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 .
This Office action is responsive to Preliminary Amendment filed on 05/27/2025.
Claim 1 has been canceled.
New claims 2-21 have been added.
Claims 2-21 are presented for examination.
Claim Objections
Claims are objected to because of the following informalities:
Claim 1, the acronym term “PII” in line 6 must be written out.
Claim 8, the acronym term “PII” in line 2 must be written out.
Claim 13, the acronym term “LII” in line 3 must be written out.
Claim 15, the acronym term “PII” in line 3 must be written out.
Appropriate correction is required.
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 2-21 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.
Claim 2 recites the limitation "PII data" in lines 6 and 9. It is unclear whether it is same “PII data” in the claim or not. Therefore, it renders the claim indefinite.
Claim 3 recites the limitation "PII data" in line 5. It is unclear whether it is referred to “PII data” in claim 2 or not. Therefore, it renders the claim indefinite.
Claim 8 recites the limitation "PII data" in lines 2 and 5. It is unclear whether it is same “PII data” in the claim or not. Therefore, it renders the claim indefinite.
Claim 15 recites the limitation "PII data" in lines 3 and 6. It is unclear whether it is same “PII data” in the claim or not. Therefore, it renders the claim indefinite.
Claims 4-7, 9-14, and 16-21 are also rejected due to dependency.
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. 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-16 of U. S. Patent No. 10,546,149. Although the conflicting claims at issue are not identical, they are not patentably distinct from each other because the examined claims contain elements of the patent claims, therefore, the examined claim is anticipated by the patent claim as follows:
Current Application No. 19/043,714
US Patent No. 10,546,149
Independent Claim 2
Independent Claim 1
Independent Claim 8
Independent Claim 13
Independent Claim 15
Independent Claim 1
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-20 of U. S. Patent No. 11,281,798. Although the conflicting claims at issue are not identical, they are not patentably distinct from each other because the examined claims contain elements of the patent claims, therefore, the examined claim is anticipated by the patent claim as follows:
Current Application No. 19/043,714
US Patent No. 11,281,798
Independent Claim 2
Independent Claim 1
Independent Claim 8
Independent Claim 9
Independent Claim 15
Independent Claim 15
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-20 of U. S. Patent No. 11,841,974. Although the conflicting claims at issue are not identical, they are not patentably distinct from each other because the examined claims contain elements of the patent claims, therefore, the examined claim is anticipated by the patent claim as follows:
Current Application No. 19/043,714
US Patent No. 11,841,974
Independent Claim 2
Independent Claim 1
Independent Claim 8
Independent Claim 8
Independent Claim 15
Independent Claim 15
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-20 of U. S. Patent No. 12,216,795. Although the conflicting claims at issue are not identical, they are not patentably distinct from each other because the examined claims contain elements of the patent claims, therefore, the examined claim is anticipated by the patent claim as follows:
Current Application No. 19/043,714
US Patent No. 12,216,795
Independent Claim 2
Independent Claim 1
Independent Claim 8
Independent Claim 8
Independent Claim 15
Independent Claim 15
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 2-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding independent claims 2, 8, and 12, the claims recite receiving, using a network interface of a data management system, PII data from a plurality of financial institutions; storing, by the data management system, the PII data in one or more PII databases; receiving, using the network interface, a request from a credit bureau for PII data associated with a desired consumer; searching, by the data management system, the one or more PII databases to identify one or more results corresponding to the request; and providing, using the network interface, the one or more results to the credit bureau. The limitations receiving, using a network interface of a data management system, PII data from a plurality of financial institutions; storing, by the data management system, the PII data in one or more PII databases; receiving, using the network interface, a request from a credit bureau for PII data associated with a desired consumer; searching, by the data management system, the one or more PII databases to identify one or more results corresponding to the request; and providing, using the network interface, the one or more results to the credit bureau, as drafted is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Therefore, the claims recite an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim only recites one additional element – using a processor and a network interface to perform the receiving, storing, searching, and providing steps. The processor in the steps is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of searching the one or more PII databases to identify one or more results corresponding to the request) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. 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 above with respect to integration of the abstract idea into a practical application, the additional element of using a processor to perform the receiving, storing, searching, and providing steps that amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Therefore, the claims 2-21 are not patent eligible.
Allowable Subject Matter
Claims 2-21 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, under 35 U.S.C.101, and the Terminal Disclaimer is filed to overcome the Double Patenting, set forth in this Office action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure (see PTO-892).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BAOTRAN N TO whose telephone number is (571)272-8156. The examiner can normally be reached on M-F: 8-5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amir Mehrmanesh can be reached on 571-270-3351. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BAOTRAN N TO/ Primary Examiner, Art Unit 2435
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