DETAILED ACTION
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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,165,150. Although the claims at issue are not identical, they are not patentably distinct from each other.
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.
Analysis
Claim 8: Ineligible.
The claim recites a series of acts for providing alerts. The claim is directed to a process, which is a statutory category of invention (Step 1: YES).
The claim is analyzed to determine whether it is directed to a judicial exception. The claim recites the steps of storing, within the at least one memory device, personally identifying information (PII) of a user, financial instrument data, and a user identifier associated with the user, wherein the financial instrument data includes data associated with a plurality of physical checks associated with the user, and wherein the PII includes sensitive information of the user; in response to a candidate physical check being used as a financial instrument for a transaction, receiving, from a requestor computing device, an identification request for the user associated with the transaction, the identification request including payment instrument data associated with the candidate physical check, the payment instrument data including an electronic image of the candidate physical check; performing in real-time a lookup in the at least one memory device using the received payment instrument data to retrieve the stored PII of the user and the stored user identifier associated with the received payment instrument data; in response to retrieving the stored PII and the stored user identifier, causing to be displayed, in real-time on a user computing device associated with the user, a message requesting the user to input an identifier into the user computing device to authenticate the user; receiving, from the user computing device, the inputted identifier by the user; comparing in real-time the inputted identifier to the stored user identifier to authenticate the user as a legitimate accountholder associated with the candidate physical check; in response to authenticating the user, transmitting an approval message to the requestor computing device indicating that the user is the legitimate accountholder of the candidate physical check; and in response to not authenticating the user, transmitting a decline message to the requestor computing device indicating that the user is not the legitimate accountholder of the candidate physical check.
These limitations, as drafted, are processes that, under its broadest reasonable interpretation, can be performed as a mental process (that is, “observation, evaluation, judgement, opinion”), or in the alternative, the organizing of human activity in the form of commercial interactions or managing personal relationship/interactions between people. These limitations fall under the “mental processes” and/or “certain methods of organizing human activity” groups (Step 2A1-Yes).
Next, the claim is analyzed to determine if it is integrated into a practical application. The claim recites additional elements of using computer system, memory and devices (processors). The processors in the steps are recited at a high level of generality, i.e., as generic processors performing generic computer functions. These generic processor limitations are no more than mere instructions to apply the exception using generic computer components. Further, the memory (database) performs only its basic function of storing information, which is common to all databases. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to the abstract idea (Step 2A2-No).
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed with respect to Step 2A2 above, the additional elements in the claim amount to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea (Step 2B: NO). The claim is not patent eligible.
Claims 1 and 15 recite corresponding system and non-transitory computer-readable medium equivalents of claim 8. These claims are similarly rejected under the same rationale as claim 8, supra.
Claims 2, 9 and 16 further recite generating in real-time a unique token that links the stored PII of the user to the transaction, wherein the unique token is configured to provide access to the requestor computing device to the at least one memory device storing the PII of the user when completion of the transaction fails; and transmitting the unique token to the requestor computing device as part of the transaction utilizing the candidate physical check as the financial instrument.
These limitations further narrow the abstract idea, but are nonetheless part of the abstract idea identified in claim 8. The additional elements are as addressed above. The claims are similarly rejected under the same rationale as claim 8, supra.
Claims 4-7, 11-14 and 18-20 further recite receiving the PII from an issuer computing device; wherein the payment instrument data further includes non-sensitive information of the user; wherein the inputted identifier is different from the PII; automatically authorizing and clear the transaction on behalf of an issuer computing device.
These limitations further narrow the abstract idea, but are nonetheless part of the abstract idea identified in claim 8. The additional elements are as addressed above. The claims are similarly rejected under the same rationale as claim 8, supra.
Allowable Subject Matter
The following claims are deemed allowable pending the filing of a terminal disclaimer.
Claims 3, 10 and 17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
References cited in the PTO-892 have been discussed in parent case office actions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLABODE AKINTOLA whose telephone number is (571)272-3629. The examiner can normally be reached Mon-Fri 8:30a-6:00p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas can be reached on 571-270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OLABODE AKINTOLA/Primary Examiner, Art Unit 3691