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 .
Applicant filed a preliminary amendment cancelling claims 1-20 and adding claims 21-40. Claims 21-40 are now pending.
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 21-40 are rejected under 35 U.S.C. § 101 because the instant application is directed to non-patentable subject matter. Specifically, the claims are directed toward at least one judicial exception without reciting additional elements that amount to significantly more than the judicial exception. The rationale for this determination is in accordance with the guidelines of the USPTO, applies to all statutory categories, and is explained in detail below.
When considering subject matter eligibility under 35 U.S.C. §101, (1) 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, (2a) it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), which is a two-prong inquiry. In prong 1, it must be determined whether the claim recites an abstract idea, a law of nature, or a natural phenomenon, and if so, in prong 2, it must be determined whether the claim recites additional elements that integrate the judicial exception into a practical application. If the claim is determined to be directed to an abstract idea in step 2a, it must additionally be determined in step 2b whether the claim amounts to significantly more than the abstract idea. 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. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. MPEP §2106.04.
STEP 1. Per Step 1 of the two-step analysis, the claims are determined to include a method for determining information in order to determine a user’s account needs, as in independent claim 21 and in the claims that depend therefrom. Such methods fall under the statutory category of “process”. Therefore, the claims are directed to a statutory eligibility category.
Step 2A, prong 1. The invention is directed to a method for determining information in order to determine a user’s account needs, which is a sales method and, hence, a Certain Method of Organizing Human Activities. MPEP § 2106.04(a). As such, the claims include an abstract idea. When considering the limitations individually and as a whole the limitations directed to the abstract idea are:
“A method comprising”:
“retrieving, by at least one …, a monetary attribute associated with an account of a user”;
“executing, by at least one …, an … to predict a first value indicating a negative cash flow in the account of the user, a second value indicating a depth of the negative cash flow, and a third value indicating a duration of the negative cash flow, the … having been … based on a … dataset comprising historical monetary data associated with a set of accounts comprising account activity of each account indicating whether each account within the set of accounts included a negative cash flow, a depth of the negative cash flow, and a duration of the negative cash flow”; and
“transmitting, by the at least one …, an indication that at least one of the first value, the second value, or the third value satisfies a threshold”.
This judicial exception is not integrated into a practical application. The elements are recited at a high level of generality, i.e. a generic computing system performing generic functions including generic processing of data. Accordingly, the additional elements do not integrate the abstract into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, the claims are directed to an abstract idea. MPEP §2106.04. Thus, under Step 2A, prong 2 of the Mayo framework, the examiner holds that the claims are directed to concepts identified as abstract.
STEP 2B. Because the claims include one or more abstract ideas, the examiner now proceeds to Step 2B of the analysis, in which the examiner considers if the claims include individually or as an ordered combination limitations that are "significantly more" than the abstract idea itself. This includes analysis as to whether there is an improvement to either the "computer itself," "another technology," the "technical field," or significantly more than what is "well-understood, routine, or conventional" in the related arts.
The instant application includes in claim 21 additional limitations to those deemed to be abstract ideas. When taken individually, these limitations are
“processor”;
“artificial intelligence model”; and
“training”.
In the instant case, claim 21 is directed to above mentioned abstract idea. Technical functions such as sending, receiving, displaying and processing data are common and basic functions in computer technology. The individual limitations are recited at a high level and do not provide any specific technology or techniques to perform the functions claimed.
Looking to MPEP §2106.05(d), based on court decisions well understood, routine and conventional computer functions or mere instruction and/or insignificant activity have been identified to include: Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321,120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TU Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); O/P Techs., /no., v. Amazon.com, Inc., 788 F,3d 1359, 1363, 115 USPQ2d 1090,1093 (Fed. Cir, 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPG2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result-a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink," (emphasis added)}; Insignificant intermediate or post solution activity -See Bilski v. Kappos, 581 U.S. 593, 611 -12, 95 USPQ2d 1001,1010 (2010) (well-known random analysis techniques to establish the inputs of an equation were token extra-solution activity); In Bilski referring to Flook, where Flook determined that an insignificant post-solution activity does not makes an otherwise patent ineligible claim patent eligible. In Bilski, the court added to Flook that pre-solution (such as data gathering) and insignificant step in the middle of a process (such as receiving user input) to be equally ineffective. The specification and Claim does not provide any specific process with respect to the display output that would transform the function beyond what is well understood. Like as found in Electric Power Group, Bilski, the technical process to implement the input and display functions are conventional and well understood.
In addition, when the claims are taken as a whole, as an ordered combination, the combination of steps does not add "significantly more" by virtue of considering the steps as a whole, as an ordered combination. The instant application, therefore, still appears only to implement the abstract idea to the particular technological environments using what is well-understood, routine, and conventional in the related arts. The steps are still a combination made to the abstract idea. The additional steps only add to those abstract ideas using well-understood and conventional functions, and the claims do not show improved ways of, for example, an unconventional non-routine functions for authorizing the timing of a payment and to activate a display screen based on a trigger or camera functions that could then be pointed to as being "significantly more" than the abstract ideas themselves. Moreover, examiner was not able to identify any "unconventional" steps, which, when considered in the ordered combination with the other steps, could have transformed the nature of the abstract idea previously identified. The instant application, therefore, still appears to only implement the abstract ideas to the particular technological environments using what is well-understood, routine, and conventional in the related arts.
Further, note that the limitations, in the instant claims, are done by the generically recited computing devices. The limitations are merely instructions to implement the abstract idea on a computing device and require no more than a generic computing devices to perform generic functions.
CONCLUSION. It is therefore determined that the instant application not only represents an abstract idea identified as such based on criteria defined by the Courts and on USPTO examination guidelines, but also lacks the capability to bring about "Improvements to another technology or technical field" (Alice), bring about "Improvements to the functioning of the computer itself" (Alice), "Apply the judicial exception with, or by use of, a particular machine" (Bilski), "Effect a transformation or reduction of a particular article to a different state or thing" (Diehr), "Add a specific limitation other than what is well-understood, routine and conventional in the field" (Mayo), "Add unconventional steps that confine the claim to a particular useful application" (Mayo), or contain "Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment" (Alice), transformed a traditionally subjective process performed by humans into a mathematically automated process executed on computers (McRO), or limitations directed to improvements in computer related technology, including claims directed to software (Enfish).
Dependent claims 22-27, which impose additional limitations, also fail to claim patent-eligible subject matter because the limitations cannot be considered statutory. Claim 22 recites a “server”, an “electronic communication session”, and an “electronic device”. These are generic elements. Claim 26 recites a “call center” and “routing a call”. These are generic elements. In reference to claims 22-27, these dependent claim haves also been reviewed with the same analysis as independent claim 1. The dependent claims have been examined individually and in combination with the preceding claims, however they do not cure the deficiencies of claim 1; where all claims are directed to the same abstract idea, "addressing each claim of the asserted patents [is] unnecessary." Content Extraction &. Transmission LLC v, Wells Fargo Bank, Natl Ass'n, 776 F.3d 1343, 1348 (Fed. Cir. 2014). If applicant believes the dependent claims are directed towards patent eligible subject matter, applicant is invited to point out the specific limitations in the claim that are directed towards patent eligible subject matter. Claim 28 recites a “computer readable medium”. This is a generic element. Claims 28 and 35 are otherwise similar to claim 21 and are rejected for the same reasons. Claims 29-34 and 36-40 depend from claims 28 and 35, respectively, are similar to claims 22-27, and are rejected for the same reasons.
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.
Claims 21, 24, 25, 28, 31, 32, 35, 38, and 39 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Number 7,296,734 B2 (hereinafter “Pilha”).
With respect to claim 21, Pilha discloses
“A method comprising”: Pilha, col. 2, lines 38-47;
“retrieving, by at least one processor, a monetary attribute associated with an account of a user”; Pilha, col. 2, lines 52-55 (data from cash accounts of user are periodically extracted);
“executing, by at least one processor, an artificial intelligence model to predict a first value indicating a negative cash flow in the account of the user, a second value indicating a depth of the negative cash flow, and a third value indicating a duration of the negative cash flow, the artificial intelligence model having been trained based on a training dataset comprising historical monetary data associated with a set of accounts comprising account activity of each account indicating whether each account within the set of accounts included a negative cash flow, a depth of the negative cash flow, and a duration of the negative cash flow”; Pilha, col. 2, line 52 to col. 3, line 2; col. 3 line 36 to col. 4, line 36; claim 12 (data are analyzed based on cash value and time to forecast future financial behavior using an artificial intelligence model); and
“transmitting, by the at least one processor, an indication that at least one of the first value, the second value, or the third value satisfies a threshold”. Pilha, col. 6, lines 17-26 (various threshold amounts are listed).
With respect to claims 24, 31, and 38, Pilha discloses
“further comprising: retrieving, by the at least one processor, user attributes associated with the user other than the monetary attribute associated with the account of the user, wherein the at least one processor applies the retrieved user attributes to the artificial intelligence model”. Pilha, col. 3, line 56 to col. 4, line 3 (demographic information is used by artificial intelligence model).
With respect to claims 25, 32, and 39, Pilha discloses
“wherein the user attributes comprise at least one of user's demographic data, user's income data, or user's account type”. Pilha, col. 3, line 56 to col. 4, line 3 (e.g., demographic data).
With respect to claim 28, Pilha discloses
“A computer system comprising a computer readable medium including instructions
that when executed cause at least one processor to.” Pliha, col. 4, line 63 to col. 5, line 6 (a server comprises a computer readable medium). Claim 28 is otherwise rejected on the same basis as claim 21.
With respect to claim 35, Pilha discloses
“A computer system comprising at least one processor configured to”. Pliha, col. 4, line 63 to col. 5, line 6 (a server comprises a processor). Claim 35 is otherwise rejected on the same basis as claim 21.
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 22, 23, 27, 29, 30, 34, 36, and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Pilha in view of U.S. Patent Application Publication 2003/0126079 A1 (hereinafter “Roberson”).
With respect to claims 22, 29, and 36, Pilha discloses
“further comprising: transmitting, by the at least one processor to a second server, the first value, the second value, or the third value, whereby the second server: executes an analytical model to determine a likelihood of account needs associated with the account of the user”. Pilha, col. 2, line 52 to col. 3, line 2; col. 3 line 36 to col. 4, line 36; col. 4,line 63 to col. 5, line 6; claim 12 (data are analyzed based on cash value and time to forecast future financial behavior using an artificial intelligence model; any number of servers can be utilized).
Pilha does not explicitly disclose electronic communication with a device of the user. Roberson discloses “establishes an electronic communication session with an electronic device of the user”. Roberson, paragraphs 0023, 0081 (electronic communication session with user allows inter alia communication regarding balance thresholds).
Both Pilha and Roberson relate to electronic methods to assist with banking transactions. Pilha, abstract; Roberson, abstract. It would have been obvious to one of ordinary skill in the art before the effective fling date of the claimed invention to include the electronic communication session feature as taught by Roberson in the method of Pilha with the motivation of providing a secure user-friendly system for micropayments. Roberson ¶¶ 0014-0017.
With respect to claims 23, 30, and 37, Pilha discloses
“wherein the second server identifies a product to be offered to the user based on the likelihood of account needs”. Pilha, col. 2, line 52 to col. 3, line 2; col. 3 line 36 to col. 4, line 36; col. 4, line 63 to col. 5, line 6; claim 12 (data are analyzed based on cash value and time to forecast future financial behavior using an artificial intelligence model).
With respect to claims 27 and 34, Roberson discloses
“denying, by the at least one processor, at least one transaction associated with the user”. Roberson, paragraph 0081 (transactions are denied for insufficient funds, for example).
Claims 26, 33, and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Pilha in view of Roberson, as applied to claims 22, 23, 27, 29, 30, 34, 36, and 37 above, and further in view of U.S. Patent Application Publication 2016/0173693 A1 (hereinafter “Spievak”).
With respect to claims 26, 33, and 40, neither Pilha nor Roberson discloses routing a call to a call center based on a value.
Spievak discloses
“wherein the second server is associated with a call center, and wherein the second server establishes the electronic communication session with the electronic device of the user by routing a call received from the electronic device of the user based on at least one of the first value, the second value, or the third value”. Spievak, ¶ 0450 (calls of users with high cash values are routed to VIP call center while other calls are routed to ordinary call center).
Pilha, Roberson, and Spievak all relate to electronic methods to assist with transactions. Pilha, abstract; Roberson, abstract; Spievak, abstract. It would have been obvious to one of ordinary skill in the art at the time of filing to include the call center routing feature as taught by Spievak in the method of Pilha/Roberson with the motivation of providing superior service to high value customers. Spievak, ¶¶ 0004-0008.
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent Number 11,798,059 B2 (hereinafter “Nosrati”). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 21-40 of the present application are broader than and anticipated by claims 1-16 of Nosrati. For example, claims 21-40 lack the step of identifying values as correct values.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ETHAN D CIVAN whose telephone number is (571)270-3402. The examiner can normally be reached Monday-Thursday 8-6:30.
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, Jeffrey A Smith can be reached at (571) 272-6763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ETHAN D. CIVAN
Primary Examiner
Art Unit 3688
/ETHAN D CIVAN/Primary Examiner, Art Unit 3688
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