DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions. This office action is in response to applicant's communication of November 5, 2025. The rejections are stated below. Claims 31-50 are pending and have been examined.
Response to Amendment/Arguments
Applicant’s arguments concerning 35 U.S.C. 112 have been considered but are not persuasive. Applicant argues that the term "transfer process module" is supported by the disclosure of a "process module" and a "transfer process" in paragraphs [0036] and [0047]. Paragraph [0036] states "Payment services computer system 107 includes a payment services platform 145, such as the MasterCard® inControl™ platform." It does not mention a "transfer process module." It describes a payment services platform. Paragraph [0047] describes the function of "transfer process 135": "Transfer process 135 is configured to allow first service request 111 to be converted to second service request 109... includes converting first service request 111 into second service request 109 using a translation module." The specification consistently describes a "transfer process" (e.g., 135) as a function or step ("transfer process is configured to..."), not as a "module." A "process" and a "module" are distinct concepts in computer-related disclosures. A "module" implies a structural or component-based division of a system (e.g., a software module or hardware component), whereas a "process" describes an action, series of steps, or a functional operation. The claims recite a specific structural component: a "transfer process module in communication with the first interchange network and the second interchange network." The specification fails to describe a module that performs the transfer process. It describes the process itself and the systems (e.g., home network processor 112, interface processor 140, payment services platform 145) between which the process occurs. There is no description of a distinct "module" possessing the claimed structural features. Therefore, the specification does not reasonably convey possession of a "transfer process module" as a claimed system component.
Applicant’s arguments concerning 35 U.S.C. 101 have been considered but are not persuasive. Applicant argues the claims address a communication protocol problem between disparate networks and thus are not directed to an abstract idea. The core of claim 31 describes the steps of receiving a transaction request in a first format, converting the data to a second format, processing it via a service on a second network, and converting and returning the response. This constitutes the fundamental economic practice of processing a transaction through one system to access services provided by another, which is a method of organizing human activity. The requirement to convert data between two proprietary formats is a necessary step for such cross system interaction but does not change the underlying abstract nature of the process. Data format conversion to enable interoperability is a basic concept in data processing. Using a computer to perform this process does not alter its abstract character.
Applicant’s citation to the August 4, 2025, memorandum is noted.
The claims here recite the abstract process itself, namely transaction processing and data conversion between systems to facilitate a commercial service. The claim language describes this process.
Applicant argues the claims integrate the judicial exception into a practical application by providing an improvement to computer network technology.
The additional elements recited are computer components and steps that perform the abstract process: transmitting layout data, mapping data elements, parsing data, and generating responses. Under the Alice framework, merely reciting computer components to perform these functions such as receiving, converting, processing, and transmitting data is not sufficient to transform the abstract idea into a patent eligible application. The claim describes using computers as tools to execute the method of accessing one network’s services from another. The final step of creating a response with data contents that cause further communication describes an outcome of the transaction process, not a technical improvement to computing functionality.
Applicant’s reliance on Example 42 from the USPTO Subject Matter Eligibility Examples is noted. USPTO examples are for guidance only. The legal analysis is governed by Alice. The claims here are directed to an abstract idea and do not, through their additional elements, integrate that idea into a practical application that is significantly more than the idea itself.
Applicant argues the claims recite significantly more than the abstract idea, suggesting the combination of steps is not conventional. The search for an inventive concept requires an element or combination that ensures the claim amounts to significantly more than the abstract idea. The ordered combination of steps in the claims describes a linear data processing workflow to achieve cross network service access. The components are recited at a high level and perform their expected functions. The absence of cited prior art does not establish that the recited combination is an inventive concept. The claim language does not describe a transformation of the underlying abstract idea.
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 31-50 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.
The Examiner has identified independent method Claim 31 as the claim that represents the claimed invention for analysis and is similar to independent Claims 38 and 45.
Claim 31 is directed to a method which is one of the four statutory categories of invention (Step 1: YES).
The claim 31 recites “a … method for
converting a first … format of … requests generated at a
… to a second … format
compliant with a communication protocol of a …, the method
implemented by a … including:
a … in communication with the … and
the …, wherein the … utilizes the first … format including a first set of proprietary communications standards for
exchange of transaction data and settlement of funds between institutions that
are registered with the …, and wherein the …
utilizes the second … format including a second set of proprietary
communications standards for the exchange of transaction data and the settlement of funds between institutions that are registered with the …;
an … associated with the … and in communication with the …; and
a … in communication with the …,
wherein the method comprises:
transmitting, by the … to a … in communication with the …, (i) a … that enables … mapping of the … requests
received by the … over the …
into the … format, and (ii) a … that enables
… mapping of … responses generated by the … hosted on the …;
in response to receiving a first … request from the requestor
…, … mapping, by the … using the …, data elements included in the …request from the first …format to the second … format;
receiving, from the … at the …
the mapped first …request;
transmitting, by the …, the mapped first …
request to the …;
… parsing the … included in the mapped
request by the … to identify at least one registered service
to be applied to the mapped first … request;
generating, by the …, a first …
response formatted in the second …format, the first … response including
response data from applying the identified at least one registered service to the service mapped first … request;
transmitting, by the … to the …, the first … response;
… mapping, by the … using the …, response data included in the first …response from the first … format to the second … format, thereby transforming, by the transfer process module, the response data from the second … format to the first … format;
creating, by the …, a second …
response from the transformed response data, wherein the second …
response includes data contents that cause the … to communicate, based on the data contents, the second … response to at least one of an … associated with the associated with the first … request or a … associated with the first … request; and
transmitting, by the … to
the …, the second … response including the
response data, wherein the previously transmitted … enables the requestor … to extract the response data from the second … response”. These limitations describe an abstract idea of processing transactions and corresponds to Certain Methods of Organizing Human Activity (commercial interactions or sales activities or behaviors, business relations).
The claim also recites as additional elements such as “computer-implemented, computer, electronic, first interchange network, second interchange network, computer system, transfer process module in communication with the first interchange network and the second interchange network, interface processor associated with the second interchange network and in communication with the transfer process module, services computer platform in communication with the interface processor, requestor computing device in communication with the first interchange network, first element layout, second data element, electronically parsing …, electronically mapping, by the transfer process module using the second data element layout, acquirer computing device, using computing device”, which do no more than implement the abstract idea and/or provide a particular technological environment. Therefore, claim 31 recites an abstract idea without a practical application (Step 2A - Prong 2: NO).
Therefore, as the additional element does no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, it does not improve computer functionality or improve another technology or technical field. Thus, claim 31 is not patent eligible (Step 2B: NO).
Claims 38 and 45 also recite the abstract idea of idea of processing transactions and corresponds to Certain Methods of Organizing Human Activity (commercial interactions or sales activities or behaviors, business relations) step one of step 2A (MPEP 2106.04). Claim 38 includes the additional elements of “system, computer, electronic, first interchange network, second interchange network, computer system, transfer process module in communication with the first interchange network and the second interchange network, interface processor associated with the second interchange network and in communication with the transfer process module, services computer platform in communication with the interface processor, requestor computing device in communication with the first interchange network, first element layout, second data element, electronically parsing …, electronically mapping, by the transfer process module using the second data element layout, acquirer computing device, using computing device”. Claim 45 includes the additional elements of “at least one non-transitory computer-readable storage medium, computer, electronic, first interchange network, second interchange network, computer system, transfer process module in communication with the first interchange network and the second interchange network, interface processor associated with the second interchange network and in communication with the transfer process module, services computer platform in communication with the interface processor, requestor computing device in communication with the first interchange network, first element layout, second data element, electronically parsing …, electronically mapping, by the transfer process module using the second data element layout, acquirer computing device, using computing device”. The additional elements do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a}.
Claim 32 recites “wherein the first data element layout comprises elements of an 0100 authorization request message” which further describe the abstract idea.
Claim 33 recites “wherein applying the identified at least one registered service to the service first ,,, request comprises applying at least one of a … card mapping service, a transaction rules and limits service, and an alert notifications service to the … included in the mapped first … request” which further describe the abstract idea. The claim includes “electronic, formatted data elements, and virtual’ as additional elements. However, the additional elements do no mare thar link the judicial exception to a particular technological environment. The additional elements do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement io the functioning of a computer, or to any other technology or technical field (MPEP 2106.05}.
Claim 34 recites “wherein transmitting the second … response comprises transmitting a …instruction indicating that an issuer bank associated with the … has declined a payment transaction based upon a result from applying the identified at least one registered service to the mapped first … request, and wherein the second … response is formatted to conform to file naming conventions, file header conventions, file structure and layout conventions, file type conventions, and file size conventions associated with the first interchange network” which further define the abstract idea. The claim includes “electronic, computer, requestor computer device, electronic’ as additional elements. However, the additional elements do no mare thar link the judicial exception to a particular technological environment. The additional elements do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement io the functioning of a computer, or to any other technology or technical field (MPEP 2106.05}.
Claim 35 recites “wherein applying the identified at least one registered service to the mapped first … request comprises: retrieving, by the services … using the f…, an account identifier associated with the mapped first … request; confirming, by the …, that the retrieved account identifier is included in a plurality of registered account identifiers stored within a … coupled to the …; and retrieving, by the … from the …, the at least one registered service associated with the retrieved account identifier” which further define the abstract idea. The claim includes “services computer platform, formatted data elements, electronic, memory device coupled to the services computer platform” as additional elements. However, the additional elements do no mare thar link the judicial exception to a particular technological environment. The additional elements do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement io the functioning of a computer, or to any other technology or technical field (MPEP 2106.05}.
Claim 36 recites “receiving, by the … prior to receipt of the service first …request, a registration profile associated with the corresponding payment card, the registration profile including the account identifier” which further define the abstract idea. The claim includes “services computer platform, electronic” as an additional elements. However, the additional elements do no mare thar link the judicial exception to a particular technological environment. The additional elements do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement io the functioning of a computer, or to any other technology or technical field (MPEP 2106.05}.
Claim 37 recites “further comprising: receiving, by the …, a second electronic request submitted by a …, wherein the second … request includes … on the second … format compliant with the …; generating, by the services computer platform on the … second response data responsive to the second … request; and transmitting, by the … to the … via the …, the second response data” which further define the abstract idea. The claim includes “services computer platform, electronic, second requestor computer device, second interchange network” as additional elements. However, the additional elements do no mare thar link the judicial exception to a particular technological environment. The additional elements do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement io the functioning of a computer, or to any other technology or technical field (MPEP 2106.05}.
Claim 39 recites “wherein the first data element layout comprises elements of an 0100 authorization request message” which further describe the abstract idea.
Claim 40 recites “wherein the … to apply the identified at least one registered service to the mapped first … request comprises applying at least one of a … card mapping service, a transaction rules and limits service, and an alert notifications service to the … included in the mapped first … request” which further describe the abstract idea. The claim includes “services computer platform is further configured, electronic, virtual, formatted data elements” as additional elements. However, the additional elements do no mare thar link the judicial exception to a particular technological environment. The additional elements do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement io the functioning of a computer, or to any other technology or technical field (MPEP 2106.05}.
Claim 41 recites “wherein the … to transmit the second electronic response comprises transmitting a … instruction indicating that an issuer bank associated with the … has declined a payment transaction based upon a result from applying the identified at least one registered service to the payment transaction mapped first … request, and wherein the second … response is formatted to conform to file naming conventions, file header conventions, file structure and layout conventions, file type conventions, and file size conventions associated with the …” which further define the abstract idea. The claim includes “interface processor is further configured, electronic, computer, requestor computer device, first interchange network” as additional elements. However, the additional elements do no mare thar link the judicial exception to a particular technological environment. The additional elements do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement io the functioning of a computer, or to any other technology or technical field (MPEP 2106.05}.
Claim 42 recites “wherein the … to apply the identified at least one registered service to the mapped first … request by: retrieving, using the formatted data elements, an account identifier associated with the mapped first … request; confirming that the retrieved account identifier is included in a plurality of registered account identifiers stored within a …; and retrieving, from the …, the at least one registered service associated with the retrieved account identifier” which further define the abstract idea. The claim includes “services platform is further configured, electronic, formatted data elements, memory device coupled to the services computer platform” as additional elements. However, the additional elements do no mare thar link the judicial exception to a particular technological environment. The additional elements do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement io the functioning of a computer, or to any other technology or technical field (MPEP 2106.05}.
Claim 43 recites “wherein the … to receive, prior to receipt of the first … request, a registration profile associated with the account identifier” which further define the abstract idea. The claim includes “services computer platform is further configured to and electronic” as an additional element. However, the additional elements do no mare thar link the judicial exception to a particular technological environment. The additional elements do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement io the functioning of a computer, or to any other technology or technical field (MPEP 2106.05}.
Claim 44 recites “wherein the … to: receive a second … request submitted by a …via …, wherein the second … request includes … formatted on the second … format compliant with the …; generate second response data responsive to the second service … request; and transmit, to the … via …, the second response data” which further define the abstract idea. The claim includes “services computer platform is further configured, electronic, second requestor computer device, second interchange network, second data elements formatted”, as additional elements. However, the additional elements do no mare thar link the judicial exception to a particular technological environment. The additional elements do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement io the functioning of a computer, or to any other technology or technical field (MPEP 2106.05}.
Claim 46 recites “wherein the first data element layout comprises elements of an 0100 authorization request message” which further describe the abstract idea
Claim 47 recites “wherein the … to apply the identified at least one registered service to the mapped first … request comprises applying at least one of a … card mapping service, a transaction rules and limits service, and an alert notifications service to the … included in the mapped first … request” which further describe the abstract idea. The claim includes “third set of computer-executable instructions is further configured to cause the services computer platform …, electronic, virtual, formatted data elements”, as additional elements. However, the additional elements do no mare thar link the judicial exception to a particular technological environment. The additional elements do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement io the functioning of a computer, or to any other technology or technical field (MPEP 2106.05}.
Claim 48 recites “wherein the … indicating that an issuer bank associated with the … has declined a payment transaction based upon a result from applying the identified at least one registered service to the mapped first … request, and wherein the second … response is formatted to conform to file naming conventions, file header conventions, file structure and layout conventions, file type conventions, and file size conventions associated with the …” which further describe the abstract idea. The claim includes “second set of computer-executable instructions is further configured to cause the interface processor …, requestor computing device, electronic, first interchange network”, as additional elements. However, the additional elements do no mare thar link the judicial exception to a particular technological environment. The additional elements do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement io the functioning of a computer, or to any other technology or technical field (MPEP 2106.05}.
Claim 49 recites “wherein the … to apply the identified at least one registered service to the mapped first … request by: retrieving, using the …, an account identifier associated with the mapped first … request; confirming that the retrieved account identifier is included in a plurality of registered account identifiers stored within a …; and retrieving, from the …, the at least one registered service associated with the retrieved account identifier” which further describe the abstract idea. The claim includes “third set of computer-executable instructions is further configured to cause the services computer platform, electronic, formatted data elements, memory device coupled to the services computer platform” as additional elements. However, the additional elements do no mare thar link the judicial exception to a particular technological environment. The additional elements do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement io the functioning of a computer, or to any other technology or technical field (MPEP 2106.05}.
Claim 50 recites “wherein the … to: receive a second … request submitted by a … via the …, wherein the second … request includes … formatted on the second …format compliant with the …; generate second response data responsive to the second … request; and transmit, to the … via the …, the second response data” which further describe the abstract idea. The claim includes “third set of computer-executable instructions is further configured to cause the services computer platform …, electronic, second requestor computing device, second interchange network, ” as additional elements. However, the additional elements do no mare thar link the judicial exception to a particular technological environment. The additional elements do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement io the functioning of a computer, or to any other technology or technical field (MPEP 2106.05}.
.
Claim Rejections – 35 USC §112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 31-50 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Means-Plus-Function
Claim 31 recites:
“…transmitting, by the transfer process module … (i) a first data element layout that enables electronic mapping of service requests … and (ii) a second data element layout that enables…”. Claims 38 and 45 are rejected on the same basis as reach recite similar language.
The claim limitations above do not use the word “means” but are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations use generic placeholders, that are coupled with functional language, “acts”, without reciting sufficient structures to perform the recited functions and the generic placeholders are not preceded by structural modifiers.
These claim limitations invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 38 recites:
“…the transfer process module configured to ……”.
The claim limitations above do not use the word “means” but are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations use generic placeholders, that are coupled with functional language, “acts”, without reciting sufficient structures to perform the recited functions and the generic placeholders are not preceded by structural modifiers.
These claim limitations invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding claim 31, is also rejected because, after reciting the step of “generating, by the services computer platform, a first electronic response formatted in the second computer format” (emphasis added), the claim later requires: “electronically mapping, by the transfer process module using the second data element layout, response data included in the first electronic response from the first computer format to the second computer format”.
Because the “first electronic response” is already formatted in the second computer format, there is no “response data included in the first electronic response” that exists in the “first computer format” from which to map. The mapping step as written requires converting data from the first computer format to the second computer format, but the data in the first electronic response is not in the first computer format. This creates an impossible or nonsensical operation. The specification does not resolve this inconsistency. The original disclosure describes the transfer process module converting “first services responses 113 into second services responses 114” and that “the translation module is now used to reverse the process” (see 0046). That describes a conversion from the off-network format to the home network format. Nowhere does the specification describe converting a response that is already in the second format from the first format to the second format again. Accordingly, a person of ordinary skill in the art would not know with reasonable certainty what transformation is required by the mapping step. Claims 38 and 45 are rejected on the same basis as it recites similar language.
Claim 31 first recites “transmitting, by the transfer process module … (ii) a second data element layout that enables electronic mapping of electronic responses generated by the services computer platform hosted on the second interchange network into the first computer format”. The claim recites “electronically mapping, by the transfer process module using the second data element layout, response data included in the first electronic response from the first computer format to the second computer format”.
This recites a mapping from the first computer format to the second computer format – the exact opposite direction. The same “second data element layout” is claimed to enable two mutually exclusive mapping directions without any explanation for how a single layout could accomplish both opposite transformations. The specification provides no support for such bidirectional capability in a single layout. To the contrary, the specification distinguishes between a “first data element layout that enables electronic mapping of the electronic requests … into the second computer format” and a “second data element layout that enables electronic mapping of electronic responses … into the first computer format”. Paragraphs 0035-0036 describe two different layouts for opposite directions. The claim, however, uses the second data element layout to perform a first-to-second mapping, which contradicts its defined purpose and the specification’s teaching. Because the claim requires the same “second data element layout” to enable both mapping “into the first computer format” and mapping “from the first computer format to the second computer format,” a person of ordinary skill in the art cannot reasonably determine the scope of the claimed mapping step. Claims 38 and 45 are rejected on the same basis as it recites similar language.
Claims 32-38, 39-44 and 46-50 are rejected as each depend on claims 31, 38, and 45.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 31-38, 39-44 and 46-50 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 31 is rejected because the oringally filed application does not contain support for :
“transmitting, by the transfer process module to a requestor computing device in communication with the first interchange network, (i) a first data element layout that enables electronic mapping of the electronic requests received by the requestor computing device over the first interchange network into the second computer format, and (ii) a second data element layout that enables electronic mapping of electronic responses generated by the services computer platform hosted on the second interchange network into the first computer format”.
Dependent claims are rejected by virtue of dependency.
Priority
The earliest support for the rejected claimed subject matter “transmitting, by the transfer process …” is in the 6/15/2021 claim amendment of the instant application. As the instant application is a CONTINUATION of application 13/742,172, filed 1/15/2013, this subject matter is considered new matter. Should applicant prefer to pursue this claimed subject matter, applicant may correct this application to be a continuation-in-part, rather than a continuation, to overcome this rejection. Should applicant desire to correct the benefit to the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq.
Conclusion
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 KEVIN T POE whose telephone number is (571)272-9789. The examiner can normally be reached on Monday-Friday 9:30am through 6pm EST.
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/K.T.P/Examiner, Art Unit 3692 /KEVIN T POE/
/RYAN D DONLON/Supervisory Patent Examiner, Art Unit 3692 June 4, 2026
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