DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The abstract of the disclosure is objected to because it is not a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. (see below). Correction is required. See MPEP § 608.01(b).
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
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 1 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 14 of U.S. Patent No. US 12223553. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are within the scope of the patented claims as shown in the below table (claim 1 is representative, claims 11 and 14. respectively are similar to claim 1):
19/0053636
US 12223553
Claim 1:
A computer system comprising:
a communications module;
a processor coupled to the communications module; and
a memory coupled to the processor and storing instructions that, when executed by the computer system, cause the computer system to:
Claim 1:
A computer system comprising: a communications module;
a processor coupled to the communications module; and
a memory coupled to the processor and storing instructions that, when executed by the computer system, cause the computer system to:
process, using a transfer processing module included in the computer system, a transfer;
perform a search on a plurality of computing events to identify a computing event internal to the computer system;
identify, based on a result of the search to identify the computing event internal to the computer system, a system identifier identifying an external representation system;
perform a search on a plurality of computing events to identify, from the plurality of computing events, a set of computing events corresponding to a computing event category and including a transfer computing event internal to the computer system and corresponding to the use of the transfer processing module to process the transfer, the identification of the set of computing events including: identifying a respective first category of each particular computing event in the set of computing events; and
querying a remote third-party categorization server to determine that each respective first category matches with a respective category defined in a list of categories maintained by the remote third-party categorization server;
querying a remote third-party categorization server to determine that each respective first category matches with a respective category defined in a list of categories maintained by the remote third-party categorization server; look up, based on a result of the search to identify the set of computing events, one or more system identifiers identifying one or more external third-party representation systems and corresponding to each respective first category;
identify an application programming interface capable of retrieving a representation of the computing event from the external representation system;
identify one or more application programming interfaces capable of retrieving representations of computing events in the set of computing events from the one or more external third-party representation systems;
use the application programming interface and the system identifier to retrieve a representation of the computing event from the external representation system.
use the one or more application programming interfaces and the one or more system identifiers to route messages to the one or more external third-party representation systems to retrieve, at the one or more application programming interfaces and via the communications module and from the one or more external third-party representation systems representations of computing events in the set of computing events including a representation of the transfer computing event;
transmit, via the communications module and to a computing device associated with a second category of a particular computing event of the set of computing events, a graphical input interface providing access to the representations of computing events in the set of computing events including the representation of the transfer computing event; and
responsive to an instruction received via the graphical input interface, download the representation of the transfer computing event to the computing device.
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 an abstract idea without significantly more. The claims recite an abstract idea. This judicial exception without significantly more. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Claims 1-20 are directed to a system, method and product. The claims fall within one of the four statutory categories of invention (processes, machines, manufactures and compositions of matter).
The Examiner has identified independent method Claim 11 as the claim that represents the claimed invention for analysis and is similar to independent system Claim 1 and product Claim 20.
The claims recite the steps of performing a search on a plurality of …events to identify a … event internal to a … system;
identifying, based on a result of the search to identify the … event internal to the …system, a system identifier identifying an external representation system;
identifying …capable of retrieving a representation of the … event from the external representation system; and
using the … the system identifier to retrieve a representation of the…event from the external representation system.
Under Step 2A Prong 1, the claim as a whole recites the series of steps instructing how search for events, which is a commercial or legal interactions as business relations or sales behaviors as well as in the fundamental economic practice for identifying transaction events related to certain categories and thus falls within the abstract grouping of certain method of organizing human activity. Thus, the claim recites an abstract idea.
Under Step 2A prong 2, this judicial exception is not integrated into a practical application. The claim as a whole merely describes how to generally “apply” the concept of processing a search to identify events in a computer environment. The claimed computer components ( communications module, processor, memory, computer system, interface; claim 17 further adds computer readable storage medium) are recited at a high level of generality and are merely invoked as tools to perform an existing economic process. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea. Accordingly, these additional elements do not integrate the abstract idea into a practical application. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed with respect to Step 2A prong 2, the claim describes how to generally “apply” the concept of processing a search for events in a computer environment. Thus, even when viewed separately and as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. The claim is ineligible.
The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it".
Claims 3 and 13, for reasons similar to the above analysis for claims 1 and 11 above. Under Step 2A prong 2, this judicial exception is not integrated into a practical application. The claim as a whole merely describes how to generally “apply” the concept of processing a search to identify events in a computer environment. The claimed computer components (server) are recited at a high level of generality and are merely invoked as tools to perform an existing economic process. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea. Accordingly, these additional elements do not integrate the abstract idea into a practical application. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed with respect to Step 2A prong 2, the claim describes how to generally “apply” the concept of processing a search for events in a computer environment. Thus, even when viewed separately and as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. The claim is ineligible.
Claims 6 and 16, for reasons similar to the above analysis for claims 1 and 11 above. Under Step 2A prong 2, this judicial exception is not integrated into a practical application. The claim as a whole merely describes how to generally “apply” the concept of processing a search to identify events in a computer environment. The claimed computer components (module) are recited at a high level of generality and are merely invoked as tools to perform an existing economic process. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea. Accordingly, these additional elements do not integrate the abstract idea into a practical application. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed with respect to Step 2A prong 2, the claim describes how to generally “apply” the concept of processing a search for events in a computer environment. Thus, even when viewed separately and as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. The claim is ineligible.
Dependent claims 2, 4-5, 7-10, 12, 14-15, 17-19 further define the abstract idea that is present in their respective independent claims 1 , 11, and 20 (further defining identifying steps, categories, events, accessing and calculating, for example). Claims 2, 4-5, 7-10, 12, 14-15, 17-19 are abstract for the reasons presented above because there are no 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 as a whole, individually and as an ordered combination. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it". Thus, the claims 1-20 are not patent-eligible.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koolwal et al. (US 2019/0108283 A1).
Specifically as to claims 1, 11 and 20, Koolwal et al. disclose a computer system (and related method, non-transitory computer-readable storage medium) comprising:
a communications module (see para 166 and figure 14 computer system 1400 includes a processor 1402, memory 1404, storage 1406, an input/output (I/O) interface 1408, a communication interface 1410, and a bus 1412);
a processor coupled to the communications module (para 166 and figure 14 “computer system 1400 includes a processor 1402, memory 1404, storage 1406, an input/output (I/O) interface 1408, a communication interface 1410, and a bus 1412.”);
a memory coupled to the processor and storing instructions that, when executed by the computer system, cause the computer system to (see para 166 computer system 1400 includes a processor 1402, memory 1404, storage 1406, an input/output (I/O) interface 1408, a communication interface 1410, and a bus 1412.)):
perform a search on a plurality of computing events to identify a computing event internal to the computer system (see para 41, aggregating events section figure 12);
identify, based on a result of the search to identify the computing event internal to the computer system, a system identifier identifying an external representation system (see para 66 “then information identifying the user-identified internal event listing may be sent from the external system to the server “ and para 153 );
identify an application programming interface capable of retrieving a representation of the computing event from the external representation system (see para 36 “through an application programming interfaces (API)” and para 42 “Application Programming Interface (API) or other suitable communication interface via which the …system 160 may request the external event”); and
use the application programming interface and the system identifier to retrieve a representation of the computing event from the external representation system (see para 153 “responsive to a search query, instructions for presenting a search-results interface…a link to the referenced..” para 36 “through an application programming interfaces (API)”).
Specifically as to claims 2 and 12, identifying a category of the computing event; and
determining that the category of the computing event matches with a category defined in a list of categories. (see para 40 categories, para 56 “identifies a “matching” internal event listing” para 70 match information item).
Specifically as to claims 3 and 13, query a categorization server (server 162 server 170) to determine that the category of the computing event matches with the category defined in the list of categories (see para 33 servers, para 40 category matches).
Specifically as to claims 4 and 14, wherein the list of categories includes a list of entities (see para 50 parsing the items).
Specifically as to claims 5 and 15, downloading a bulk data file including the list of categories (see para 32, 42 sending and receiving the data (files) para 95 processing the large files).
Specifically as to claims 6 and 16, a transfer processing module and the computing event corresponds to a use of the transfer processing module to process a transfer (see para 95 processing by the classifier).
Specifically as to claims 7 and 17, provide access to the representation of the computing event (see para 74 and para 42, accessing an event link from the API).
Specifically as to claims 8 and 18, provide the representation of the computing event to a computing device (see para 74 and para 42).
Specifically as to claims 9 and 19, wherein the computing event includes a data transfer event (see para 136).
Specifically as to claim 10, calculate, based on the computing event, a metric and provide the metric to a computing device (see para 83 and 109, calculating similarity score (metric)) .
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Goldman (US2010/0049631 A1)disclose an online donation system with a catalogue for displaying and sorting charities. Ramaiah (US2018/0114276 A1) discloses financial organization system. Benjamin (US 2016/0125317A1) disclose a transaction learning system. Olsen et al. (AU2010273429) disclose a tax deduction method, Gotze et al. (NPL 2013) disclose automation of usage accounting.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kelly Campen whose telephone number is (571)272-6740. The examiner can normally be reached Monday-Thursday 6am-3pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas can be reached at 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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Kelly S. Campen
Primary Examiner
Art Unit 3691
/KELLY S. CAMPEN/Primary Examiner, Art Unit 3691
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