Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
This communication is in response to Applicant’s amendment filed 29 October 2025. Claims 26, 33 and 40 have been amended. Claims 26-45 are pending. The rejections are as stated below.
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 the claimed invention is directed to non-statutory subject matter. In particular, claims are directed to a judicial exception (abstract idea) without significantly more.
Claim 26 (exemplary) recites a series of steps for converting image data scanned from a physical document into a format compatible with data elements included in a request message for processing a financial transaction.
The claim is directed to a process, which is a statutory category of invention.
The claim is then analyzed to determine whether it is directed to a judicial exception. The claim recites the limitations of processing and transmitting request messages; storing a lookup table associating each of a plurality of routing numbers with a corresponding one of a plurality of bank identification numbers (BINs), wherein each of the plurality of routing numbers identifies a respective institution within a routing system and each of the corresponding BINs identifies the respective institution; scanning the physical document to create an image of the physical document and capture the image data included in the physical document, wherein the physical document is scanned to process a first transaction type associated with a transaction, and wherein the image data includes a first plurality of data elements associated with the first transaction type; receiving the image of the physical document including the image data captured by scanning the physical document; extracting, in real-time, using image analysis, the image data from the image, wherein the image data includes a routing number, an account number associated with an account, and an amount; matching the routing number to one of the plurality of routing numbers in the lookup table by performing an electronic lookup within the lookup table using the routing number; retrieving from the lookup table, the corresponding BIN for the matched one of the plurality of routing numbers; converting, in real-time the first plurality of data elements into a second plurality of digital data elements associated with a second transaction type by, generating (i) a number based on the corresponding BIN and a predesignated number of randomly generated placeholder digits, and (ii) the request message formatted in compliance with an ISO standard for interchange messaging, wherein the ISO standard defines the second plurality of data elements, wherein a set of the second plurality of data elements includes an account number field, an amount field, and an additional account information field, wherein the account number field includes the generated number, wherein the amount field includes the amount extracted from the image, and wherein the additional account information field includes the account number extracted from the image; transmitting, in real-time the request message; receiving in response to processing the request message, a response message formatted in compliance with the ISO standard, wherein the response message indicates that the transaction is authorized including that the account has sufficient funds to cover the amount; and transmitting the response message, thereby completing the transaction by finalizing conversion of the first transaction type as the second transaction type.
The claimed system simply describes series of steps for converting image data scanned from a physical document into a format compatible with data elements included in a request message for processing a financial transaction. These limitations, as drafted, are processes that, under its broadest reasonable interpretation, covers performances and concepts relating to managing interactions/sales activities that enhance customer experience with making payments at a point of sale (see Priceplay.com, Inc. v. AOL Advert., Inc., 83 F. Supp. 3d 577, 580 (D. Del. 2015), aff'd, 627 F. App’x 925 (Fed. Cir. 2016) (Rule 36)), and, therefore, fall within the certain methods of organizing human activity category of the USPTO’s Guidance. See 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14. These limitations are directed to a method of organizing human activity which includes commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing, or sales activities or behaviors; business relations) and managing personal behavior or relationships or interactions between people (including following rules or instructions).
Next, the claim is analyzed to determine if it is integrated into a practical application. The recited judicial exception may be integrated into a practical application by identifying whether there are any additional elements recited in the claim beyond the judicial exception and evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. The claim recites additional limitation of a computing device, at least one processor in communication with a memory device; a switch processing system in communication with the at least one a processor and a plurality of end nodes over the computer network; at least one point of sale computing device; at least one electronic scanning device and in communication with the at least one processor to perform the steps. The processor in the steps is recited at a high level of generality, i.e., as a generic processor performing a generic computer function of processing data. This generic processor limitation is no more than mere instructions to apply the exception using generic computer component. Merely adding generic computer components to perform abstract ideas does not integrate those ideas into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 55 (identifying “merely includ[ing] instructions to implement an abstract idea on a computer” as an example of when an abstract idea has not been integrated into a practical application). Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. 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. The claim is directed to the abstract idea.
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer (using the computer as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the computer at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at or provide an inventive concept.
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea. Therefore, the claim is not patent eligible.
The analysis above applies to the statutory category of invention of claims 26, 33 and 40. Furthermore, the dependent claims 27-32, 34-39 and 41-45 do not resolve the issues raised in the independent claims.
The dependent claims do not add limitations that meaningfully limit the abstract idea. Dependent claims 27-32, 34-39 and 41-45, recite additional limitations and steps, wherein the at least one point of sale computing device and the computing device are the same device, wherein the point of sale computing device is in networked communication with a member interface processor (MIP) computing device, and wherein the MIP computing device includes the at least one processor, wherein the MIP computing device is implemented by at least one of an acquiring bank and a merchant, wherein the ISO standard further defines a forwarding institution identifier field, and wherein the request message further includes the routing number in the forwarding institution identifier field, wherein the predesignated number of randomly generated placeholder digits are selected based on at least one of (i) an unused debit card number and (ii) a generic debit card number and wherein the electronic image includes an image scan, and wherein the method further comprises transmitting, by the at least one processor, the image scan to a computing device of the respective bank identified by the routing number. However, as mentioned above with respect to the independent claims, the claimed limitations are no more than mere instructions to apply the exception using generic computer component. Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, the 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. The claim is directed to the abstract idea.
These claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer. The claim merely amounts to the application or instructions to apply the abstract idea on a processor, and is considered to amount to nothing more than requiring a generic processor to merely carry out the abstract idea itself.
The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as integrating the abstract idea into a practical application or amounts to significantly more than the abstract idea itself.
Accordingly, claims 26-45 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Response to Arguments
Applicant's arguments with respect to 35 USC § 101 directed to non-statutory subject matter been fully considered but they are not persuasive.
The proposed amendments do not overcome the 35 U.S.C. 101 rejection. Applicant amended the claims to include the above-mentioned steps. The same updated analysis based on the new 2019 Patent Eligibility Guidance (2019 PEG) applies to the newly added claimed limitations as discussed above and in the previous office action rejections. The instant claims do not attempt to solve an unconventional technological solution, but rather use the processor as a tool to implement the abstract idea.
Examiner incorporates herein the response to arguments from the previous office actions.
The additional elements are generic recitation of one or more processors. The concept is directed to the abstract idea of converting image data scanned from a physical document into a format compatible with data elements included in a request message for processing a financial transaction. The newly added additional elements, even when limited to a particular context do not change their character as information or data and therefore, remains within the realm of the abstract idea.
Under Step 2A Prong 1, Applicant submits that the amended claims are eligible because they do not recite a judicial exception that “falls within any of the groupings of abstract ideas enumerated in Section I of the 2019 PEG certain methods of organizing human activity. Examiner respectfully disagrees. As mentioned previously, the claims are directed to the abstract idea of “routing data elements including data scanned from a document to make a payment for a transaction”. Throughout specification, drawings and the claims, the system converts data from a physical document into a format compatible with data elements included in a request message for processing a financial transaction, which is commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing, or sales activities or behaviors; business relations), which clearly falls under a method of organizing human activity that includes commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing, or sales activities or behaviors; business relations). Therefore, it seems reasonable for the Examiner to refer to group the abstract idea under “Certain methods of organizing human activity” as enumerated in Section I of the 2019 PEG.
Applicant cites the Kim Memorandum regarding integration into practical application. The Kim memorandum emphasizes the recitation of a specific technological improvement and not just automation of a business process using generic computers. The present claims improve how a business process is performed using a computer.
In Ex parte Desjardins, the claims are related to a specific improvement to machine learning models and to computer security architecture (improved authentication techniques), to ‘effectively learn new tasks in succession whilst protecting knowledge about previous tasks.’ In contrast, the instant claims do not improve the functioning of the computer. The claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem. Also, limiting the use of an abstract idea “‘to a particular technological environment’ does not confer patent eligibility as this cannot be considered an improvement to computer or technology.
The claims here do not recite an improvement in computers. The claims do not improve the functioning of the computer, or solve any technological problem. Rather, the claim simply “includes instructions to implement an abstract idea on a computer” and “does no more than generally link the use of a judicial exception to a particular technological environment or field of use.” 2019 Revised Guidance, 84 Fed. Reg. at 55. The claim uses generic computer components and generic computer functionality to make payments. The claims merely uses instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea. Here, the additional limitations do not integrate the judicial exception into a practical application.
The claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem/internet-centric problem. Limiting the use of an abstract idea “‘to a particular technological environment’ does not confer patent eligibility as this cannot be considered an improvement to computer or technology and so cannot be “significantly more.”
In addition, Applicant submits that the claims show an integration of the technical improvement into a practical application.
Examiner respectfully disagrees that the claims are directed to an improvement computer technology. As found by the courts “In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly . . ..” SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010); see also Content Extraction, 2013 WL 3964909, at *12 (“the mere use of a computer to more quickly and efficiently . . . accomplish a given task does not create meaningful limitation on an otherwise abstract and wide-ranging concept”).
A claim may be found to be eligible if it integrates a judicial exception into a practical application as cited by Applicant. However, examiner notes that "claiming the improved efficiency inherent with applying the abstract idea on a computer" does not provide an inventive concept (see MPEP §2106.05(f)(2).) Claiming improved data processing efficiency inherent with applying any improvement to the judicial exception itself on a computer does not provide an inventive concept. The claims do not integrate the judicial exception into a practical application.
The claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem.
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).
According to 2019 Patent Eligibility Guidelines (2019 PEG), limitations that are indicative of integration into a practical application include:
• Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
• Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition - see Vanda Memo
• Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
• Effecting a transformation or reduction of a particular article to a different state or thing -see MPEP 2106.05(c)
• Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e).
In the instant case, the judicial exception is not integrated into a practical application, because none of the above criteria is met. The amended limitations of the claims do not result in computer functionality improvement or technical/technology improvement when the underlying abstract idea is implemented using technology. The amendments to the claims only further define the data being used however, a specific abstract idea is still an abstract idea. All the features in the Applicant’s claims can at best be considered an improvement in the abstract idea. The advantages over conventional systems are directed towards improving the abstract idea. Hence, the additional elements in the claims are all generic components suitably programmed to perform their respective functions. The additional elements are recited at a high level of generality and under their broadest reasonable interpretation comprises a generic computer arrangement. The presence of a generic computer arrangement is nothing more than mere instructions to implement the abstract idea on a computer (MPEP 2106.05(f)). Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Hence, the claims as a whole are not integrated into a practical application.
The claims as a whole do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are generic computer components claimed to perform their basic functions. The processor is a general-purpose processor that performs general-purpose functions. The recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer (using the processor as a tool to implement the abstract idea). Taking the additional elements individually and in combination, each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The claim does not amount to significantly more than the abstract idea itself. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply a generic recitation of a computer processor performing its generic computer functions. Accordingly, claims are ineligible.
For these reasons the rejection under 35 USC § 101 directed to non-statutory subject matter set forth in this office action is maintained.
Conclusion
Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hani Kazimi whose telephone number is (571) 272-6745. The examiner can normally be reached Monday-Friday from 8:30 AM to 5:00 PM.
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, Abhishek Vyas can be reached on (571) 270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Respectfully Submitted
/HANI M KAZIMI/
Primary Examiner, Art Unit 3691