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 is the Non-Final Office Action in response to the Application No. 19/232,980 filed on June 10, 2025, title: “Configuration Of Data Transfer Recipient”.
Status of the Claims
Claims 1-20 are pending in the application and have been examined.
Priority
This Application is a CON of US Application No. 17/344,398 filed on 06/10/2021 (Patented No. 12,354,067), which is a CON of US Application No. 16/368,944 filed on 03/29/2019 (Patented No. 11,062,389), which claims the benefit of US Provisional Application No. 62/755,792, filed on 11/05/2018.
For the purpose of examination, the 11/05/2018 is considered to be the effective filing date.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/30/2025 and 06/10/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS are being considered by the examiner. Copies of the PTO-1449 form with the examiner’s initials are enclosed to this Office Action.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of US Patent No. 12,354,067 and claims 1-14 of US Patent No. 11,062,389. Although the claims at issue are not identical, they are not patentably distinct from each other because the examined claims are broader than the reference claims in the patents and anticipated by the reference claims. The examined claims recite substantially the same limitations as the reference claims in the patents with minor variations that would have been obvious to one of ordinary skill in the art. Also, the application and the patents are directed to the same invention of data transfer configuration, have the same inventors, and are commonly owned. Therefore, this rejection is deemed necessary.
Application No. 19/232,980
Patent No. 11,062,389
Claim 1, A server computer system comprising:
Claim 1, A server computer system comprising:
a communications hardware component for communicating with other computer systems; a processor coupled to the communications hardware component; and a memory storing processor-executable instructions which, when executed, configure the processor to:
a communications device; a processor coupled to the communications device; and a memory storing processor-executable instructions which, when executed, configure the processor to:
send, via the communications device, a message from the server computer system to a resource usage tracking server, the message including identification information for an entity;
in response to the message, receive, via the communications device and from the resource usage tracking server, historical resource usage data for the entity;
identify a plurality of transfer recipients based on entity identification information for an entity and historical resource usage associated with an entity;
identify a first data transfer recipient associated with the historical resource usage data for the entity by using a database of supported data transfer recipients;
identify a second data transfer recipient associated with the historical resource usage data for the entity by using the database of supported data transfer recipients;
perform an evaluation of the first data transfer recipient and the second data transfer recipient based on category data associated with at least one of the first data transfer recipient and the second data transfer recipient, the evaluation including determining that an account has previously been configured based on a third data transfer recipient associated with a category that is also associated with the second data transfer recipient;
select the first data transfer recipient based on the evaluation;
send, via the communications hardware component, a first signal, the first signal causing a client device associated with the entity to display a list of transfer recipients, the list based on the identified plurality of transfer recipients and the list including a first transfer recipient;
send, via the communications device, a message, the message causing a client device associated with the entity to display a selectable option for data transfer to the identified first data transfer recipient;
receive, via the communications hardware component, a second signal, the second signal indicating selection of a selectable option to add the first transfer recipient as a pre-configured transfer recipient without requiring input of identification information for the first transfer recipient at the client device; and
receive, via the communications device an indication of a selection of the selectable option for data transfer to the identified first data transfer recipient; and
in response to receiving the second signal, configure an account associated with the entity to add the first transfer recipient as a pre-configured transfer recipient without requiring input of identification information for the first transfer recipient at the client device.
in response to receiving the indication of the selection of the selectable option for data transfer to the identified first data transfer recipient, configure the account associated with the entity based on the first data transfer recipient.
Application No. 19/232,980
Patent No. 12,354,067
Claim 1, A server computer system comprising:
Claim 1, A server computer system comprising:
a communications hardware component for communicating with other computer systems; a processor coupled to the communications hardware component; and a memory storing processor-executable instructions which, when executed, configure the processor to:
a communications hardware component for communicating with other computer systems; a processor coupled to the communications hardware component; and a memory storing processor-executable instructions which, when executed, configure the processor to:
receive an entity request for adding a data transfer recipient from a client device associated with the entity, the entity request associated with entity identification information;
identify a plurality of transfer recipients based on entity identification information for an entity and historical resource usage associated with an entity;
identify a plurality of data transfer recipients based on entity identification information, a historical resource usage data associated with the entity, and data from a database of supported data transfer recipients;
order at least a subset of the plurality of data transfer recipients into an ordered list of data transfer recipients based on at least one of: dates associated with data transfer recipients in the historical resource data, locations of the identified plurality of data transfer recipients, categories associated with each of the plurality of identified data transfer recipients, and measure of commonness for the plurality of data transfer recipients as determined from other entity accounts;
send, via the communications hardware component, a first signal, the first signal causing a client device associated with the entity to display a list of transfer recipients, the list based on the identified plurality of transfer recipients and the list including a first transfer recipient;
in response to ordering at least the subset of the plurality of data transfer recipients into an ordered list of data transfer recipients, send, via the communications hardware component, a first signal, the first signal causing a client device associated with the entity to display the ordered list of data transfer recipients and a selectable option for adding a first data transfer recipient from the ordered list of data transfer recipients as a pre-configured data transfer recipient without requiring input of any identification information for the first data transfer recipient at the client device;
receive, via the communications hardware component, a second signal, the second signal indicating selection of a selectable option to add the first transfer recipient as a pre-configured transfer recipient without requiring input of identification information for the first transfer recipient at the client device; and
receive, via the communications hardware component, a second signal, the second signal indicating selection of the selectable option for adding the first data transfer recipient as a pre-configured data transfer recipient without requiring input of any identification information for the first data transfer recipient at the client device;
in response to receiving the second signal, configure an account associated with the entity to add the first transfer recipient as a pre-configured transfer recipient without requiring input of identification information for the first transfer recipient at the client device.
in response to receiving the second signal, configure an account associated with the entity to add the first data transfer recipient as a pre-configured data transfer recipient without requiring input any identification information for the first data transfer recipient at the client 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.
Step 1:
Under Step 1, the claims are reviewed to determine whether they fall within the four statutory categories of patentable subject matter (i.e., process, machine, manufacture, or combination of matter).
Claims 1-10 recite a server computer system comprising communications hardware components, processors, and memories, claims 11-19 recite a method performed at a server comprising steps, and claim 20 recites a non-transitory computer-readable storage medium comprising processor-executable instructions. Therefore, the claims are directed to a machine, process, and manufacture which fall within the four statutory categories of invention (Step 1-Yes, the claims are statutory).
Step 2A, Prong 1:
Under Step 2A, Prong 1, the claims are reviewed to determine whether they recite a judicial exception by identifying if the claim limitations fall in one of the enumerated abstract idea groupings (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability.
Claim 10, A method performed at a server, the method comprising:
identifying, by the server, a plurality of transfer recipients based on entity identification information for an entity and historical resource usage data associated with the entity;
sending, by the server, a first signal via a communications hardware component, the first signal causing a client device associated with the entity to display a list of transfer recipients, the list based on the identified plurality of transfer recipients and the list including a first transfer recipient;
receiving, by the server, a second signal via the communications hardware component, the second signal indicating selection of a selectable option to add the first transfer recipient as a pre-configured transfer recipient without requiring input of identification information for the first transfer recipient at the client device; and
in response to receiving the second signal, configuring, by the server, an account associated with the entity to add the first transfer recipient as a pre-configured transfer recipient without requiring input of identification information for the first transfer recipient at the client device.
The above limitations (underlined), as drafted, is a process that, under its broadest reasonable interpretation, covers a method of organizing human activity but for the recitation of generic computer components (e.g., a server computer system comprising communications hardware components, processors, and memories with stored processor-executable instructions). More specifically, the claim recites a method for configuring data transfer over a network to a recipient. The claim recites a process of configuring data transfer to a recipient over a network, which is a method of organizing human activity, specifically commercial interaction as it is directed to sales activities or behaviors (i.e., agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations) See MPEP 2106.04(a)(2)III.C.2.
If the claim limitations, under their broadest reasonable interpretation, cover performance of a commercial interaction, then they fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Claim 1 recites a server computer system and claim 20 recite a computer program with the same elements and limitations as discussed in claim 11. The mere nominal recitation of computer components (such as a server computer system comprising communications hardware components, processors, and memories with stored processor-executable instructions – see claims 1 and 20) do not take the claims out of the methods of organizing human activity grouping. Accordingly, these claims also recite an abstract idea (Step 2A, Prong 1-Yes, the claims recite an abstract idea).
Step 2A, Prong 2:
Under Step 2A, Prong 2, the claims are reviewed to determine whether the judicial exception (i.e., abstract idea) is integrated into a practical application. In order to make this determination, the additional element(s), or combination of elements, are analyzed to determine if the claim as a whole integrates the recited judicial exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.
The claims (1, 11, and 20) include the additional elements, such as a server computer system comprising communications hardware components, processors, and memories with stored processor-executable instructions, all are recited at a high level of generality and are merely invoked as tools to perform the identifying, sending, receiving, and configuring steps. Applicant’s Specification does not describe how these computer elements are different from the general computer components (see US Application Publication No. 2025/0307789 in paragraphs 38-70 and Figures 1-4).
The additional elements recited: a server computer system comprising communications hardware components; a processor coupled to the communications hardware component; and a memory storing processor-executable instructions which, when executed, configure the processor to perform the steps of identifying, sending, receiving, and configuring. These additional limitations do not integrate the judicial exception into a practical application. In particular, the claimed computer steps of identifying, sending, receiving, and configuring data are amount to no more than mere instructions to apply the exception using a generic computer system which is not indicative of integration into a practical application. See MPEP 2106.05(f).
The judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements of a server computer system comprising processors, and memories with stored instructions. The server computer system is recited at a high-level of generality (i.e., as a generic processor performing generic computer functions of receiving/transmitting communications, processing information, querying the database) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Accordingly, even considered in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, the claims are directed to an abstract idea (Step 2A, Prong 2-No, the claims do not integrate the abstract idea into a practical application).
Step 2B:
Under Step 2B, the claims are reviewed to determine whether the claims provide an inventive concept (i.e., whether the claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
The independent claims (1, 11, and 20) do not include additional elements, considered both individually and as an ordered combination, 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 server computer system to perform the identifying, sending, receiving, and configuring functions as claimed 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 independent claims are not patent eligible.
Dependent claims 2-10 and 12-19 depend on claims 1 and 11 and include all the elements and limitations of claims 1 and 11. Therefore, the claims also recite the same abstract idea of their independent claims.
Claims 2 and 12 recite the additional elements “further comprising: identifying, by the server, a second transfer recipient from the plurality of transfer recipients for the entity; and prior to sending the first signal by the server: performing, by the server, an evaluation of the first transfer recipient and the second transfer recipient; and selecting, by the server, the first transfer recipient for inclusion in the list based on the evaluation and excluding the second transfer recipient from the list.” The limitations are additional instructions for identifying a second transfer recipient, performing an evaluation of first/second transfer recipients, and selecting the first recipient for inclusion in the list, and amount to well-understood, routine, and conventional functions (see MPEP 2106.05(d)). The claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept.
Claims 3 and 13 recite the additional elements “wherein evaluating the first transfer recipient and the second transfer recipient comprises evaluating the first transfer recipient and the second transfer recipient based on a location associated with the entity.” The limitations are additional instructions for evaluating the first transfer recipient and second transfer recipient based on a location, and amount to well-understood, routine, and conventional functions (see MPEP 2106.05(d)). The claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept.
Claims 4 and 14 recite the additional elements “wherein evaluating the first transfer recipient and the second transfer recipient comprises evaluating the first transfer recipient and the second transfer recipient based on category data associated with at least one of the first transfer recipient and the second transfer recipient.” The limitations are additional instructions for evaluating the first transfer recipient and the second transfer recipient based on category data, and amount to well-understood, routine, and conventional functions (see MPEP 2106.05(d)). The claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept.
Claims 5 and 15 recite the additional elements “wherein evaluating the first transfer recipient and the second transfer recipient based on the category data comprises determining that the account has previously been configured based on a third transfer recipient associated with a category that is also associated with the second transfer recipient.” The limitations are additional instructions for evaluating the first transfer recipient and the second transfer recipient based on category data comprises a determination of the account that has been configured based a third transfer recipient, and amount to well-understood, routine, and conventional functions (see MPEP 2106.05(d)). The claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept.
Claims 6 and 16 recite the additional elements “wherein the first signal is provided in real-time in response to receiving, by the server, an entity request to add a transfer recipient from the client device, the entity request associated with the entity identification information.” The limitations are additional instructions for the first signal, and amount to well-understood, routine, and conventional functions (see MPEP 2106.05(d)). The claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept. Therefore, the claims are not patent eligible.
Claims 7 and 17 recite the additional elements “further comprising: extracting, by the server, an account identifier that identifies an account of the first transfer recipient from the historical resource usage data, and wherein configuring the account associated with the entity based on the first transfer recipient comprises configuring the account based on the account identifier.” The limitations are additional instructions for extracting an account identifier and configuring the account based on the account identifier, and amount to well-understood, routine, and conventional functions (see MPEP 2106.05(d)). The claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept.
Claims 8 and 18 recite the additional elements “wherein the account identifier is a partial identifier and wherein the method further comprises: causing, by the server, the client device to prompt for confirmation of the account identifier.” The limitations are additional instructions for the partial account identifier and prompting the client for completion, and amount to well-understood, routine, and conventional functions (see MPEP 2106.05(d)). The claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept.
Claims 9 and 19 recite the additional elements “wherein the list is an ordered list and wherein the method further comprises: ordering at least a subset of the plurality of transfer recipients into the ordered list based on categories associated with the identified transfer recipients.” The limitations are additional instructions for ordering a subset of the transfer recipients into the ordered list based on categories, and amount to well-understood, routine, and conventional functions (see MPEP 2106.05(d)). The claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept.
Claim 10 recites the additional elements “wherein the list is an ordered list and wherein the instructions further configure the processor to: order at least a subset of the plurality of transfer recipients into the ordered list based on a measure of commonness for the plurality of transfer recipients as determined from other entity accounts.” The limitations are additional instructions for ordering a subset of transfer recipients into the ordered list based on a measure of commonness for the transfer recipients determined from other entity accounts, and amount to well-understood, routine, and conventional functions (see MPEP 2106.05(d)). The claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept.
The dependent claims recite limitations that further define the same abstract idea noted in their independent claims. The dependent claims do not include any additional elements that are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination when considered both individually and as an ordered combination. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Therefore, the dependent claims also are not patent eligible.
The focus of the claims is on a method of configuring data transfer to a recipient over a network using a server computer system. The claims are not directed to a new type of computing device, a processor, or memory, nor do they provide a method of processing data that improves existing technological processes. The focus of the claims is not on improving computer-related technology, but on an independently abstract idea that uses computers as tools. Accordingly, when viewed as a whole, the claims do no more than generally linking the use of the judicial exception to a particular technological environment or field of use. No inventive concept is found in the claims. Therefore, the claims do not add significantly more (i.e., an inventive concept) to the abstract idea (Step 2B-No, the claims are not significantly more than the abstract idea).
Claim Rejections - 35 USC § 102/103
A prior art search was performed and no art was identified that teaches each and every element and limitation of the claims at this time.
The prior arts made of record and not relied upon are considered pertinent to applicant's disclosure. The arts are listed below and in the PTO-892 form:
Guido et al., “Scheduling Frequency And Duration Of Financial Institution Fund Transfer”, US Publication No. 2016/0300199-A1, dated October 13, 2016.
Enenkiel, “Methods, Systems And Computer Programs For Processing Data In A World-Wide-Web Service Environment”, US Patent No. 8,548,939-B2, dated October 1, 2013.
Royer et al., “System And Method For Selecting Financial Services”, US Publication No. 2004/0155101-A1, dated August 12, 2004.
Conclusion
Claims 1-20 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAI TRAN whose telephone number is (571)272-7364. The examiner can normally be reached Monday-Friday, 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine M. Behncke can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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HAI TRAN
Primary Examiner
Art Unit 3695
/HAI TRAN/Primary Examiner, Art Unit 3695
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