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
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) 15-32 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):
A system for validating target account data, the system comprising:
a memory storing instructions;
at least one processor configured to execute the stored instructions to:
generate a platform that enables payment initiation on an endpoint device;
access the platform;
receive, through the endpoint device, a first input associated with target account data;
receive through the endpoint device, a second input associated with target account data;
upon receipt of the first input and the second input, enable selection of an
activatable element;
in response to selection of the activatable element, transmit the first input and the second input to a server;
perform a lookup associated with the first input and the second input in the server;
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 includes an indication of no-results;
generate a no-results tooltip based on the transformed result and the indication of no-results; and
present the no-results tooltip on the endpoint device.
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 platform, an endpoint device, an activatable element, a tooltip 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 16 further narrows the lookup and the information presented, claim 17 adds additional computer logic and narrows the information presented, and claims 18-27 are similarly rejected. Claims 28 and 29 are similar to claim 15 but slightly broader in scope and claims 30-32 are rejected in the same way as claims 16-27.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 16-22, 24, 27 and 29-32 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 16-18, 20-22 and 24 recite updating a tooltip but the specification does not disclose this feature.
Claims 18 and 27 also recites updating the no-results based on a match or no matches. The specification does not support this limitation. The specification does not disclose an “update” of any kind or dynamic lookups. Additionally, claim 29 recites updating the indication of no-results based on the transformed result, which is not supported by the specification. Claims 30-32 are dependent upon claim 29.
Claim 20 recites the transformed result includes a validation…however, claim 15 recites that the transformed results include an indication of no-results, which seem to contradict one another and is not supported by the specification. Claim 21 depends on claim 20.
Claims 19, 25 and 27 recites generating suggestions… The specification does not disclose generating suggestions, or the like. A search of the specification for suggestion(s) or recommendation(s) or proposal(s) yielded no results.
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 17-21, 23 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.
The claims recite the lookup resulting in a match…and updating the indication of no-results based on the match.
The claim is unclear because the lookup was claimed to have resulted in no-results in claim 15. There is no indication in the claim that the lookup was repeated, leading to an updated result.
Claim 17 recites update the transformed result based on the comparison; update the indication of no-results based on the comparison, however, claim 15 previously recited that the transformed result includes an indication of no-results, therefore the claim is unclear as it performs the same action twice.
Claim 19 recites the limitation "the match" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claims 20-21 and 30 recite a validation of the first and second input however, claim 15 previously recited an indication of no-results. The claims are unclear how the lookup can return no-results and a validation of the first and second inputs.
Claim 23 recites the limitation "the " in line . There is insufficient antecedent basis for this limitation in the claim. Claim 23 appears to depend on claim 22 and will be treated as such in the 103 rejection below.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 26 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 26 recites the lookup results in no match. There is no discernible difference between no-results, per claim 15, and no match. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 15 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamane and further in view of Suermondt (2003/0018658) and Alpert (US 6,092,081).
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 (0004) to:
generate a platform that enables payment initiation on an endpoint device (0052, Referring to FIG. SA, after the payment solicitation 400/450 is received, an example user/graphical interface 500 may be used to submit a payment request to the service provider system 110, according to potential embodiments. Interface 500 may be presented by, for example, a client application 138 running on the user device 130, or a website of the service provider that is accessed via a browser running on the user device 130.);
access the platform (0052 above);
receive, through the endpoint device, a first input associated with target account
data (0052 enter a routing and account number);
receive, through the endpoint device, a second input associated with target account data (0052, enter the name and address or other data of the beneficiary);
upon receipt of the first and second input, enable selection of an activatable element (0054, next icon);
in response to selection of the activatable element, transmit the first input and the second input to a server (0055, system 110 receives the data);
perform a lookup associated with the first input and the second input in the server
(0057, For example, the verification system 180 may have account data 182 (in a ledger, database, etc.) with a list of account numbers and owners, and the verification system 180 may accept an account number from the service provider system 110 and, at 615, return to the service provider system 110 a response identifying the owner or other entity associated with the account/account number. The payee name, once received from the user at 620, may be compared with the owner or other entity identified in the response from the verification system 180 to validate the account number.);
receive a result of the lookup from the server (0057, return a response);
transform the result of the lookup [using machine learning] into a transformed result, wherein the transformed result includes an indication of no-results (0046, alert to indicate that the destination account is not verified);
Yamane does not disclose:
machine learning;
However, machine learning algorithms are old and well known per the prior art of Suermondt (0035).
It would have been obvious to one of ordinary skill to perform the lookup analysis using machine learning for speed and efficiency.
Yamane does not disclose:
generate a no-results tooltip based on the transformed result and the indication of no-results; and
present the no-results tooltip on the endpoint device.
However, tooltips are old and well known per Alpert (Description, (36) In the lower box 520, we illustrate how these tags will appear to the user. When a user clicks on one of the colored boxes, the goal or commentary tags appear as popup windows on the display. Alternatively, the system can include known functions called "balloon help" and "tooltips" which display small amounts of text after the mouse pointer hovers over them for a few seconds.)
One of ordinary skill would have been motivated to modify the alert of Yamane as a tooltip for convenience and reduce screen clutter.
26. (New) The system of claim 15, wherein the lookup results in no matches between the data in the server and one of the first input and the second input (see claim 15, no match and no-results are not discernibly different).
Claims 16, 18, 22-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamane (20200327550) and further in view of Suermondt (2003/0018658) and Alpert (US 6,092,081) as applied to claim 15 and further in view of Goel (US 7689916 B1).
16. The system of claim 15, wherein:
the lookup further comprises comparing the first input and the second input with data stored in the server (see 0057 above); and
Yamane does not disclose:
the at least one processor is further configured to:
update the no-result tooltip to display information on the comparison between the data stored in the server and the first input and the second input; and
present the updated no-result tooltip.
However, Goel discloses:
(background 1st para., Some web applications provide tooltips with a single level of static content when a user hovers their mouse pointer over certain display elements (controls).);
The information provided about the platform is considered printed matter and does not receive patentable weight per MPEP 2111.05.
(summary section para. 2, According to this aspect of the invention, when a pointer points to an item (word, term, icon, image, etc.) on a display, then in response to the pointer pointing to the item for a first predetermined time, a tooltip that includes first information is displayed for the item. In response to the pointer pointing to the item for an additional second predetermined time, a tooltip that includes second information that differs at least in part from the first information is displayed for the item.)
Goel is generally directed to efficiently displaying information on user devices using tooltips. One of ordinary skill would have been motivated to modify Yamane with the tooltips of Goel for efficiency.
18. The system of claim 15, wherein:
the lookup results in a match between data in the server one of the first input or the second input (see 0057 as above); and
the at least one processor is further configured to:
update the indication of no-results based on the match; and
update the no-results tooltip to display information regarding the updated indication of no-results (See Goel as above).
Yamane does not disclose:
22. The system of claim 15, wherein:
the indication of no-results includes an indication of caution (no patentable weight given per MPEP 2111.05, printed matter, however, see 0046 for alert); and
the at least one processor is further configured to update the no-results tooltip to display information regarding the indication of caution (the information is also printed matter).
Goel discloses:
(summary section para. 2, According to this aspect of the invention, when a pointer points to an item (word, term, icon, image, etc.) on a display, then in response to the pointer pointing to the item for a first predetermined time, a tooltip that includes first information is displayed for the item. In response to the pointer pointing to the item for an additional second predetermined time, a tooltip that includes second information that differs at least in part from the first information is displayed for the item.)
Goel is generally directed to efficiently displaying information on user devices using tooltips. One of ordinary skill would have been motivated to modify Yamane with the tooltips of Goel for efficiency.
23. (New) The system of claim 15, wherein the indication of caution includes a level of caution (printed matter per MPEP 2111.05, no patentable weight given).
24. (New) The system of claim 23, wherein the at least one processor is further configured to update the no-results tooltip to display information about the level of caution (See Goel per claim 22 above and claim 23 above re: printed matter).
Claim 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamane (20200327550) and further in view of Goel (US 7689916 B1).
28.(New) A method comprising:
accessing a platform that enables payment initiation (0052, Referring to FIG. SA, after the payment solicitation 400/450 is received, an example user/graphical interface 500 may be used to submit a payment request to the service provider system 110, according to potential embodiments. Interface 500 may be presented by, for example, a client application 138 running on the user device 130, or a website of the service provider that is accessed via a browser running on the user device 130.);
receiving a first input associated with target account data (0052 enter a routing and account number);
receiving a second input associated with target account data (0052, enter the name and address or other data of the beneficiary);
enabling selection of an activatable element (0054, Following selection of the next icon 525);
performing a lookup associated with the first input and the second input, to validate the first input and the second input (0055, The service provider system 110 (and/or the user device 130 in other potential implementations), once data on the payment request has been entered/received, validates the information. 0057, at 610, the service provider system 110 may transmit a validation request (via, e.g., an API call) to validate the account via the verification system 180. If step 610 occurs before the payee name has been entered by the user, the verification system 180 may be used to discover what account owner is associated with the account. For example, the verification system 180 may have account data 182 (in a ledger, database, etc.) with a list of account numbers and owners, and the verification system 180 may accept an account number from the service provider system 110 and, at 615, return to the service provider system 110 a response identifying the owner or other entity associated with the account/account number.);
generating a result of the lookup (0057, For example, the verification system 180 may have account data 182 (in a ledger, database, etc.) with a list of account numbers and owners, and the verification system 180 may accept an account number from the service provider system 110 and, at 615, return to the service provider system 110 a response identifying the owner or other entity associated with the account/account number. The payee name, once received from the user at 620, may be compared with the owner or other entity identified in the response from the verification system 180 to validate the account number.);
generating an indication of no-results based on the result of the lookup ([0046] If (at 325) the service provider system 110 is not sufficiently assured that the destination account belongs to the intended beneficiary (“No”), then at 330, an alert or other notification is transmitted to the user device 130 to indicate, for example, that the destination account is not verified.).
presenting the no-results [tooltip] on the platform (see 0046 above).
Yamane does not disclose:
generating a tooltip for display on the platform;
updating the tooltip to display information regarding the indication of no-results to generate a no-results tooltip; and
However, Goel discloses:
(background 1st para., Some web applications provide tooltips with a single level of static content when a user hovers their mouse pointer over certain display elements (controls).);
The information provided about the platform is considered printed matter and does not receive patentable weight per MPEP 2111.05.
(summary section para. 2, According to this aspect of the invention, when a pointer points to an item (word, term, icon, image, etc.) on a display, then in response to the pointer pointing to the item for a first predetermined time, a tooltip that includes first information is displayed for the item. In response to the pointer pointing to the item for an additional second predetermined time, a tooltip that includes second information that differs at least in part from the first information is displayed for the item.)
Goel is generally directed to efficiently displaying information on user devices using tooltips. One of ordinary skill would have been motivated to modify Yamane with the tooltips of Goel for efficiency.
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 and 28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 24 and 34 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 24 and 34 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
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/WILLIAM E RANKINS/Primary Examiner, Art Unit 3694