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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/8/2025 has been entered.
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 1-17 and 19-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Analysis
Claim 1: Ineligible.
The claim recites a series of acts. The claim is directed to a process, which is a statutory category of invention (Step 1: YES).
The claim is analyzed to determine whether it is directed to a judicial exception. The claim recites the steps a computer-implemented method for management of a transaction within a network, the network comprising a first entity, a transaction server and a second entity, wherein the transaction is taking place at the first entity and the management of the transaction comprises an authorization phase in which the second entity determines if the transaction is to be approved, and a clearing phase in which, if the transaction has been approved, transaction data is exchanged between the first entity and the second entity, the method being implemented at the transaction server and the second entity, the method comprising: receiving, with the transaction server, an authorization request message from the first entity, wherein the authorization request message is associated with the transaction; sending, with the transaction server, the authorization request message to the second entity; receiving, with the transaction server, an authorization request response message from the second entity; analyzing, with the transaction server, the received authorization request response message to determine if the received authorization request response message contains an approval indicator, the approval indicator indicating that the second entity approves the transaction; wherein in the event that the received authorization request response message contains the approval indicator and the transaction is associated with a transaction indicator, the transaction indicator indicating that the clearing phase can be performed, the transaction server automatically generates and submits a clearing request message on behalf of the first entity for enabling the clearing phase to be performed without waiting for a clearing request from the first entity; and further wherein in response to the second entity approving the authorization request message, the second entity is configured to post the transaction to an account associated with the authorization request message in real-time and immediately after the authorization request message is approved to update a statement of the account in real-time prior to receiving the clearing request message from the transaction server. In order words, the claim describe a process for collecting information, comparing and analyzing it, and using rules to identify options displaying certain results of the collection and analysis. These limitations, as drafted, are processes that, under its broadest reasonable interpretation, can be performed as a mental process (that is, “observation, evaluation, judgement, opinion”), or in the alternative, the organizing human activity in the form of commercial interactions such as following rules. These limitations fall under the “mental processes” and/or “certain methods of organizing human activity” groups (Step 2A1-Yes).
Next, the claim is analyzed to determine if it is integrated into a practical application. The claim recites additional limitation of using computer system and devices/server (processors) in a network environment. The processors in the steps are recited at a high level of generality, i.e., as generic processors performing generic computer functions. These generic processor limitations are no more than mere instructions to apply the exception using generic computer components. The network limitation is simply a field of use that is an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to the abstract idea (Step 2A2-No).
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed with respect to Step 2A2 above, the additional elements in the claim amount to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea (Step 2B: NO). The claim is not patent eligible.
Claims 11-13 recite corresponding system, program product, and computer-readable medium equivalents of claim 1. These claims are similarly rejected under the same rationale as claim 1, supra.
Claims 2-3, 14 recite wherein analyzing the received authorization request response message further comprises determining if the received authorization request response message contains the transaction indicator and wherein in the event that the received authorization request response message contains the approval indicator and the transaction indicator, the transaction server automatically generates and submits the clearing request message on behalf of the first entity to enable the clearing phase to be performed without waiting for a clearing request from the first entity; analyzing the received authorization request message to determine if the received authorization request message contains the transaction indicator and wherein in the event that the received authorization request message contains the transaction indicator and the received authorization request response message contains the approval indicator, the transaction server automatically generates and submits the clearing request message on behalf of the first entity to enable the clearing phase to be performed without waiting for a clearing request from the first entity.
These limitations further narrow the abstract idea, but are nonetheless part of the abstract idea identified in claim 1. The additional elements are similarly as discussed in the claim 1 analysis, above. Finally, when viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. The claims are similarly rejected under the same rationale as claim 1, supra.
Claims 4-5, 15 recite adding transaction-related data to the authorization request message to form an enhanced authorization request message; and sending the enhanced authorization request message to the second entity; wherein the transaction-related data comprises one or more of: interchange-related information, information about a clearing cycle in which the transaction will be cleared, and information about a settlement service which will be used to settle the transaction.
These limitations further narrow the abstract idea, but are nonetheless part of the abstract idea identified in claim 1. The additional elements are similarly as discussed in the claim 1 analysis, above. Finally, when viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. The claims are similarly rejected under the same rationale as claim 1, supra.
Claims 6-9, 16 and 19 recite generating the clearing request message within a pre-specified time frame; generating and adding additional information for use in generation of the clearing request message; wherein the additional information comprises the identification of the interchange rate to be applied when such information is not provided by the first entity; wherein in the event the received authorization request response message contains the approval indicator and no transaction indicator, the transaction server waits until a clearing request message is received from the first entity before enabling the clearing phase to be performed.
These limitations further narrow the abstract idea, but are nonetheless part of the abstract idea identified in claim 1. The additional elements are similarly as discussed in the claim 1 analysis, above. Finally, when viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. The claims are similarly rejected under the same rationale as claim 1, supra.
Claim 10 recites monitoring an incoming clearing request message from the first entity; and blocking the incoming clearing request message from the first entity in the event that the transaction server has already generated a clearing request message.
This limitation further narrows the abstract idea, but is nonetheless part of the abstract idea identified in claim 1. The additional elements are similarly as discussed in the claim 1 analysis, above. Finally, when viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. The claim is similarly rejected under the same rationale as claim 1, supra.
Claims 17 and 21 recite wherein to analyze the received authorization request response message further comprises to determine if the received authorization request response message contains the transaction indicator and wherein in the event that the received authorization request response message contains the approval indicator and the transaction indicator, the transaction server is to automatically generate and submit a clearing request message on behalf of the first entity to enable the clearing phase to be performed without waiting for a clearing request from the first entity.
These limitations further narrow the abstract idea, but are nonetheless part of the abstract idea identified in claim 1. The additional elements are similarly as discussed in the claim 1 analysis, above. Finally, when viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. The claims are similarly rejected under the same rationale as claim 1, supra.
Claim Rejections - 35 USC § 112
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 1-17 and 19-21 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.
Claims 1, 11-13 recite, further wherein in response to the second entity approving the authorization request message, the second entity is configured to post the transaction to an account associated with the authorization request message in real-time and immediately after the authorization request message is approved to update a statement of the account in real-time prior to receiving the clearing request message from the transaction server.
The original disclosure does not support the limitation prior to receiving the clearing request message from the transaction server.
Examiner notes the while the disclosure supports the immediate posting of final transactions on the cardholder’s account, it is silent on the timing of the “receiving the clearing request message from the transaction server.”
Response to Arguments
Applicant's arguments filed 7/8/2025 with respect to the 35 U.S.C. 101 rejection have been fully considered but they are not persuasive.
Applicant argues that claimed invention provides technical improvement as described in the specification, and thus integrates the abstract idea into a practical application. in a transaction clearing process, enabling timing of the clearing process to be accelerated and controlled more accurately.
Examiner respectfully disagrees. The instant claims are directed to providing an abstract business solution to an abstract business problem of clearing and settling transactions between an acquirer and an issuer via an intermediary server. But, a solution to an abstract business problem is still an abstract business solution.
Rather than providing a technical solution that improves the way a computer/network works, Applicant’s invention merely improves the abstract idea directed to transaction clearing and settlement between and an acquirer and an issuer. The computer is then applied to this abstract idea. This is not enough to transform an abstract idea into patent-eligible subject matter. See, e.g., Alice, 134 S. Ct. at 2360 (explaining that claims that “amount to ‘nothing significantly more’ than an instruction to apply the abstract idea . . . using some unspecified, generic computer” “is not ‘enough ’ to transform an abstract idea into a patent-eligible invention” (quoting Mayo, 566 U.S. at 77, 79)); Intellectual Ventures ILLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (“[T]he claim language here provides only a result-oriented solution, with insufficient detail for how a computer accomplishes it”).
Furthermore, Applicant argues that, taken as a whole, the claims recite elements that amount to an inventive concept (“significantly more” than an abstract idea).
Again, a claim directed to a unique and advantageous financial arrangement is nonetheless directed to a financial arrangement and constitutes an abstract idea. “[U]nder the Mayo/Alice framework, a claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility.” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see Diamond v. Diehr, 450 U.S. 175, 188-89 (1981).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLABODE AKINTOLA whose telephone number is (571)272-3629. The examiner can normally be reached Mon-Fri 8:30a-6:00p.
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/OLABODE AKINTOLA/Primary Examiner, Art Unit 3691