DETAILED ACTION
Status of the Claims
The present application is being examined under the pre-AIA first to invent provisions. This action is in response to an amendment dated February 17, 2026. Claims 8 and 16 are amended. Claims 1-7, 9-11 are cancelled. Claims 8 and 16 are amended. Claims 8 and 12-17 are pending. All pending claims are examined.
Response to Arguments
101 Analysis
101 Analysis
101 In line with the "2019 Revised Patent Subject Matter Eligibility Guidance," which explains how we must analyze patent-eligibility questions under the judicial exception to 35 U.S.C. § 101. 84 Fed. Reg. 50-57 ("Revised Guidance"), the first step of Alice (i.e., Office Step 2A) consists of two prongs. In Prong One, we must determine whether the claim recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural phenomenon. 84 Fed. Reg. at 54 (Section III.A. I.). If it does not, the claim is patent eligible. Id.
An abstract idea must fall within one of the enumerated groupings of abstract ideas in the Revised Guidance or be a "tentative abstract idea, "with the latter situation predicted to be rare. Id. at 51-52 (Section I, enumerating three groupings of abstract ideas), 54 (Section III.A. I., describing Step 2A Prong One), 56-57 (Section III.D., explaining the identification of claims directed to a tentative abstract idea).
If a claim does recite a judicial exception, the next is Step 2A Prong Two, in which we must determine if the "claim as a whole integrates the recited judicial exception into a practical application of the exception." Id. at 54 (Section II.A.2.) If it does, the claim is patent eligible. Id.
If a claim recites a judicial exception but fails to integrate it into a practical application, we move to the second step of Alice (i.e., Office Step 2B). to evaluate the additional limitations of the claim, both individually and as an ordered combination, to determine whether they provide an inventive concept. Id. at 56 (Section III.B.). In particular, we look to whether the claim:
• Adds a specific limitation or combination of limitations that are not well-understood, routine, conventional in the field, which is indicative that an inventive concept may be present; or
• simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
“In accordance with judicial precedent and in an effort to improve consistency and predictability, the 2019 Revised Patent Subject Matter Eligibility Guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes the following groupings of subject matter, when recited as such in a claim limitation(s) (that is, when recited on their own or per se):
(b) Certain methods of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)1 – See Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019 / p.52.
Step 1:
Independent Claim 16, which is illustrative of the independent claim 8 and recites:
16. A computer-based method of electronically transferring funds comprising:
Revised Guidance
providing a computer and memory, the memory having a computer database, a conversion module and an implementation module;
[1] electronically receiving with the conversion module, an electronic ACH file package including at least two ACH transfer files and their associated routing numbers from an employer wherein each ACH transfer file includes information about a routing number including ACH transfer information and wire transfer information;
As claimed the computer components are generic components. Receiving data is merely insignificant pre-solution activity that does not add significantly more to the abstract idea to render the claimed invention patent-eligible. Guidance, 84 Fed. Reg. at 55 n.31.
[2] after receiving the ACH transfer file package, querying a computer database in memory of a computer using the ACH transfer files and their associated routing numbers
As claimed the computer component is a generic component used for the querying and querying using a generic component is an abstract idea, i.e., an “observation, evaluation, judgment, opinion” which could be performed as a mental process. See Guidance, 84 Fed. Reg. at 52.
[3] retrieving wire transfer information from the computer database for the routing numbers and creating a wire transfer file as a batch file containing a plurality of wire transfer instructions;
after using the database to retrieve the wire transfer information, automatically converting with a conversion module, configured to access the computer database, each ACH file to a wire transfer file with wire instructions using the information about an ACH transfer and information about wire transfers for the associated routing number as an input such that the wire transfer file is electronically created by the conversion module, wherein the conversion module retrieves wire transfer information using the associated routing number from the ACH transfer file;
Data gathering and converting data from one form to another can also be considered a mental process.
[4] after converting each ACH file, releasing with the conversion module the wire transfer file as a batch wire transfer that includes
Data generation is merely insignificant extra-solution activity that does not add significantly more to the abstract idea to render the claimed invention patent-eligible. Guidance, 84 Fed. Reg. at 55 n.31.
[5] automatically transferring funds, with an implementation module, using the wire transfer file in a financial institute.”
Data generation is merely insignificant extra-solution activity that does not add significantly more to the abstract idea to render the claimed invention patent-eligible. Guidance, 84 Fed. Reg. at 55 n.31. It can also be considered a mental process.
Step 2A-1
The claims are directed to a certain method of organizing human activity that is a fundamental economic principle or practice or and commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).
According to Applicant’s specification paras. 0014-0017
[0014] Referring to FIG. 1, in a system 100, a database 110 includes all data available for specific payment instructions, e.g., ACH and wire transfer, for each routing number. The database 110 can be a database provided and updated by Accuity, the Registrar of routing numbers for the American Bankers Association. The database 110 can be a database developed by the financial institution or by a vendor that includes routing number information and specific payment information for each routing number. An ACH transfer file 120 includes information about an ACH transfer, including a routing number. In certain circumstances, the ACH transfer file 120 can include two or more ACH transfer files with two or more associated routing numbers. A conversion module 130 receives the ACH transfer file 120 and uses the associated routing number or numbers to query the database 110. The conversion module 130 receives specific wire transfer information from the database 110 for the associated routing number or numbers and converts the ACH transfer file 110 to a wire transfer file 140. The wire transfer file 140 is then released as a batch wire transfer 150.
[0015] In an example that utilizes all modules shown in FIG. 1, an employer sends payroll information to a bank in a batch ACH transfer file that is a batch file that includes ACH transfer information for each ACH transfer for each employee, including associated routing number information for each ACH transfer. The batch ACH transfer is scheduled for payday and occurs automatically by the bank the day before payday. On payday, an error is discovered, by either the employer, employee, or bank, and the bank sends an ACH transfer file 120 for the incorrect ACH transfer or transfers. An incorrect ACH transfer can be a missed ACH transfer or an ACH transfer scheduled too late, for example. The ACH transfer file 120 includes the routing number information for the incorrect ACH transfer or transfers. The ACH transfer file 120 is sent to the conversion module 130 for conversion to a wire transfer file 140. The conversion module 130 receives the ACH transfer file 120 and, using the associated routing number, queries the database 110. From the database 110, the conversion module 130 receives specific wire transfer information for the routing number or numbers and creates the wire transfer file 140. The wire transfer file 140, which may be a batch file including several or many wire transfer instructions, is sent to a wire transfer department and then released.
[0016] The system 100 can be located in a financial institution such as a bank or may be located at an employer who will forward the wire transfer file 140 to its financial institution.
[0017] Referring to FIG. 2, a method 200 for the above-described system 100 is depicted. In step 210, the financial institution such as a bank receives an ACH file with information about an ACH transfer. The ACH file includes an associated routing number. Then, instep 220, the ACH file is converted to a wire transfer file, such as by using the conversion module 130 described above. The conversion module 130 uses the database 110 to retrieve specific wire transfer information for the associated routing number, and converts the ACH file to the wire transfer file. In step 230, the wire transfer file, which may be a batch wire transfer file with several or many wire instructions, is released.
Taking the broadest reasonable interpretation, the invention (as recited in claims 8 and 12-17) is directed towards an abstract idea of funds transfer because it entails promoting commerce by the process of transferring funds. (see App. Spec. para 0002; Abstract).
Step 2A- 2
These steps describe the steps a person would take to make a funds transfer. This includes receiving the ACH instructions and converting that to a wire transfer format. The next step is to determine if the claims recite additional, elements that integrate the judicial exception into a practical application. The additional elements beyond the abstract idea is the electronic or and computer implementation (see App. Spec. paras. 0019-0021, 0032, 0042-0043) of the method steps which are described at a high level of generality (App. Spec. para. 0014, Fig. 1-2) where each step does no more than require a generic computer to perform generic computer functions. Absent is any support in the specification that the claims as recited require specialized computer hardware or other inventive computer components.
The recitation of after using the database to retrieve the wire transfer information, automatically converting with a conversion module, configured to access the computer database, each ACH file to a wire transfer file with wire instructions using the information about an ACH transfer and information about wire transfers for the associated routing number as an input such that the wire transfer file is electronically created by the conversion module, wherein the conversion module retrieves wire transfer information using the associated routing number from the ACH transfer file;
without more or any evidence does not provide support for those steps to amount to an improvement.
These amendments suggest retrieving information using an identifier from a transfer file. Unlike DDR where the improvement was to a computer centric problem, a specific improvement to the way computers operate as a result of their interactions with the internet, in this case of retrieval of information and conversion to a transfer file with instructions, absent is any support for a similar improvement. The claims as recited seem to suggest no more than automating the process of converting funds transfer instructions data into a different format by a batching of files of instructions.
The recitation of
“ [3] retrieving wire transfer information from the computer database for the routing numbers and creating a wire transfer file as a batch file containing a plurality of wire transfer instructions;
after using the database to retrieve the wire transfer information, automatically converting with a conversion module, configured to access the computer database, each ACH file to a wire transfer file with wire instructions using the information about an ACH transfer and information about wire transfers for the associated routing number as an input such that the wire transfer file is electronically created by the conversion module, wherein the conversion module retrieves wire transfer information using the associated routing number from the ACH transfer file;”
is insignificant extra solution activity because it is incidental to primary process of claim 1. (See MPEP 2106.05(g) (“An example of post-solution activity is an element that is not integrated into the claim as a whole, e.g., a printer that is used to output a report of fraudulent transactions, which is recited in a claim to a computer programmed to analyze and manipulate information about credit card transactions in order to detect whether the transactions were fraudulent.”).
According to Applicant’s specification paras. 0041-0044
[0041] Further, in many embodiments, the one or more fund settling entities, such as fund settling entity 170, can be configured to perform the fund settlement involving transferring the payment amount debited from sender account 131 maintained by first financial institution 130 to fund withholding account 121 maintained by fund withholding financial institution 120. In some embodiments, the disperse authorization received through network 140 from system 110 is forwarded in real-time by fund settling entity 170 to fund withholding financial institution 120 after fund settling entity 170 receives the disperse authorization from system 110, and fund settling entity 170 is further configured to facilitate the fund settlement of the payment amount between first financial institution 130 and fund withholding financial institution 120. Examples of fund settling entity 170 can include an Automated Clearing House (ACH), a wire transfer network, a credit/debit card network, etc.
[0042] In a number of embodiments, each of the one or more systems, the one or more first entities, the at least two financial institution, the one or more user computing devices, and the one or more fund settling entities can be or include a computer system, such as computer system 500, as shown in FIG. 5 and described below, and can be a single computer, a single server, or a cluster or collection of computers or servers, or a cloud of computers or servers. In many embodiments, various components (e.g., 110, 120, 130, 150, 162, 164, 170, and/or 180) of system 100 can be in data communication with various other components (e.g., 110, 120, 130, 150, 162, 164, 170, and/or 180) of system 100, such as through one or more networks (e.g., network 140). The computer networks can be the Internet and/or other suitable data communication networks.
[0043] In various embodiments, system 110 can be a computer system comprising one or more processors and one or more non-transitory computer-readable media storing computing instructions configured to run on the one or more processors and perform one or more acts for preventing fraud in real-time payment transactions between one or more senders, such as sender 161, and one or more recipients, such as recipient 163, similar to the various acts in previous examples. In some embodiments, sender 161 can be a buyer of a product offered for sale by a seller (e.g., recipient 163) or a customer for a service to be provided by recipient 163.
[0044] In some embodiments, certain elements, modules, subsystems, or systems of system 110, can perform various procedures, processes, and/or activities. In other embodiments, the procedures, processes, and/or activities can be performed by other suitable elements, modules, subsystems, or systems of system 100 and/or system 110. In many embodiments, the elements, modules, subsystems, or systems of system 100 and/or system 110 each can be implemented by a various number of suitable software components, hardware components, or combinations thereof. Examples of the elements, modules, subsystems, or systems of system 100 and/or system 110 can include a processing system configured to execute computing instructions, a network system configured to transmit and receive data to or from network 140, an external service system configured to interface with one or more external services, computers, or servers, such as fund withholding financial institution 120, first financial institution 130, sender device 162, recipient device 164, and/or second financial institution 150, and so forth. In some embodiments, the elements, modules, subsystems, or systems of system 100 and/or system 110 each can comprise one or more subsystems. For example, a single system of system 100 and/or system 110 can comprise a processing subsystem and a network subsystem.
Absent is any evidence of a network of processors of information beyond a general-purpose computer or an invention that reflects an improved interface. (cf. with Trading Technology where the display was found to be a graphical user interface that required a specific, structured GUI paired with a prescribed functionality directly related to the GUI’s structure that is addressed to and resolves a specific identified problem)
Step 2B
The next step is to identify any additional limitations beyond the judicial exception. Besides the insignificant extra-solution activity of step(s), the only additonal elements are computer, computer database and electronically which are disclosed in the specification at a high degree of generality (as generic computer components - see Spec. para. 0014) and absent is any genuine issue of material fact that this component requires any specialized hardware or inventive computer component.
The components in the manner recited are well understood, routine and conventional. The recited steps, understood in light of the specification do not appear to require anything other than off-the-shelf, conventional computers and a network.
Likewise, the providing, receiving, querying, retrieving, converting and transferring steps involve techniques well known in the art. (“an invocation of already available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is “well-understood, routine [and] conventional.’’ SAP Am., 898 F.3d at 1170 (alteration in original) citing Mayo, 566 US. At 73). The computing components are recited at a high-level of generality such that they amount to no more than instructions to apply the exception using generic computer components.
Further dependent claims 12-15 and 17 provide additional descriptions of the components of the claimed invention in a manner that merely refines and further limits the abstract ideas of independent claims 8 and 16 and do not add any feature that is an “inventive concept” which cures the deficiencies of the independent claims.
None of the additional elements taken individually or when taken as an ordered combination amount to significantly more than the abstract idea. Accordingly, this dependent claim is patent-ineligible.
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 8-9 and 12-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
The claim recites abstract idea of organizing human activities. This judicial exception is not integrated into a practical application and the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Analysis
The claim is directed to one or more of the following statutory categories: a process, a machine, a manufacture, and a composition of matter.
Claim 16 recites
16. A computer-based method of electronically transferring funds comprising:
providing a computer and memory, the memory having a computer database, a conversion module and an implementation module;
[1] electronically receiving with the conversion module, an electronic ACH file package including at least two ACH transfer files and their associated routing numbers from an employer wherein each ACH transfer file includes information about a routing number including ACH transfer information and wire transfer information;
[2] after receiving the ACH transfer file package, querying a computer database in memory of a computer using the ACH transfer files and their associated routing numbers
[3] retrieving wire transfer information from the computer database for the routing numbers and creating a wire transfer file as a batch file containing a plurality of wire transfer instructions;
after using the database to retrieve the wire transfer information, automatically converting with a conversion module, configured to access the computer database, each ACH file to a wire transfer file with wire instructions using the information about an ACH transfer and information about wire transfers for the associated routing number as an input such that the wire transfer file is electronically created by the conversion module, wherein the conversion module retrieves wire transfer information using the associated routing number from the ACH transfer file; [4] after converting each ACH file, releasing with the conversion module the wire transfer file as a batch wire transfer that includes with instructions according to the input as a same day batch wire transfer, and
[5] automatically transferring funds, with the implementation module, using the wire transfer file in a financial institute.”
The invention as claimed describes a method of transferring funds using one payment mechanism to another (Spec. para. 0002; See also Abstract). The invention as a whole recites certain methods of organizing human activity as a fundamental economic practice. This type of activity, i.e., funds transfer, as recited in each of the limitations 2-5, for example, recites a practice that existed long before the advent of computers and the Internet and could be performed by a human with pen and paper.
These limitations recite steps that would ordinarily take place when transferring funds from one payment mechanism to another using the idea of funds transfer through the conversion of ACH transfer instructions to wire transfer instructions. Clearly the data conversion from one format to another, batching the instructions and transmission along with additonal instructions is part of the abstract idea.
The additional elements recited in the claim beyond the judicial exception, in this case includes “electronically receiving.an ACH file and computer database in memory of a computer”
Electronically receiving…an ACH file recites insignificant data gathering, See MPEP. 2106.05(g). The computer functionality is performed by generic components which does not suggest any technical improvements (see App. Spec. 14, 17). Therefore, the abstract idea is not integrated into a practical application and therefore the claim is directed to the judicial exception.
The claim does 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 amount to no more than mere instructions to apply the abstract idea using generic computer components. In conclusion, merely “applying” the exception using generic computer components cannot provide an inventive concept. Therefore, the claim is not patent eligible under 35 USC 101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Muthu, USP. No. 10395223, System And Method For Transferring Funds.
Orcutt, USP. No. 7660771, Express Check Conversion
Gilder, USP Pub. No. 20080086420, Enhanced Check 21 Financial Payment Systems And Methods
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 CHIKA OJIAKU whose telephone number is (571)270-3608. The examiner can normally be reached Monday - Friday: 8.30 AM -5:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Gart can be reached at 571 272-3955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHIKAODINAKA OJIAKU/Primary Examiner, Art Unit 3696
1 Interval Licensing, 896 F.3d at 1344–45 (concluding that ‘‘[s]tanding alone, the act of providing someone an additional set of information without disrupting the ongoing provision of an initial set of information is an abstract idea,’’ observing that the district court ‘‘pointed to the nontechnical human activity of passing a note to a person who is in the middle of a meeting or conversation as further illustrating the basic, longstanding practice that is the focus of the [patent ineligible] claimed invention.’’); Voter Verified, Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 1385 (Fed. Cir. 2018) (finding the concept of ‘‘voting, verifying the vote, and submitting the vote for tabulation,’’ a ‘‘fundamental activity’’ that humans have performed for hundreds of years, to be an abstract idea);
In re Smith, 815F.3d 816, 818 (Fed. Cir. 2016) (concluding that ‘‘[a]pplicants’ claims, directed to rules for conducting a wagering game’’ are abstract).
14 If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir . 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016)(holding that computer-implemented method for ‘‘anonymous loan shopping’’ was an abstract idea because it could be ‘‘performed by humans without a computer’’); Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (‘‘Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.’’); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding that the incidental use of ‘‘computer’’ or ‘‘computer readable medium’’ does not make a claim otherwise directed to process that ‘‘can be performed in the human mind, or by a human using a pen and paper’’ patent eligible); id. at 1376 (distinguishing Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010), as directed to inventions that ‘‘could not, as a practical matter, be performed entirely in a human’s mind’’). Likewise, performance of a claim limitation using generic computer components does not necessarily preclude the claim limitation from being in the mathematical concepts grouping, Benson, 409 U.S.at 67, or the certain methods of organizing human activity grouping, Alice, 573 U.S. at 219–20 - – See Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019
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