
The argument pertaining to the Minimum Threshold of Similarity has been addressed above, see the Response to Applicant argues#4.
The rejection is maintained.
Applicant argues#8
C. The claim is tied to a particular machine that imposes meaningful limits (MPEP
2106.05(b))
The claimed method cannot be practiced without the specific recited architecture: a
processor generating characteristic electronic data from a physical or digital characteristic captured by the acquisition device; a non-transitory memory storing the structured primary file together with its association and economic-availability assignment; and a remote verification data processing unit that, over a computer network, carries out the threshold-based comparison and performs the forced-logical-identity operation. No step of the claim is directed to the asserted
abstract idea in isolation from this architecture.
Examiner Response
Examiner respectfully disagrees.
Applicant is pointed to MPEP 2106.05(b):
2106.05(b)Particular Machine [R-07.2022]
I. THE PARTICULARITY OR GENERALITY OF THE ELEMENTS OF THE MACHINE OR APPARATUS
The particularity or generality of the elements of the machine or apparatus, i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines). One example of applying a judicial exception with a particular machine is Mackay Radio & Tel. Co. v. Radio Corp. of America, 306 U.S. 86, 40 USPQ 199 (1939). In this case, a mathematical formula was employed to use standing wave phenomena in an antenna system. The claim recited the particular type of antenna and included details as to the shape of the antenna and the conductors, particularly the length and angle at which they were arranged. 306 U.S. at 95-96; 40 USPQ at 203. Another example is Eibel Process, in which gravity (a law of nature or natural phenomenon) was applied by a Fourdrinier machine (which was understood in the art to have a specific structure comprising a headbox, a paper-making wire, and a series of rolls) arranged in a particular way to optimize the speed of the machine while maintaining quality of the formed paper web. Eibel Process Co. v. Minn. & Ont. Paper Co., 261 U.S. 45, 64-65 (1923).
It is important to note that a general purpose computer that applies a judicial exception, such as an abstract idea, by use of conventional computer functions does not qualify as a particular machine. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014). See also TLI Communications LLC v. AV Automotive LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (mere recitation of concrete or tangible components is not an inventive concept); Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623, 114 USPQ2d 1711, 1715 (Fed. Cir. 2015) (noting that Alappat’s rationale that an otherwise ineligible algorithm or software could be made patent-eligible by merely adding a generic computer to the claim was superseded by the Supreme Court’s Bilski and Alice Corp. decisions). If applicant amends a claim to add a generic computer or generic computer components and asserts that the claim recites significantly more because the generic computer is 'specially programmed' (as in Alappat, now considered superseded) or is a 'particular machine' (as in Bilski), the examiner should look at whether the added elements integrate the exception into a practical application or provide significantly more than the judicial exception. Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 223-24, 110 USPQ2d 1976, 1983-84 (2014). See In re Alappat, 33 F.3d 1526, 1545, 31 USPQ2d 1545, 1558 (Fed. Cir. 1994); In re Bilski, 545 F.3d 943, 88 USPQ2d 1385 (Fed. Cir. 2008)
II. WHETHER THE MACHINE OR APPARATUS IMPLEMENTS THE STEPS OF THE METHOD
Integral use of a machine to achieve performance of a method may integrate the recited judicial exception into a practical application or provide significantly more, in contrast to where the machine is merely an object on which the method operates, which does not integrate the exception into a practical application or provide significantly more. See CyberSource v. Retail Decisions, 654 F.3d 1366, 1370, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) ("We are not persuaded by the appellant's argument that the claimed method is tied to a particular machine because it ‘would not be necessary or possible without the Internet.’ . . . Regardless of whether "the Internet" can be viewed as a machine, it is clear that the Internet cannot perform the fraud detection steps of the claimed method"). For example, as described in MPEP § 2106.05(f), additional elements that invoke computers or other machinery merely as a tool to perform an existing process will generally not amount to significantly more than a judicial exception. See, e.g., Versata Development Group v. SAP America, 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015) (explaining that in order for a machine to add significantly more, 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").
In the instant claims, (the acquisition device, at least one processor, remote verification data unit, data processing unit, non-transitory memory) are recited a high level of generality and are operating in their ordinary capacity, and are being used as a tool to implement the steps of the identified abstract idea, see MPEP 2106.05(f)
Therefore, there are no additional elements in the claim that are indicative of integration into a practical application.
The rejection is maintained.
Applicant argues#9
D. The recited steps produce a concrete technical result: the resolution, through a similarity threshold and a forced-logical-identity operation, of inherently variable acquisition data into a deterministic authentication output on which payment authorization depends. That transformation of variable physical-acquisition data (like surface roughness) or digital- acquisition data (like pixel variances) into a reliable binary authentication result is a concrete, real-world technical outcome, not the manipulation of financial abstractions.
Examiner Response
Examiner respectfully disagrees.
This argument has been addressed above with respect to Applicant argues#4,7 above.
The rejection is maintained.
Applicant argues#10
E. The claimed steps cannot practically be performed in the human mind (MPEP
§2106.04(a)(2))
Generating characteristic electronic data from data captured by the acquisition device,
carrying out an electronic comparison between digital files at a remote data processing unit over a network, applying a numerical similarity threshold to those data sets, and forcing a logical identity between stored electronic records are operations that, by their nature, require digital hardware operating on electronic data and cannot practically be performed mentally or with pen and paper. The "mental processes" basis is therefore inapplicable.
Examiner Response
Examiner did not state in the office action that the claims are reciting a Mental Process.
The claims were properly classified under Certain Method of Organizing Human Activity, a commercial interaction, see the section 101 rejection below.
The rejection is maintained.
Applicant argues#11
V. Step 2B - In the Alternative, the Additional Elements Amount to Significantly
More Should the Office maintain that Prong Two is not satisfied, the ordered combination of (i) generating characteristic electronic data univocally identifying a characteristic of a real or virtual element, (ii) comparing that data against a comparison file using a minimum threshold of similarity rather than an exact match, and (iii) forcing a logical identity when the threshold is exceeded so as to authorize payment - performed across the recited acquisition-device / processor / remote-verification-unit architecture - is not well-understood, routine, or conventional activity in the electronic authentication field as of the effective filing date.
Conventionality is a question of fact. The Office Action makes no factual finding, and the
record contains no evidence, that this specific ordered combination - and in particular the use of a similarity threshold that forces a logical identity, in place of the exact-match comparison taught by the cited art (see Applicant's §102 arguments) - was well-understood, routine, or conventional. The combination therefore supplies an inventive concept and amounts to significantly more than any abstract idea.
Examiner Response
Examiner respectfully disagrees.
Applicant misapprehends when a Berkheimer analysis is required under current examination policy. Simply put, Examiner is not required under current Examination policy to evaluate under Step 2B, whether additional elements constitute “well-understood, routine, and conventional activities,” [“WURC activities”] unless an additional element(s) were found to be insignificant extra-solution activity in Step 2A, Prong 2. MPEP § 2106.05(d)(I). Here, the condition precedent was not met and the Non-Final Office Action determined the additional elements were no more than mere instructions to apply the abstract idea exception using a computer. MPEP § 2106.05(f). Thus, Examiner was not required to determine a Berkheimer analysis. MPEP § 2106.05(d)(I). (See Section 101 rejection below).
The rejection is maintained.
Applicant argues#12
VI. The Dependent Claims and the Remaining Independent Claims
Claims 2 and 15 further recite that "said element is not a payment card, and/or is not a
banknote, and/or is not a bank account." For these claims the technical improvement is further underscored: unlike purpose-built payment instruments, which produce standardized, machine-controlled credential outputs that are identical on every read, an element that is expressly not such an instrument yields the inherently variable characteristic data described in Part II - precisely the data for which the claimed similarity-threshold mechanism is required.
The eligibility of claims 2 and 15 is therefore independently supported.
Examiner Response
Examiner respectfully disagrees.
The element from claim 2,15, “wherein said element is not a payment card, banknote, a bank account” is part of the identified abstract idea (steps for determining economic availability of a financial instrument)
The rejection is maintained.
Applicant argues#13
Independent claim 14 (a distributed computing environment) recites corresponding
structural limitations, including a minimum threshold of similarity that, when exceeded, forces a logical identity and authorizes an electronic payment, and is eligible for the reasons given above. Independent claims 9, 22 and 26 each recite the comparison against "a predetermined minimum threshold of similarity," and are eligible for corresponding reasons. The remaining dependent claims depend from eligible independent claims and are eligible at least for that reason, and
further define additional technical limitations.
Examiner Response
Examiner respectfully disagrees.
These arguments have been addressed with respect to claim 1 above.
The rejection is maintained.
Applicant argues#14
Finally, the newly added dependent claims (e.g., new claims 27 and 28) further
underscore the technological nature of the invention by detailing a practical application, with specific solutions to complex computer matching problems, completely insulating them from the "Organizing Human Activity" exception. For virtual elements, the claims require executing an image comparison algorithm that electronically pre-processes the data-such as by "image rescaling, image resizing, elimination of perspective distortions, conversion of color spaces, and filter application" [as-filed application page 39, line 30 to page 40, line 2]-and defines the similarity threshold as a predetermined percentage of matching pixels. For real elements, the claims require acquiring specific physical characteristics using targeted hardware such as a three-dimensional camera, roughness identifier, or weight identifier [as-filed application page 26, lines 16-18]. By detailing highly specific, technological processes that improve the computing system's ability to extract and match complex physical and digital data, these claims extend beyond generic computer functions or abstract commercial interactions These highly specific, technical processes that improve how the claimed distributed computing system extracts, filters, and matches physical and digital anomalies.
Examiner Response
Examiner respectfully disagrees.
The recited abstract elements are bolded below for claims 27-28:
27. (New) The method of claim 1, wherein said element is a virtual element comprising an electronic image, and wherein said electronic comparison carried out by said remote verification data processing unit comprises executing an image comparison algorithm comprising electronically pre-processing characteristic electronic data of said electronic image, wherein said pre-processing comprises at least one of image rescaling, image resizing, elimination of perspective distortions, conversion of color spaces, and filter application; and wherein said minimum threshold of similarity comprises a predetermined percentage of matching pixels between the comparison file and the primary file.
28. (New) The method of claim 1, wherein said element is a real element, and
wherein said step of electronically acquiring comprises acquiring a physical characteristic naturally present on said real element or artificially brought on said real element using said acquisition device, wherein said acquisition device comprises at least one of a three-dimensional camera, a roughness identifier, or a weight identifier; and wherein said physical characteristic comprises at least one of an imperfection, a concavity, a convexity, a roundness, a surface roughness, or a local variation of reflectivity.
The additional elements outside of the abstract idea (remote verification data processing unit, a three-dimensional camera) are recited at a high level of generality and are being used as a tool to implement the steps of the identified abstract idea.
Therefore there are no additional elements that are indicative of integration into a practical application.
The rejection is maintained.
Applicant argues#15
Claim Rejections - 35 U.S.C. §102
Thus, Jezorek fails to disclose at least the following claimed features:
the method comprising a step of definition of a minimum threshold of similarity between
the characteristic electronic data, univocally identifying said at least a characteristic of said element and stored in said primary file and the characteristic electronic data univocally identifying said at least a characteristic of said comparison element and stored in said comparison file, wherein said minimum threshold, when exceeded, is destined to force a logical identity between the characteristic electronic data stored in said comparison file and the characteristic electronic data stored in said primary file and to authorize an arrangement of an electronic payment through said payment or financial instrument.
Therefore, the subject matter of claim 1 is new over Jezorek.
Arguments above apply, mutatis mutandis, for claim 9, 14, 22, 26.
Examiner Response
Based on the amendments to the claims, the 35 USC 102 rejection is hereby withdrawn.
Applicant argues#16
35 U.S.C. §103
Applicant respectfully considers that it would not have been obvious at the time the
invention was made, for a person of an ordinary skill in the art to adapt Jezorek in such a way to adapt payment object service 102 to make it perform a threshold similarity analysis as claimed in the claimed method.
The claimed distinguishing technical features allow to reduce in an efficient way the
risk that any dust present on the element (1), or surface alterations deriving from the use of the same, or also electric noise that can be present in the step of acquisition of the image of the object (1) could lead to a false and negative reading such to make the object not suitable to allow setting an electronic payment even if this object (1) is actually suitable for the scope.
As Jezorek bases the possibility of accessing a customer account following an hard
correspondence (that is identity comparison) the person of ordinary skill in the art would have not reduced the safety criterion to access the account.
In view thereof, the claimed solution is inventive over the art.
The above arguments apply mutatis mutandis to the subject matter of claim 9, 14, 22, 26.
Examiner Response
Based on the amendments to the claims, the 35 USC 103 rejection is hereby withdrawn.
Claim Rejections- 35 U.S.C § 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.
3. Claims 1-6, 8-19, 21-28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1, 14 are directed to a system, method and system which are statutory categories of invention. (Step 1: YES).
Representative claim 1 recites the limitations of:
A computer-implemented method of electronic association between elements and payment systems, the method being implemented by a computing system comprising at least one processor, a non-transitory memory operatively connected to said at least one processor, an acquisition device operatively connected to said at least one processor and configured to identify a characteristic of a real or virtual element, and a remote verification data processing unit in electronic communication with said at least one processor over a computer network; the method comprising:
a step of electronically acquiring at least said characteristic of a real or virtual element, owned by, or associated to, a subject or user, through said acquisition device, wherein said characteristic determines a univocal identification of said element;
a step of electronically generating a primary file containing at least characteristic electronic data, univocally identifying said at least a characteristic of said element, and a step of memorization of said primary file in said non-transitory memory,
a step of associating, comprising an electronic association between said primary file and at least a payment or financial instrument, associated to a financial or banking institute, said payment or financial instrument being owned by, or selectively assigned to, said subject or user,
a step of assigning an economic availability, said step of assignment of said economic availability being temporally successive to said step of association and comprising at least a univocal assignment, to said primary file, of an economic availability associated to said payment or financial instrument,
a step of providing an electronic access, comprising making accessible to said remote verification data processing unit, an electronic search, on said non transitory memory, of at least said primary file, through an electronic comparison between at least a comparison file containing characteristic electronic data, said electronic comparison being carried out by said remote verification data processing unit identifying at least a characteristic of a comparison element, and said primary file;
the method comprising a step of definition of a minimum threshold of similarity between the characteristic electronic data, univocally identifying said at least a characteristic of said element and stored in said primary file and the characteristic electronic data univocally identifying said at least a characteristic of said comparison element and stored in said comparison file, wherein said minimum threshold, when exceeded, is destined to force a logical identity between the characteristic electronic data stored in said comparison file and the characteristic electronic data stored in said primary file and to authorize an arrangement of an electronic payment through said payment or financial instrument.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as certain methods of organizing human activity.
The claim recites elements that are in bold above, which covers performance of the limitation as a commercial interaction, steps for determining economic availability of a financial instrument (e.g., A method of association between elements and payment systems, to identify a characteristic of a real or virtual element, a step of acquiring at least said characteristic of a real or virtual element, owned by, or associated to, a subject or user, wherein said characteristic determines a univocal identification of said element; a step of generating a primary file containing at least characteristic data, univocally identifying said at least a characteristic of said element, and a step of memorization of said primary file,
a step of associating, comprising an association between said primary file and at least a payment or financial instrument, associated to a financial or banking institute, said payment or financial instrument being owned by, or selectively assigned to, said subject or user, a step of assigning an economic availability, said step of assignment of said economic availability being temporally successive to said step of association and comprising at least a univocal assignment, to said primary file, of an economic availability associated to said payment or financial instrument, a step of providing an access, comprising making accessible, an search, of at least said primary file, through an comparison between at least a comparison file containing characteristic data, said comparison being carried out identifying at least a characteristic of a comparison element, and said primary file; the method comprising a step of definition of a minimum threshold of similarity between the characteristic data, univocally identifying said at least a characteristic of said element and stored in said primary file and the characteristic electronic data univocally identifying said at least a characteristic of said comparison element and stored in said comparison file, when exceeded, and to authorize an arrangement of an electronic payment through said payment or financial instrument)
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a Commercial Interaction, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas.
Claim 14 is abstract for similar reasons.
(Step 2A-Prong 1: YES. The claims are abstract).
This judicial exception is not integrated into a practical application. Limitations that are not indicative of integration into a practical application include: (1) Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (MPEP 2106.05.f), (2) Adding insignificant extra solution activity to the judicial exception (MPEP 2106.05.g), (3) Generally linking the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05.h).
Claims 1,14 includes the following additional elements:
-At least one processor
-A non-transitory memory
-A remote verification data unit
-A computer network
-A data processing unit
The at least one processor, non-transitory memory, remote verification data unit, computer network and data processing unit are recited at a high level of generality and are being used in their ordinary capacity and are being used as a tool for implementing the steps of the identified abstract idea, see MPEP 2106.05(f), where applying a computer or using a computer as a tool to perform the abstract idea is not indicative of a practical application.
The additional element of “is destined to force a logical identity between the characteristic electronic data stored in said comparison file and the characteristic electronic data stored in said primary file” is generally linking the identified abstract idea to a particular technological environment (database management techniques), see MPEP 2106.05(h).
The forcing of a logical identity between the characteristic electronic data two data sets is a commonly used data management technique, where two separate data sets are forced to share a single identical identity.
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
Therefore claims 1, 14 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, there are no additional elements recited in the claim beyond the judicial exception.
Mere instructions to implement an abstract idea, on or with the use of generic computer components, or even without any computer components, cannot provide an inventive concept - rendering the claim patent ineligible. Thus claims 1,14 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims 2-6, 8-13, 15-19, 21-28 further define the abstract idea that is present in their respective independent claims 1, 14 and thus correspond to Certain Methods of Organizing Human Activity and hence are abstract for the reasons presented above.
Claims 2&15 further define the identified abstract idea recited in claims 1,14.
The element from claim 2,15, “wherein said element is not a payment card, banknote, a bank account” is part of the identified abstract idea (steps for determining economic availability of a financial instrument)
Claims 3, 16 further defines the identified abstract idea as recited in claims 1,14. The additional element of the acquisition device comprises a camera, file receiver, roughness or weight identifier are recited a high level of generality, operating in their ordinary capacity, and are being used as a tool to implement the steps of the identified abstract idea, see MPEP 2106.05(f)
Claims 10,22 further defines the identified abstract idea recited in claims 1,14. The additional element of a computerized comparison system & verification data process unit is recited at a high level of generality, operating in their ordinary capacity and are being used as a tool to implement the steps of the identified abstract idea.
Claims 27 further defines the identified abstract idea in claim 1.
The limitations (said element is a virtual element comprising an image, and wherein said electronic comparison carried out executing an image comparison algorithm comprising pre-processing characteristic data of said image, wherein said pre-processing comprises at least one of image rescaling, image resizing, elimination of perspective distortions, conversion of color spaces, and filter application; and wherein said minimum threshold of similarity comprises a predetermined percentage of matching pixels between the comparison file and the primary file) is part of the identified abstract idea.
The additional element of the remote verification data processing unit is recited at a high is recited a high level of generality, operating in its ordinary capacity, and are being used as a tool to implement the steps of the identified abstract idea, see MPEP 2106.05(f)
Claim 28 further defines the method of claim 1.
The limitations (wherein said element is a real element, and
wherein said step of acquiring comprises acquiring a physical characteristic naturally present on said real element or artificially brought on said real element comprises at least one a roughness identifier, or a weight identifier; and wherein said physical characteristic comprises at least one of an imperfection, a concavity, a convexity, a roundness, a surface roughness, or a local variation of reflectivity) is part of the identified abstract idea.
The additional elements outside of the abstract idea (acquisition device, remote verification data processing unit, a three-dimensional camera) are recited at a high level of generality and are being used as a tool to implement the steps of the identified abstract idea.
Therefore, the dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the dependent claims (2-6, 8-13, 15-19, 21-28) are directed to an abstract idea. Thus, the claims 1-6, 8-19, 21-28 are not patent-eligible.
Claim Rejections- 35 U.S.C § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
2. Claims 28 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 28 recites, “wherein said acquisition device comprises at least one of a three-dimensional camera, roughness identifier, or a weight identifier”.
It is unclear to Examiner how a device can be a “roughness identifier” and a “weight identifier”, as under BRI roughness is defined as the quality of having an uneven or irregular surface and weight is defined as how heavy or light an object is.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMAD Z SHAIKH whose telephone number is (571)270-3444. The examiner can normally be reached M-T, 9-600; Fri, 8-11, 3-5.
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/MOHAMMAD Z SHAIKH/Primary Examiner, Art Unit 3694 9/3/2026
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