DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant filed a response dated March 16, 2026 in which claims 1 and 11 have been amended. Therefore, claims 1-20 are currently pending in the application.
Priority
Application 17/191,358 was filed on March 3, 2021.
Examiner Request
The Applicant is requested to indicate where in the specification there is support for amendments to claims should Applicant amend. The purpose of this is to reduce potential 35 U.S.C. § 112(a) or § 112 1st paragraph issues that can arise when claims are amended without support in the specification. The Examiner thanks the Applicant in advance.
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 a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. (MPEP 2106). The claims are directed to a system and method which is one of the statutory categories of invention (Step 1: YES). The recitation of the claimed invention is analyzed as follows, in which the abstract elements are boldfaced.
Claim 1 recites the limitations of:
A system comprising: one or more processors; and one or more non-transitory computer-readable media storing computing instructions that, when executed on the one or more processors, perform: receiving, at a payment-messaging system from a payee financial institution, a request for payor profile information, wherein the request comprises a public identifier of a payor;
determining, using a directory at the payment-messaging system, the payor profile information based on the request, wherein the payor profile information includes a routing transit number for a payor financial institution that maintains a payor account of the payor when the payor financial institution is enabled to send real-time payments through a real-time settlement network, wherein the payor profile information does not include an account number of the payor account, wherein the payor profile information comprises a tokenized identifier of the payor account of the payor, and wherein the tokenized identifier is created by the payor financial institution to secure the account number of the payor account; and
sending, from the payment-messaging system to the payee financial institution, the payor profile information, to cause: the payee financial institution to determine whether the payor profile information includes the routing transit number for the payor financial institution to enable the payee financial institution to determine eligibility of the payor financial institution to send real-time payments through the real-time settlement network by the payee financial institution determining whether or not the payor profile information includes the routing transit number for the payor financial institution,
wherein the payor profile information is sent from the payment-message system to the payee financial institution without the routing transit number for the payor financial institution when the payor financial institution is not eligible to send real-time payments through the real-time settlement network,
wherein a presence or an absence of the routing transit number within a message containing the payor profile information indicates eligibility or ineligibility, respectively, of the payor financial institution to send real-time payments through the real- time settlement network,
wherein the presence or absence of the routing transit number within the message containing the payor profile information provides a self-contained binary indicator that enables real-time determination of eligibility of the payor financial institution to send real-time payments through the real-time settlement network to reduce processing overhead and network traffic, and
wherein the self-contained binary indicator is used by the payee financial institution, without using additional data fields, to determine eligibility of the payor financial institution to send real-time payments through the real-time settlement network; and
the payee financial institution, when the payor profile information includes the routing transit number for the payor financial institution, to send a request for payment through the real-time settlement network to the payor financial institution to allow the payor to authorize a real-time credit transfer from the payor account to a payee account of a payee maintained at the payee financial institution, wherein the real-time credit transfer is settled through the real-time settlement network,
wherein: the request for payment through the real-time settlement network is sent through a PAIN 013 message format; and
the tokenized identifier replaces a Depositor Account Number field in the PAIN 013 message such that the account number of the payor account is not transmitted between financial institutions.
The claim as a whole recites a method that, under its broadest reasonable interpretation, covers collecting, analyzing, and transmitting data to facilitate the completion of a financial transaction. This is a fundamental economic practice of a financial transaction; a commercial interaction, such as for business relations; and managing personal behavior or relationships or interactions between people, which are certain methods of organizing human activity.
Thus, the claims recite an abstract idea. (Step 2A, prong 1: YES).
Moreover, the judicial exception is not integrated into a practical application. Other than reciting a “one or more processors; and one or more non-transitory computer-readable media storing computing instructions that, when executed on the one or more processors, perform:”, “a payment-messaging system”, “a real-time settlement network”, “real-time settlement network to reduce processing overhead and network traffic”, and “a PAIN 013 message format”, to perform the steps of “performing”, “determining”, “requesting”, and “authorizing”, nothing in the claim elements preclude the steps from practically being a certain method for organizing human activity. The claim as a whole does not integrate the exception into a practical application. The claim merely describes how to generally “apply” the concept of collecting, analyzing, and transmitting data to facilitate the completion of a financial transaction in a computer environment. The additional computer elements recited in the claim limitations are recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception utilizing generic computer components.
The claimed “real-time payments through the real-time settlement network to reduce processing overhead and network traffic”, is merely applying the generic computer technology to the underlying abstract idea. Further, the clause “to reduce processing overhead and network traffic” is interpreted as a statement of intended use and is therefore given limited patentable weight.
For example, the Specification at [0022] and [0025] discloses “Although computer system 100 is illustrated as a desktop computer in FIG. 1, there can be examples where computer system 100 may take a different form factor while still having functional elements similar to those described for computer system 100. In some embodiments, computer system 100 may comprise a single computer, a single server, or a cluster or collection of computers or servers, or a cloud of computers or servers. Typically, a cluster or collection of servers can be used when the demand on computer system 100 exceeds the reasonable capability of a single server or computer. In certain embodiments, computer system 100 may comprise a portable computer, such as a laptop computer. In certain other embodiments, computer system 100 may comprise a mobile device, such as a smartphone. In certain additional embodiments, computer system 100 may comprise an embedded system.” (See Spec. [0022] and [0025]).
Thus, the specification supports that general purpose computers or computer components are utilized to implement the steps of the abstract idea.
Merely implementing the abstract idea on a generic computer is not a practical application of the abstract idea. The claim as a whole, in viewing the additional elements both individually and in combination, does not integrate the judicial exception into a practical application. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea. (Step 2A prong two: No)
The claim does not include additional elements, when 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 elements of using “one or more processors; and one or more non-transitory computer-readable media storing computing instructions that, when executed on the one or more processors, perform:”, “a payment-messaging system”, “a real-time settlement network”, “real-time settlement network to reduce processing overhead and network traffic”, and “a PAIN 013 message format”, to perform the steps of “performing”, “determining”, “requesting”, and “authorizing”, amounts to no more than mere instructions to apply the exception using generic computer component. The claim merely describes how to generally “apply” the concept of collecting, analyzing, and transmitting data to facilitate the completion of a financial transaction in a computer environment. Thus, even when viewed as a whole, nothing in the claim adds significantly more (i.e. an inventive concept) to the abstract idea. Such additional elements are determined to not contain an inventive concept according to MPEP 2106.05(f). It should be noted that (1) the “recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not provide significantly more because this type of recitation is equivalent to the words “apply it”, and (2) “Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice, commercial interaction, or managing personal behavior or relationships or interactions between people, mental process, or mathematical calculation) does not integrate a judicial exception into a practical application or provide significantly more”.
Claim 11 is substantially similar to claim 1, thus, it is rejected on similar grounds.
Claim 11 recites the additional elements of “A method being implemented via execution of computing instructions configured to run at one or more processors, the method comprising:”.
For similar reasons as explained above with regard to claim 1, under Step 2A, prong two, these additional elements are merely applying generic computer components to implement the abstract idea. Under Step 2B, when viewing the additional elements individually and in combination, the additional elements do not amount to an inventive concept amounting to significantly more than the judicial exception itself as the claimed computer-related technologies are mere tools for implementing the abstract idea as explained with regard to claim 1.
Dependent claims 2-10 and 12-20 merely limit the abstract idea and do not recite any further additional elements beyond the cited abstract idea and the elements addressed above, thus, they do not amount to significantly more. The dependent claims are abstract for the reasons presented above because there are no additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Thus, the dependent claims are directed to an abstract idea. (Step 2B: No)
Therefore, claims 1-20 are not patent-eligible.
Response to Arguments
Applicant’s arguments filed on March 16, 2026 have been fully considered but are not persuasive for the following reasons:
With respect to Applicant’s arguments as to the § 101 rejections for now pending claims 1-20, Examiner notes the following:
Applicant argues that the claims would integrate the abstract idea into a practical application, the examiner respectfully disagrees. In particular, the applicant argues that “The technical problem addressed by claims 1 and 11 as amended, namely, preventing exposure of sensitive financial account numbers during electronic transmission between financial institutions over computer networks, is a problem that arises specifically in the context of networked computer systems. This problem does not exist in manual or pen-and-paper transactions. The solution recited by claim 1 as amended, namely, replacing the DAN field in a PAIN 013 message with a tokenized identifier, is a specific technical solution that modifies the structure of electronic messages transmitted over computer networks.”
Examiner notes that the Specification merely discloses the use of generic computer components to implement the abstract idea. For example, the Specification discloses “Although computer system 100 is illustrated as a desktop computer in FIG. 1, there can be examples where computer system 100 may take a different form factor while still having functional elements similar to those described for computer system 100. In some embodiments, computer system 100 may comprise a single computer, a single server, or a cluster or collection of computers or servers, or a cloud of computers or servers. Typically, a cluster or collection of servers can be used when the demand on computer system 100 exceeds the reasonable capability of a single server or computer. In certain embodiments, computer system 100 may comprise a portable computer, such as a laptop computer. In certain other embodiments, computer system 100 may comprise a mobile device, such as a smartphone. In certain additional embodiments, computer system 100 may comprise an embedded system.” (See Spec. [0022] and [0025]).
Although, the claims recite using a tokenized identifier in place of an account number within a PAIN 013 message format, the claims do not integrate the abstract idea into a practical application. The claimed steps merely manipulate financial data and substitute one identifier for another while utilizing generic computer components. Additionally, any alleged security benefit is merely incidental to the abstract idea, as it merely involves data manipulation and analysis and the process could be completed manually or mentally or by pen and paper.
Thus, the specification supports that general purpose computers or computer components are utilized to implement the steps of the abstract idea.
Furthermore, the additional elements of the computer system - a “one or more processors; and one or more non-transitory computer-readable media storing computing instructions that, when executed on the one or more processors, perform:”, “a payment-messaging system”, “a real-time settlement network”, “real-time settlement network to reduce processing overhead and network traffic”, and “a PAIN 013 message format”, to perform the steps of “performing”, “determining”, “requesting”, and “authorizing”, in all steps is recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The claims at issue covers the facilitation of a financial transaction. The claims invoke the “one or more processors; and one or more non-transitory computer-readable media storing computing instructions that, when executed on the one or more processors, perform:”, “a payment-messaging system”, “a real-time settlement network”, “real-time settlement network to reduce processing overhead and network traffic”, and “a PAIN 013 message format”, to perform the steps of “performing”, “determining”, “requesting”, and “authorizing”, merely as tools to execute the abstract idea. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mental process) does not integrate a judicial exception into a practical application. (MPEP 2106.05 (f))
Finally, the Applicant argues that the claims are directed to significantly more than the abstract idea.
Examiner disagrees, however, and notes that, as explained above in the instant rejection under 35 U.S.C. § 101, that the various specific, discrete steps carried out by the computer system are a routine, well-understood, and conventional function of a generic computer and, thus, are not sufficient to add significantly more. Per the specification, the recited computer elements are described only at a high level of generality, (see Spec. at paras. [0022] and [0025]). In view of the specification, the application of the computer elements is merely being applied to the abstract idea.
The other limitations which are simply supporting the abstract idea correspond to insignificant extra-solution activity which do not transform the abstract idea into a patent eligible subject matter. Also, the functionality here is already present in the recited hardware, which is merely routine and conventional. Collecting, analyzing, and transmitting data is routine and conventional. There is no technological problem or solution identified. This is merely a business solution to transfer data between devices. (MPEP 2106.05 (f))
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and is available for review on Form PTO-892 Notice of References Cited.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 MERRITT J HASBROUCK whose telephone number is (571)272-3109. The examiner can normally be reached M-F 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Tran can be reached on 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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/MERRITT J HASBROUCK/Examiner, Art Unit 3695
/CHRISTINE M Tran/Supervisory Patent Examiner, Art Unit 3695
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