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
Response to Arguments
Applicant’s arguments regarding the 101(a) rejections of the claims have been considered and are not persuasive.
The Office asserts that the claims consist of a business practice implemented by generic computer devices using generic computer software elements such as tooltips, pop-up windows, hover elements, etc. The claims receive data and compare that data to data in one or more databased to determine whether to validate the data or not. The result of the lookup is created and transformed into a more data (data manipulation) and finally presented to the user. Applicant’s arguments that the claims are more than the above are unpersuasive as the claims simply do not confer a practical application or inventive concept such as an improvement to the computer, technology or technological field, applying the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, or adding a specific limitation that is more than what is well-understood, routine and conventional. Applicant’s arguments merely assert that the abstract idea itself or the additional elements confer a practical application or inventive concept but fail to identify the necessary improvement, meaningful limitation or unconventional limitation.
The 112 rejections of the claims are withdrawn in view of the claim amendments.
The 103 rejections of the claims are withdrawn in view of the claim amendments.
The double patenting rejection is maintained as the claims remain substantially similar.
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.
Claim(s) 15, 17, 28 and 33-49 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s):
15. A system for validating target account data, the system comprising:
a memory storing instructions; and at least one processor configured to execute the stored instructions to:
generate a platform that enables payment initiation on an endpoint device;
generate a tooltip and a hover element for display on the platform, wherein the tooltip provides an indication of a payment initiation validation, wherein the hover element triggers the tooltip to display a pop-up window;
receive, through the endpoint device, a first input and second input associated with target account data;
transmit, via an application programming interface (API), from the endpoint device to the server, the first input and the second input, wherein the server is associated with one or more repositories;
upon receipt of the first input and the second input, enable selection of an activatable element, associated with the API;
in response to selection of the activatable element, perform a lookup of within the one or more repositories;
receive a result of the lookup from the server;
transform the result of the lookup using machine learning into a transformed result, wherein the transformed result is a single overall score, wherein the single overall score represents a probability that the target account is an intended target account;
transmit, via the API, the transformed result for display at the endpoint device;
modify the indication of the tooltip based on the transformed result; and
after an interaction with the hover element, wherein the interaction includes mouse clicking, display the pop-up window on the endpoint device, wherein the pop-up window provides instructional information associated with the indication of the tooltip.
The underlined portion of the claims represent certain methods of organizing human activity, fundamental economic practices of mitigating risk, because the claims are directed to validating the recipient of a payment.
This judicial exception is not integrated into a practical application because the claim adds the words "apply it", or the like, to the abstract idea. The claims include a system for performing the abstract idea including a processor, a server, a platform, an endpoint device, an activatable element, a tooltip, pop-up window and machine learning, all of which are generically recited such that they cannot be considered particular machines, effect a transformation (other than data), reflect an improvement in the computer or technology or apply the abstract idea in some other meaningful way. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because of the reasons cited above.
The dependent claims merely narrow the abstract idea or add additional elements as tools to implement the abstract idea and, in combination and as a whole, comprise the abstract idea and the words “apply it”, the like. Claim 28 is similarly rejected.
Claims 17 and 40 narrows the data analysis and displays the result, further narrowing the abstract idea. Claims 33 and 41 further narrow the indication, part of the abstract idea. Claims 34 and 42 provide further information to the user, further narrowing the abstract idea. Claims 35 and 43 further narrow the lookup process, part of the abstract idea. Claims 36 and 46 further narrow the indication step, further narrowing the abstract idea. Claims 37 and 47 further narrow the indication information, further narrowing the abstract idea. Claims 38, 39, 44 and 45 identify and define the repository and is part of the elements identified as adding the words “apply it”. Claims 48 and 49 further define the indication presented to the user, further narrowing the abstract idea.
Claim Rejections - 35 USC § 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.
Claims 15 and 28 and their dependents are 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.
Claims 15 and 28 recite the limitation "the " in the lookup. There is insufficient antecedent basis for this limitation in the claim.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 15, 28, and 33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15, 31, and 33 of copending Application No. 18/977023 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 15 and 31 anticipate claims 15 and 28.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 WILLIAM E RANKINS whose telephone number is (571)270-3465. The examiner can normally be reached on 9-530 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett Sigmond can be reached on 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM E RANKINS/Primary Examiner, Art Unit 3694
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