DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Terminal Disclaimer
2. The terminal disclaimer filed on 8/4/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 11875398, 12380494 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
3. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea without significantly more.
Using the language in claim(s) 1-20 to illustrate, the limitations of communications module; an image module; receive a cheque for deposit; capture an image of the cheque using the image module; simultaneously transmit: the captured image of the cheque; and a transaction authorization request based on the cheque to an automated teller machine (ATM) switch; responsive to a rejection or timeout of the transmission of the captured image of the cheque or the transmission of the transaction authorization request, transmit a cancellation request corresponding to the other transmission; and return the cheque, as drafted, is a process that, under its broadest reasonable interpretation, covers certain methods of organizing human activity, in particular, commercial or legal interaction, but for the recitation of generic computer components. The claims as a whole recite a method of organizing human activity.
The claimed invention allows for processing of cheques received for deposit at an ATM which is a commercial interaction. The mere nominal recitation of an ATM comprising a communications module , and an image module, at least one processor, and a memory coupled to the at least one processor and storing instructions that, when executed by the at least one processor, configure the at least one processor to perform the claimed steps/functions, a server computer, and an ATM switch, do not take the claim out of the methods of organizing human activity grouping. Thus, under Eligibility Step 2A, prong one, (MPEP §2106.04(a)), the claims recite an abstract idea.
Under Eligibility Step 2A, prong two, (MPEP §2106.04(d)), this judicial exception is not integrated into a practical application. In particular, the claims only recite the additional elements—and an ATM comprising a communications module , and an image module, at least one processor, and a memory coupled to the at least one processor and storing instructions that, when executed by the at least one processor, configure the at least one processor to perform the claimed steps/functions, a server computer, and an ATM switch recited at a high-level of generality performing a generic computer functions of receiving a cheque, capturing an image of the cheque, transmitting the captured image and transaction authorization request, responsive to a rejection or timeout of transmission of captured image or transaction authorization request, transmitting a cancellation request, and returning the cheque ) such that they amount to no more than mere instructions to apply the exception using generic computer components (see MPEP §2106.05(f)). Accordingly, 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.
Similar arguments can be extended to independent claims 12 and 20 and hence claims 12 and 20 are rejected on similar grounds as claim 1. In addition, claim 12 recites a computer-implemented method executed by a processor of an ATM and claim 20 recites a non- transitory computer-readable storage medium that amount to generic computer implementation.
The claims are directed to an abstract idea.
Under Eligibility Step 2B, (MPEP §2106.05), the claim(s) does/do 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 elements of using an Atm comprising a processor executing instructions stored in memory, a server and ATM switch , amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. The claims are not patent eligible.
The dependent claims have been given the full two part analysis including analyzing the additional limitations both individually and in combination. The dependent claim(s) when analyzed both individually and in combination are also held to be patent ineligible under 35 U.S.C. 101 because for the same reasoning as above and the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea. Dependent claims 2-11, 13-19 simply help to define the abstract idea. The additional limitations of the dependent claim(s) when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
Viewing the claim limitations as an ordered combination does not add anything further than looking at the claim limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea. Accordingly, claim(s) 1-20 is/are ineligible.
Response to Arguments
4. In response to the amendment of claims 13-19, the Examiner withdraws the 35 U.S.C. § 112(b) rejection.
Applicant's arguments filed 7/27/26 have been fully considered but they are not persuasive.
On pages 6-7 of the Remarks, Applicants contend that the claims are not directed to an abstract idea and under PTO guidance do not fall into one of the groupings of abstract ideas. Applicants further argue that the claims are not directed to a commercial interaction and therefore do not fall into the Certain Methods of Organizing Human Activity category of abstract ideas. The Examiner respectfully disagrees.
The Patent Office has issued guidance about this framework. -See MPEP§ 2106 (9th ed. Rev. 10.2019, rev. June 2020), in particular, Sections 2103 through 2106.07(c). As indicated in the MPEP § 2106, to decide whether a claim is directed to an abstract idea, we evaluate whether the claim (1) recites one of the abstract ideas listed in the Revised Guidance (“Prong One”) and (2) fails to integrate the recited abstract idea into a practical application (“Prong Two”).
Beginning with Prong One, step 2A of the eligibility analysis, we must determine whether the claims at issue are directed to one of those patent-ineligible concepts. One of the subject matter groupings identified as an abstract idea in the Guidance is “[certain methods of organizing human activity—fundamental economic principles or practices (including . . . mitigating risk, insurance); commercial. . . interactions (including agreements in the form of contracts; . . . sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including . . . following rules or instructions)].” See MPEP 2106.04(a).
Here, apart from the recited systems, i.e., an automated teller machine comprising: a communications module; an image module; at least one processor; and a memory coupled to the at least one processor and storing instructions that, when executed by the at least one processor, configure the at least one processor to perform the claimed steps and functions, and an ATM switch, claim 1 recites abstract ideas in the category of “methods of organizing human activity.”
In the 101 analysis in the rejection above, the Examiner identifies and considers each of the underlying steps for the claims as a basis for describing and explaining the recited abstract idea. For example, the Examiner identifies the underlying steps of claim 1 —i.e., the “receiving,” “capturing,” “transmitting” and “returning,—and explains that they describe the concept of processing of cheques received for deposit at an ATM which is a commercial interaction. The claim requires receiving a check for deposit, processing the check image and transmitting a transaction authorization request, i.e., a commercial interaction. The Examiner’s approach here is consistent with USPTO guidance.
Applicants suggest that the claims recite a “transmission control sequence” and that this feature does not amount to an abstract idea. The argument is not convincing because as explained in the rejection and in the paragraphs above, the claims recite generic computer components operating in their ordinary capacity. In other words, the focus of the claims is not on an improvement to the identified additional elements as tools, but on the abstract ideas that use the additional elements as tools. The use of generic computer components to carry out the abstract idea does not impose any meaningful limit on the computer implementation of the abstract idea.
On pages 8-9 of the Remarks, Applicants argue that the claims recite elements or a combination of elements which “integrate the exception into a practical application of the exception.” Applicants suggest that the “claimed subject matter advances that improvement in a specific and concrete way. Rather than transmitting the cheque image to the server computer system and then, only upon receiving a response, transmitting the transaction authorization request to the automated teller machine switch, Applicant's claimed subject matter transmits both simultaneously.” The Examiner respectfully disagrees. Under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to 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 exception. Limitations that are not indicative of integration into a practical application are those that are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea.-see MPEP 2106.05(f).
Furthermore, in determining whether a claim integrates a judicial exception into a practical application, a determination is made of whether the claimed invention pertains to an improvement in the functioning of the computer itself or any other technology or technical field (i.e., a technological solution to a technological problem). Here, the claims recite generic computer components, i.e., communications module, image module, processor, memory, server computer, and automated teller machine switch. The communications module, image module, processor, memory, server computer, and automated teller machine switch are recited at a high level of generality and are recited as performing generic computer functions customarily used in computer applications.
Applicants argue that the simultaneous transmission removes that serial dependency and reduces the total time the system spends completing the transaction.
Applicant further argues that the claimed invention improves timing with a specific recovery mechanism: if either transmission is rejected or times out, the automated teller machine transmits a cancellation request corresponding to the other transmission and returns the cheque resulting in a practical application of the abstract idea.
This argument is not persuasive because the argued increase in speed and capability comes from the capabilities of a general-purpose computer that includes a processor, modules, a memory and an ATM switch, rather than the claimed method itself. See Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012)(“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”).
Regarding the argument that a claim directed to an improvement in how a computer system itself operates is not directed to an abstract idea merely because the improvement is implemented using a computer and that the claims of the instant invention are similar to the features recited in the claims at issue in Enfish. The argument is not persuasive. The claims in Enfish were not simply adding conventional computer components to well-known business practices; mathematical formulas performed on any general purpose computer; or generalized steps performed on a computer using conventional computer activity. The patent claims here are not directed to a specific implementation to a solution to a problem in the software arts of improving the way a computer stores and retrieves data in memory through use of a specific data structure. In Enfish, The claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement—a particular database technique—in how computer could carry out one of their basic functions of storage and retrieval of data. Enfish, 822 F.3d at 1335-36. The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.
Applicants contend that the claims are directed to a practical application of the abstract idea under Prong Two and are similar to the claims in the CAFC decision, Uniloc v. LG Electronics, Fed. Cir. 2020. The argument is not convincing. In the Uniloc v. LG decision, the claims at issue do not merely recite generalized steps to be performed on a computer using customary or conventional computer activity. Instead, they are directed to “adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station.” See, e.g., ’049 patent at Claim 2.
The specification in Uniloc v. LG explained that because many secondary stations are battery-operated, secondary stations may enter a “park” mode and cease active communications with the primary station to conserve power. Id. at 1:43–45, 1:62–66. A secondary station in parked mode remains synchronized with the primary station, but it must be polled before it can leave park mode and actively communicate with the primary station. Id. at 1:43–51. Furthermore, the specification explained that the invention improved conventional communication systems by including a data field for polling as part of the inquiry message, thereby allowing primary stations to send inquiry messages and conduct polling simultaneously… at Abstract. The claimed invention therefore enabled “a rapid response time without the need for a permanently active communication link” between a parked secondary station and the primary station. Id. at Abstract. The court found that the claims were directed to a specific asserted improvement to the functionality of the communication system itself.
Here, the claimed invention is directed to an improvement in a business process, not technology. The focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.
On page 10 of the Remarks, under Step 2B, Applicants argue that claimed subject matter recites significantly more than any alleged abstract idea because the claims do not recite generic computer components and the characterization as such looks at the elements individually rather than as an ordered combination, contrary to the guidance in MPEP 2106.05, which states that an inventive concept can be found in a non-conventional and non- generic arrangement of otherwise known components. The Examiner respectfully disagrees. As indicated in the 35 USC 101 rejection above, “Viewing the claim limitations as an ordered combination does not add anything further than looking at the claim limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea.” Furthermore, mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
Applicants further allege that the Examiner did not cite evidence establishing that the claimed invention is well-understood, routine and conventional. The Examiner respectfully disagrees with this argument.
The Federal Circuit in Berkheimer made clear that “not every § 101 determination contains genuine disputes over the underlying facts material to the § 101 inquiry.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). In fact, the Federal Circuit in Berkheimer did not require evidentiary support for independent claim 1 because “[t]he limitations [of claim 1] amount to no more than performing the abstract idea of parsing and comparing data with conventional computer components.” Id. at 1370.
The claims are not patent eligible.
Conclusion
5. THIS ACTION IS MADE FINAL. 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 ELDA MILEF whose telephone number is (571)272-8124. The examiner can normally be reached Monday-Thursday 6:30am-3:30pm; Friday 7am-12pm.
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/ELDA G MILEF/Primary Examiner, Art Unit 3694
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