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 .
Response to Amendment
This Action is in response to the Amendment filed January 2, 2025. Claims 18 and 22 are amended. Claim 33 is added. Claims 1-2, 5, 18-19 and 21-33 are pending and have been examined in this application. This is the eight action on the merits.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/089,174, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Application No. 63/089,174 at least does not disclose perform a lookup in the centralized database using the account identifier to retrieve a plurality of credit records that are (i) associated with the linked pre-paid account and (ii) associated with a corresponding plurality of merchants;
filter the retrieved credit records using the merchant identifier to isolate the credit record identifying the credited amount of funds available for withdrawal from the linked pre-paid debit account at the merchant; generate a second transaction authorization request message by modifying the transaction amount from the first transaction message to an adjusted transaction amount, replacing the account identifier with a supplemental account identifier of a supplemental payment account associated with the user, and appending a hybrid flag to the first transaction message; detecting the hybrid flag in an incoming transaction authorization response message to identify the incoming transaction authorization response message as associated with the purchase transaction; generating a hybrid transaction authorization response message by modifying the incoming transaction authorization response message to (i) remove the hybrid flag and (ii) replace the supplemental account identifier with the account identifier and the adjusted transaction amount with the transaction amount.
Therefore, as the present application is a nonprovisional of the prior-filed application, Application No. 63/089,174; and the claims are not supported by the disclosure of the application, the current claims, 1-2, 5, 18-19 and 21-33 of present application do not receive priority to the filing date of Application No. 63/089,174.
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 1-2, 5, 18-19 and 21-33 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.
Claims 1-2, 5, 7 18-19 and 21-29 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. Specifically, claims 1-2, 5, 7 and 18-19 are directed toward at least one judicial exception without significantly more. In accordance with MPEP 2106, the rationale for this determination is explained below:
Representative claim 1 is directed towards a system, 18 is directed towards a method which are statutory categories of invention.
Although, claim 1 is directed toward a statutory category of invention, the claim however, is directed towards a judicial exception namely abstract ideas. The limitations that set forth the abstract idea recite: storing a plurality of credit records, each credit record structured to include limited data elements including (i) a respective value of credited funds in a linked pre-paid account associated with a user and available to apply to transactions initiated with a respective merchant, and (ii) a respective merchant identifier of the merchant; processing network messages in accordance with ISO 8583 network messaging standards; receive a transaction authorization request based on the transaction authorization request message including an account identifier of the linked pre-paid account and the account identifier being associated with the IRM, the transaction authorization request message generated in response to a purchase transaction in a transaction amount being initiated by the user with a first merchant, wherein the transaction authorization request message further includes a merchant identifier of the first merchant, and the transaction amount; perform a lookup using the account identifier to retrieve a plurality of credit records that are (i) associated with the linked pre-paid account and (ii) associated with a corresponding plurality of merchants; filter the retrieved credit records using the merchant identifier to isolate the credit record that is associated with the first merchant and includes the stored value of the credited funds in the linked pre-paid account and available to apply to the purchase transaction with the first merchant; compare the transaction amount to the stored value; when the transaction amount is greater than the credited amount of funds: determine whether the user has identified a supplemental payment account; only when the user has identified the supplemental payment account, retrieve a supplemental account identifier of the supplemental payment account and initiate hybrid transaction processing, the hybrid transaction processing comprising: generating a hybrid transaction authorization request message by replacing the transaction amount from the transaction authorization request message with an adjusted transaction amount including the stored value subtracted from the transaction amount, replacing the account identifier with the supplemental account identifier, and appending a hybrid flag to the transaction authorization request message, the hybrid transaction authorization request message replacing the transaction authorization request message in authorization messaging with an issuer of the supplemental payment account; transmitting the hybrid transaction authorization request message to an issuer of the supplemental payment account, for authorization processing by the issuer of the supplemental payment account using the adjusted transaction amount from the hybrid transaction authorization request message and without being informed of the transaction amount; receiving, via the payment processing network, a transaction authorization response message from the issuer of the supplemental payment account, based on the transaction authorization response message including the hybrid flag; generating a hybrid transaction authorization response message by modifying the transaction authorization response message to replace the supplemental account identifier with the account identifier and the adjusted transaction amount with the transaction amount; and transmitting the hybrid transaction authorization response message to the first merchant such that the purchase transaction with the first merchant is (i) not declined for having funds in the stored value less than the transaction amount and (ii) completed without the first merchant being informed of use of the supplemental payment account to complete the purchase transaction; when the transaction amount is less than or equal to the stored value, initiate a pre-paid debit transaction with the merchant by generating and transmitting a substitute authorization response message back to the merchant without any authorization messaging between the IRM computing device and any issuer; and overwrite the credit record to reflect a deduction, from the stored value, related to the transaction amount. These limitations, entail fundamental economic practices; commercial interactions including, marketing or sales activities or behavior; business relations; as well as managing personal behavior including following rules or instructions. As such, the limitations are directed towards the abstract grouping of Certain Methods of Organizing Human Activity in prong one of step 2A of the Alice/Mayo test (see MPEP 2106.04(a) (2) II).
This judicial exception is not integrated into a practical application because, when analyzed as a whole under prong two of step 2A of the Alice/Mayo test (See MPEP 2106.04(d)), the additional elements provided by the claim, as a whole, amount to merely using a computer as a tool to perform an abstract idea. In particular the claim recites the additional elements of: a centralized record database; a payment processing network comprising one or more computing devices programmed for; an integrated record management (IRM) computing device communicatively coupled to the centralized record database and to the payment processing network, the IRM computing device comprising a memory storing computer-executable instructions for centralized management of linked accounts and a processor communicatively coupled to the memory to execute the instructions stored thereon, the IRM computing device configured to; via the payment processing network; the computing device; in the centralized database; in the centralized database, which are recited at a high level of generality and are the mere use of a computer as a tool to perform the abstract ideas, and instructions to implement the abstract idea on a computer. See MPEP 2106.05(f). Simply applying the abstract idea by computer components is not a practical application of the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claim does not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claim does not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claim does not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e)). Therefore, the claim does not, for example, purport to improve the functioning of a computer. Nor does it effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claim is directed to abstract ideas.
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 claim recites the additional limitations of a processor, memory, payment processing network; computing device; centralized database, which do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment1. Viewing these limitations as a combination, the additional elements amount to no more than applying the exception using generic computer devices, in the execution of basic functions of a computer. Merely applying an exception using a generic computer cannot provide an inventive concept. See TLI Communications LLC v. AV Automotive LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (mere recitation of concrete or tangible components is not an inventive concept). Therefore, the limitations of the claim as a whole, when viewed individually and as an ordered combination, do not amount to significantly more than the abstract idea.
A review of dependent claims 2, 5 and 21-33, likewise, do not recite any limitations that would remedy the deficiencies outlined above. The claims only further add to the abstract idea, with no elements which integrate the abstract idea into a practical application or constitute significantly more. For instance; claims 2, 5, 23, 25-26 are directed to data manipulation through mathematical correlation; claims 21 describes data type; claims 22-24, 27-30, 32-33 amount to extra-solution activities of data gathering and outputting; claims 31 and 33 entail commercial activities. Thus, while they may slightly narrow the abstract idea by further describing it, they do not make it less abstract and are rejected accordingly. Further still, claims 18-19 suffer from substantially the same deficiencies as outlined with respect to claims 1-2 and are also rejected accordingly.
Response to Arguments
Applicant's filed arguments have been fully considered but have not been found persuasive.
A. The inventor declaration under 37 CFR 1.132 filed 9/2/2025 is insufficient to overcome the rejection of claims 1-2, 5, 18-19 and 21-32 based upon a judicial exception under 35 U.S.C. § 101 as set forth in the last Office action. As considered in full, the declaration is not persuasive because it generally states that the independent claims solve technical problems, which, although not technically supported in the original disclosure, one of ordinary skill in the art would have understood that there are two technical problems addressed by the application. Namely, to accommodate transactions initiated in transaction amounts greater than a value of credited funds; and enabling a single pre-paid payment device to apply funds to transactions within specific fund limits at multiple specific merchants. The declaration is centered on the opinion of the inventor and does not cite or provide any evidence thereof. Mainly, the declaration relies on the corollary that one of ordinary skill in the art would also infer that two technical problems were being addressed by the claims, but does not provide a factual basis for that inference. Notwithstanding, these are entrepreneurial problems not technological ones. Thus, the declaration is not found persuasive due to the lack of objective evidence, and the views of eligibility not being commensurate in scope with the claims, which the response below shows as it addresses all of the arguments proffered by the inventor’s declaration.
B. Applicant traverses the 35 U.S.C. § 101 rejection that the independent claims entail fundamental economic practices, commercial interactions, managing personal behavior. The Examiner respectfully disagrees. The claims set forth fundamental economic practices (facilitating customer payment to merchant); commercial interactions (processing merchant transactions); managing personal behavior including following rules or instructions (customer having to provide supplemental payment account). As such, the limitations are directed towards the abstract grouping of Certain Methods of Organizing Human Activity in prong one of step 2A of the Alice/Mayo test.
Applicant’s argument regarding the 35 U.S.C. § 101 rejection based on the declaration of the inventor that Claim 1 is subject-matter eligible under the second prong of Step 2A because the claim as a whole integrates the judicial exception into a practical application of the exception. The Examiner respectfully disagrees. First, Desjardins, clearly does not support a finding of eligibility in the present application. In Desjardins, the Panel decision was that there was a technical improvement to a machine learning model found in the additional elements of the claim, which was technically supported by the specification. On the contrary, the additional elements of Applicant’s claims provide no such improvement to its record database, processing network or computing device. Also, there is no technical support/technical description in Applicant’s specification that would indicate to one of ordinary skill in the art how it improves the functioning of the computing device itself or improves another technology/technical field, when the claimed invention is implemented. The instant claims, similar to ones pointed out in Desjardins, as “claims "[g]enerally linking the use of a judicial exception to a particular technological environment or field of use" are not patent eligible.”
With reference to the inventor’s declaration, there is no technical problem that is solved by the claim recitations, or any solution to a technical problem described in the specification. Enabling transactions to be completed if a pre-paid card amount is less than a transaction amount, rather than being declined for insufficient funds, in the case of a conventional payment network, does not address a technical problem but rather a business matter. Enabling transactions to be completed if a pre-paid card amount is less than a transaction amount, rather than being declined for insufficient funds, in contrast to a conventional payment network, does not address a technical problem but rather a business matter. Also, the features upon which applicant relies (i.e., enable a single payment device to function as a pre-paid account with a plurality of different merchants, where a specific value of credited funds is available for use with each of those merchants) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Moreover, the claims do not provide any additional elements that integrate the abstract idea into a practical application. Likewise, Applicant’s specification does not provide any technical support/technical description that the claimed invention, when implemented, improves the functioning of the computing device itself, or that it improves another technology/technical field. The specification only alludes to a “new and improved electronic data structures to track incentives, pre-payments, and withdrawals from credited funds” [0080]. However, there is no technical description as to how such a data structure is improved. Indeed, the instant invention aims to improve an entrepreneurial problem instead of a technological one.
With reference to the inventor’s declaration, Applicant states that changes to the functionality of the infrastructure of a payment network present a technical problem. However, the original disclosure does not indicate, describe or suggest any payment network infrastructure problem that is resolved or improved by the proffered claims. The system performs a payment transaction by essentially convincing the acquirer and issuer of the payment network that an amount in a buyer payment account is sufficient to pay for a purchase. This is done by changing data in a transaction authorization request message so that the payment request will not be declined by the issuer, and then changing back the information to the original data being sent back in a transaction authorization response message. This does not effect any change or improvement in the messaging network infrastructure as these messages are processed according to the typical ISO 8583 standards. It is well understood by one of ordinary skill in the art that standards are not unconventional, they do not effect a change in architecture. Thus, the flowing of information addresses a business problem not a technical one.
The inventor’s declaration contended that a technical solution to a technical problem is provided because the system enables the technical advantage of hybrid processing while avoiding the need to modify or replace any merchant point-of-sale, merchant gateway, and/or issuer hardware and software, and but for the technical solution provided by the claimed invention, transaction amounts exceeding a value of credited funds would be declined. The Examiner respectfully disagrees. The original disclosure nor the declaration, based on the opinion of the inventor, does not describe why or how not replacing system hardware and software is a technical improvement. Providing a hybrid payment transaction, although, this might be unconventional, it is still an abstract idea. See MPEP 2106.05(a)(II) which states “it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology”.
The inventor’s declaration contended that claim limitations recite a further technical improvement in that the system enables the use of a single pre-paid linked payment account to store and apply specific amounts of credited funds to different merchants. The Examiner respectfully disagrees. Enabling a customer to use a single payment account at specific merchants is an abstract idea in and of itself regardless if the account information is linked to a database, provides efficiency in transaction monitoring and debiting of the pre-paid credits or increases the ease of use by a user. Additionally, merely avoiding having to modify or replace conventional processing infrastructure does not amount to a technological improvement. The original disclosure nor the declaration, based on the opinion of the inventor, does not describe why or how not replacing system hardware and software is a technical improvement.
Applicant submits that just like BASCOM, the steps of claim 1 when combined, perform functions that are not generic and are therefore patent-eligible, and are tied to a particular, unconventional arrangement of networked computing devices. The Examiner respectfully disagrees. The claims do not recite any additional elements that amount to significantly more than the abstract idea. That claim 1 includes a centralized database storing credit records identifying specific values of credits funds available in a pre-paid linked account with specific merchants, associated with the computing system and enabling the computing system to intercept and operate on certain incoming transaction messages, to perform hybrid transaction processing, in which entirely new, replacement transaction messages are generated to conduct a hybrid transaction that is invisible to both merchants and issuers, is not an additional element that is significantly more but rather an abstract idea in of itself being merely applied by the claimed computing components. See TLI Communications LLC v. AV Automotive LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (mere recitation of concrete or tangible components is not an inventive concept). Thus, unlike BASCOM, Applicant’s claim does not provide additional elements that are tied to a particular, unconventional arrangement of networked computing devices, which individually or combined improve a technology.
Still, even if Applicant’s proffered claims were unconventional and contravene prior art, they are still ineligible, as even newly discovered judicial exceptions are still exceptions, despite their novelty. For example, the mathematical formula in Flook, 437 U.S. at 591-92, (1978), the laws of nature in Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 73-74, 101 USPQ2d 1961, 1968 (2012), and the isolated DNA in Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116, 106 USPQ2d 1972, 1978 (2013) were all novel, but were considered by the Supreme Court to be judicial exceptions.
Applicant ponders how a database and a computing system as recited could be characterized as a mental process, mathematical concept, or method of organizing human activity. It appears Applicant has misconstrued the 101 analysis. These elements are determined to be additional element which are reviewed as a whole under prong two of step 2A of the Alice/Mayo test, and hence, are not characterized as abstract ideas. They do not provide any improvement that integrates the abstract idea into a practical application as they are used only to apply the abstract idea by computer components and/or link the abstract idea to a particular technological environment or field of use.
Based on the foregoing, the claims as a whole, in view of Alice, do not connote an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer itself; and the claims do not move beyond a general link of the use of the abstract idea to a particular technological environment. Therefore, the 35 U.S.C. § 101 rejection is maintained.
Applicant’s arguments relating to claims 1, 2, 5, 18-19 and 21-29 are also rejected accordingly to independent claim 1.
Conclusion
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 Errol CARVALHO whose telephone number is (571)272-9987. The
Examiner can normally be reached on M-F 9:30-7:00 Alt Fri
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached on 571- 270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/E CARVALHO/
Primary Examiner, Art Unit 3622
1 See, Alice Corp. Pty Ltd. v. CLS Bank lnt'l, 134 S. Ct. 2347, 2360 (2014) (noting that none of the hardware recited “offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment,’ that is, implementation via computers” (citing Bilski v. Kappos, 561 U.S. 593, 610-11 (2010))).
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