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 .
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 claim(s) recite(s) a method (claim 17) that falls under the mental process/ organized human activity groupings as it directed to authorizing a transaction by following rules (comparing acquired data to stored data to make a decision). This judicial exception is not integrated into a practical application because it is merely performed using generic computer components. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because a processor and scanner are seen as generic computer components that are being applied to computerize a mental concept to authorize a transaction. Scanning/ reading/ imaging is not a practical application because it is merely routine data gathering. The scanning, analyzing (determining), prioritizing, and authorizing are analogous to steps performed by a merchant to authorize a transaction, being performed by generic computer components, thus being used as tools to apply the abstract idea in a particular environment. Further, collecting, displaying and manipulating data is not more than data manipulation (Accenture v. Guidewire, Electric Power v Alstom, Research Corporation Technologies v. Microsoft), Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A. (comparing data to match, collecting data. . . recognizing certain data within the collected data set), and "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016). Specifically in claim 17, the receiving step is routine data gathering, the determining step is a mental process performed using generic computer components for comparisons, prioritizing is a mental step and authorizing the transaction is completion of the abstract idea and/ or insignificant post solution activity. Again, the newly amended prioritizing clause is mental (observation, evaluation, judgement and opinion, MPEP 2106.04a2.III second paragraph, and is tantamount to picking a rule which is mental work, and following a rule to authorization a transaction can therefore be seen as organized human activity Following a rule to authorize a transaction is org. human activity ( similar to MPEP 2106.04a2.II.C. ii. a series of instructions of how to hedge risk, Bilski v. Kappos, 561 U.S. 593, 595, 95 USPQ2d 1001, 1004 (2010)). Claim 18 is drawn to specific details of the abstract idea (data) and is not a practical application. The Examiner notes that to avoid ineligibility, “a claim must have the specificity required to transform the claim from one claiming only a result to one claiming a way of achieving it.” Free Stream Media Corp. v. Alphonso Inc., 996 F.3d 1355, 1363 (Fed. Cir. 2021) (cleaned up) (citing SAP Am., 898 F.3d at 1167–68). We have determined that “the claim itself . . . must go beyond stating a functional result.” Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 967 F.3d 1285, 1302 (Fed. Cir. 2020). The claim must “identify ‘how’ th[e] functional result is achieved by limiting the claim scope to structures specified at some level of concreteness, in the case of a product claim, or to concrete action, in the case of a method claim.” Id.; see also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016) (“[T]here is a critical difference between patenting a particular concrete solution to a problem and attempting to patent the abstract idea of a solution to the problem in general.” (citation omitted)). The newly added limitation of processing by the processor, the information in accordance with the prioritized rules the Examiner notes that this is merely applying the abstract idea, which is mental steps/ organized human activity, performed by a generic computer component, be applied to the rule environment, and thus is not a practical application. Claim 18 is drawn to specific details of the abstract idea (data) and is not a practical application. Claim 19 is drawn to the mental steps of authorizing the truncation/ authenticating. Claim 20 is drawn to compliance with rules, which is mental steps (comparisons). Claim 1 is the analogous system claim and is rejected for similar reasons. Claims 2-5 are drawn to routine data gathering steps of the abstract idea using generic computer peripheral components. Claim 6 is drawn to mental steps/ routine data gathering. Claim 7 is drawn to the specifics of the data and is still abstract. GPS is generic computer components (claim 8). Claim 9 is routine data gathering for mental steps for performing a transaction. Claim 10 is storing limitations which are mental steps (analogous to pen and paper). Claim 11 is drawn to following rules (MPEP 2106.04a2.II org. human activity: managing personal behavior or relationships or interactions between people, (including social activities, teaching, and following rules or instructions), and redacting falls under mental steps. Claim 12 is merely completion of the abstract idea/ post solution activity. Claim 13 merely specify details of the abstract idea (specific rules) and is not significantly more than the abstract idea. Claim 14 and verifying is mental steps. Claim 15 is abstract rule following details. Claim 16 is mental steps of authentication. Appropriate correction is requested.
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 1-20 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 1 and 17 recite “rules that are most restrictive” which is vague/ indefinite because it is unclear from what side (which party of the transaction) the rule is more restrictive (is it more restrictive to the user or the system, for example does the more restrictive rule get applied as a result of the prioritizing or does the prioritizing result in selection of a rule that is less invasive to get the transaction completed, as it is unclear on what is prioritized- the completion of the transaction or the security/ more strict rules).
Appropriate correction is requested.
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 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 (1 and 20) of U.S. Patent No. 10373409. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are a broader recitation in that they recite a transaction and not specifically a use of the information..
For example, claim 1 of the instant application recites “A system… memory… processor… from a scanner… at least partly based on a specified purpose… first rules… jurisdiction… second rules… location… conflicts… prioritizing… highest level of restrictiveness… processing the identification information…”, claim 17 of the instant application recites “… method… processor… rules… location… conflicts… prioritizing… highest level of restrictiveness… processing… authorizing, by the processor, a transaction…” wherein claim 1 of the ‘409 Patent recites “… A system… media… processor… document scanner… proposed use… rule… issuer… physical location… proposed use… most restrictive… form redacted information…” and claim 20 of the ‘409 Patent recites “… conflict… prioritizing one or more most restrictive aspects…”. Though claim 17 recites displaying and not specifically using for a transaction, using the information for a transaction would have been obvious to one of ordinary skill in the art prior to the effective filing data in order to use the rules for a transaction, for example.
Appropriate correction is requested.
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive. Explanations for the 101 and 112 rejections are discussed above.
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 DANIEL I WALSH whose telephone number is (571)272-2409. The examiner can normally be reached 7-9pm.
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/DANIEL I WALSH/Primary Examiner, Art Unit 2876
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