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 Status
Claims 26-45 are currently pending and are presented for examination on the merits.
Priority
Applicant's claim for the benefit of U.S. provisional patent application 62/191,104, filed July 10, 2015 (and its progeny), under 35 U.S.C. §§ 119(e) and 120 is acknowledged. It is noted, however, that the provisional comprises 27 pages of drawings and 27 pages of specification, whereas the instant application presents 46 pages of drawings and 37 pages of specification. Applicant is asked to review and modify (if necessary) its claims of priority and benefit along the chain of continuity, as continuations, and not continuations-in-part, as it pertains to the scope of the instant invention.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 5/12/2025 was filed before the filing of a first office action on the merits. As such, the submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Objections
Specification
The use of trademarks has been noted in this application (e.g., “Bank of America,” etc.). They should be capitalized in all caps wherever they appear (or include a proper trademark symbol) and may be accompanied by the generic ownership terminology. Although the use of trademarks is permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as trademarks. MPEP 608.01(v).
The abstract of the disclosure is objected to, because it does not describe the instant invention (i.e., the preparation of transaction workflow documents in sequence). The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. The language should be clear and concise. Correction is required. See MPEP § 608.01(b).
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 26-45 are rejected under 35 U.S.C. § 101, because they recite non-patentable subject matter under MPEP § 2106, e.g., the 2019 PEG, October update. More particularly, the claimed invention is directed to a judicial exception (e.g., an abstract idea, etc.) without practical application or significantly more.
More particularly, when considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Broad categories of abstract ideas include fundamental economic practices, certain methods of organizing human activities, an idea itself, and mathematical relationships/formulas. See, generally, MPEP § 2106; Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,132 S. Ct. 1289, 1294, 1297-98 (2012)); Federal Register notice titled 2014 Interim Guidance on Patent Subject Matter Eligibility (79 FR 74618), which is found at: http:// www. gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf; 2015 Update to the Interim Guidance; the 2019 Revised Patent Subject Matter Eligibility Guidance, Fed. Reg., Vol. 84, No. 4, January 7, 2019; and associated Office memoranda.
Under MPEP § 2106, Step 1, the claimed invention, taking the broadest reasonable interpretation, recites a process (i.e., a method), machine (e.g., apparatus, system, etc.), article of manufacture (e.g., a non-transitory computer readable medium) or composition of matter, and as such, is patent eligible.
Under MPEP § 2106, Step 2a-prong 1, Claims 26-45 recite a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle). More particularly, the entirety of the method steps is directed towards completing documents necessary to complete a transaction workflow sequence, including extracting information from a user or user’s profile, tailoring the documents to the transaction, determining a sequence of events (e.g., documents to be executed, modifying the documents when changes occur, etc.). This is a long-standing commercial practice previously performed by humans (e.g., companies, consumers, car salesmen, real estate brokers, and other parties/facilitators of transactions, etc.) manually and via generic computing. As such, the inventions include an abstract idea under § 2106, and Alice Corporation.
Under step 2a-prong 2, the claims fail to recite a practical application of the exception, because the extraneous limitations (e.g., the structure—memory, processor, non-transitory computer-readable medium, data structure, etc.) merely add insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g), generally link the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)) and/or generally instruct an artisan to apply it (the method) across generic computing technology.
A claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit. See Alice, 573 U.S. at 222; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014). That is to say, the claims are not directed to a new software or computer, but rather employs pre-existing software to do what’s been previously done, albeit less efficiently or slower. “[I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (citations omitted). More particularly, the claims fail to recite an improvement to the functioning of a computer or technology (under MPEP § 2106.05(a)), the use of a particular machine (under § 2106.05(b)), effect a transformation or reduction of a particular article (§ 2106.05(c)), or apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (§ 2106.05(e)).
Under part 2b, the additional elements offered by the dependent claims either further delineate the abstract idea, add further abstract idea(s), adds insignificant extra-solution activity, or further instruct the artisan to apply it (the abstract idea(s)) across generic computing technology. The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because no one claim effects an improvement to another technology or technical field, an improvement to the functioning of a computer itself, or move beyond a general link of the use of the abstract idea to a particular technological environment. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Under Alice, merely applying structure or executing the abstract idea on one or more generic computer system (e.g., a computer system comprising a generic database; a generic element (NIC) for providing website access, etc.; a generic element for receiving user input; and a generic display on the computer, in any of their forms) to carry out the abstract idea more efficiently fails to cure patent ineligibility. See, e.g., Content Extraction, 776 F.3d at 1347 (claims reciting a “scanner” are nevertheless directed to an abstract idea); Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea). Moreover, merely reciting steps that can be performed in the human mind is not patent eligible (see, e.g., Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067 (Fed. Cir. 2011) (collecting and comparing data are mental steps); Braemar Mfg. LLC v. ScottCare Corp., 816 F. App’x 465, 470 (“Claims that “merely collect, classify, or otherwise filter data” are ineligible for patent under § 101.”); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-72 (Fed. Cir. 2011) (comparing a collected list of credit card numbers to transactions to identify different cards and user names used from the same IP address to detect fraud can be performed entirely in the human mind including the logical reasoning.)) “The requirements that the machine learning model be “iteratively trained’ or dynamically adjusted in Machine Learning Training patents do[es] not represent a technological improvement.” Recentive Analytics, 134 F 4th at 1212. Claim language reciting the machine learning model at a high level of generality without any specificity of how the machine learning model is trained or processes the data. The machine learning model is merely used as a tool to implement the abstract idea. Id. at 1213 (claims recite ineligible subject matter where “the only thing the claims disclose about the use of machine learning is that machine learning is used in a new environment”).
Lastly, courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: performing repetitive calculations, receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data, MPEP 2106.05(d), wherein the italicized tasks are particularly germane to the instant invention.
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 26-45 are rejected under 35 U.S.C. § 103 as being unpatentable over US 2006/0129482 to Etzkorn, in view of US 2008/0215483 to Salzinger et al.
With respect to Claims 26, 38, and 43, Etzkorn teaches a non-transitory computer-readable medium (FIGS. 1,2: computer; [0123]), and method for, and an online data management system ([0108];[0116], website) to assist(ing) a user in completing a transaction ([0009-11]), the transaction including completing documents in a sequence ([0009-11]; FIGS. 79-89), the system comprising: a memory; and at least one processor (FIGS. 1,2; [0009], computer) configured to perform steps comprising: receiving an indication of the transaction to be completed from the user ([0009-11]); accessing a user profile of the user (Abstract; [0009-11], storing user information in database teaches keeping a profile), automatically determining documents to include in the transaction, based on the transaction, the user profile, and the plurality of tags ([0009-11];[0158];[0242]), automatically determining the sequence of completing the documents, based on the transaction, the user profile ([0009-11]); and for each document in the transaction: automatically completing document fields using information in the user profile ([0240]); determining document fields in a document that need user input to be completed (FIGS. 6, 23-60); requesting user input to complete the document fields (Abstract, “prompting a user to enter information”; showing empty data field teaches “requesting”), including rendering a graphical user interface to display (FIGS. 6, 23-60) the document and provide a visual indication to the user of the requested user input (FIGS. 6, 23-60, the empty fields are visual indication of the requested input; [0243]).
Etz fails to expressly teach, but Salzinger teaches the user profile comprising a plurality of tags; and wherein the plurality of tags are associated with documents to be included in the transaction ([0028];[0052]). Salzinger further teaches requesting user input to complete the document fields, including rendering a graphical user interface to display the document and provide a visual indication to the user of the requested user input; and verifying the document based on received user input. ([0028]; FIG. 2) Salzinger discusses the desire to minimize and simplify commercial participants’ information entry. ([0006-07]) As such it would have been obvious to one of ordinary skill in the art to modify Etz, to include these limitations taught by Salzinger, in order to minimize and simply commercial participant information entry.
With respect to Claims 27, 39, and 44, Etz teaches wherein the processor is further configured to perform: detecting a change in the user profile; and automatically determining additional documents needed to include in the transaction based on the detected change in the user profile and tags associated with the detected change. [0134];[0153]
With respect to Claims 28, and 40, Etz teaches wherein the processor is further configured to perform: receiving an additional document to include in the transaction; determining tags associated with the additional document; analyzing the additional document to determine information needed to complete the document; and automatically completing the additional document using information in the user profile and the determined tags. ([0134]) Salzinger teaches the use of tags, including updating the values as tags are identified. [0019] Under the same rationale as Claim 25, it would have been obvious to one of ordinary skill in the art to modify Etz to include this limitation taught by Salzinger.
With respect to Claim 29, Etz teaches wherein the processor is further configured to perform: automatically modifying documents in the transaction based on the user profile. ([0010];[0131], modify;[0238])
With respect to Claim 30, Etz teaches wherein modifying the documents includes any one or more of: downloading additional documents to be included in the transaction; removing documents from the transaction; and editing documents included in the transaction. ([0131];[0171], edit; [0134], downloaded; )
With respect to Claim 31, Etz fails to teach, but Salzinger teaches wherein downloading additional documents includes determining tags associated with the additional documents. ([0029]; FIG. 2) Under the same rationale as Claim 25, it would have been obvious to one of ordinary skill in the art to modify Etz to include this limitation taught by Salzinger.
With respect to Claim 32, Etz teaches wherein the processor is further configured to perform: for each document in the transaction, presenting the document to the user for signature in the predetermined sequence. (FIG. 89B)
With respect to Claim 33, Etz teaches wherein the processor is further configured to perform: analyzing the documents in the transaction, including identifying information requested in the document. ([0009-11];[0180])
With respect to Claims 34, 41, and 45, Etz teaches wherein the processor is further configured to perform: determining the sequence for completing the documents based on the analyzing, the user profile, and the plurality of tags. ([0009-11], determining sequence based on user information and transaction)
With respect to Claim 35, Etz teaches wherein the processor is further configured to perform: for each document in the transaction, on a condition that the document is not verified, requesting additional user input to complete the document. ([0010];[0134];[0180])
With respect to Claims 36, and 42, Etz teaches wherein: automatically determining the documents to include in the transaction includes querying a data structure ([0009-11] “database”) to determine tags associated with the transaction (Salzinger, FIG. 2); and the data structure maintains: a first association of tags and documents ([0028]); and a second association of tags and the user profile ([0007], “consumer information associated with tags” used for “consummating transactions”; [0013];[0028]). Under the same rationale as Claim 25, it would have been obvious to one of ordinary skill in the art to modify Etz to include this limitation taught by Salzinger.
With respect to Claim 37, Etz teaches wherein the data structure includes a status of each document in the transaction. [0232]
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J JACOB whose telephone number is (571)270-3082. The examiner can normally be reached on M-F 8:00-5:00, alternating Fri. off.
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, Matthew Gart can be reached on 5712723955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM J JACOB/ Examiner, Art Unit 3696
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