DETAILED ACTION
1. This Final Office Action is in response to Applicant’s Amendments filed 1/30/2026. Claims 1-19 are currently pending. The effective filing date of the present application is 3/23/2021.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 101
3. 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.
4. Claims 1-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed a judicial exception (i.e., an abstract idea) without significantly more.
Step 1 – Statutory Categories
As indicated in the preamble of the claim, the examiner finds the claim is directed to a process, machine, manufacture, or composition of matter. Claims 1-10 and 15-19 are directed towards a machine (systems or devices) and claims 11-14 are processes (methods).
Step 2A – Prong 1: was there a Judicial Exception Recited
Claim 1 (similarly claims 10 and 11) recites the following abstract concepts that are found to include “abstract idea”:
1. A server apparatus in a distributed environment including a first terminal, a second terminal, a first account management server, a second account management server, and the server apparatus, the server apparatus comprising:
a memory that stores an invoice information management database1 including information on a plurality of forms, the information on the plurality of forms including a billing amount and an identifier for each of the plurality of forms (observation); and
circuitry configured to:
receive, from the first terminal via a communication network, a request for the server apparatus to generate a particular form in relation to a first user, the first terminal including circuitry configured to generate the request and transmit the request via the communication network to the server apparatus (observation),
generate the particular form such that the particular form includes a billing amount of the particular form and an identifier of the particular form,
store the particular form among the plurality of forms in the invoice information management database (evaluation),
generate transfer data from a second user to the first user based on the particular form, the transfer data including the identifier of the particular form (evaluation), and
transmit the transfer data including the identifier of the particular form via the communication network to the second terminal operated by the second user, the second terminal including circuitry configured to receive the transfer data including the identifier of the particular form from the server apparatus via the communication network and send a transfer request including the transfer data including the identifier of the particular form via the communication network to the first account management server operated by a first financial institution and including circuitry configured to receive the transfer request including the transfer data including the identifier of the particular form via the communication network and transmit a transfer amount and the identifier of the particular form via the communication network to the second account management server operated by a second financial institution (judgment),
receive, from the second account management server via the communication network, transfer record information including the identifier of the particular form, an offset amount, and the transfer amount, the second account management server including circuitry configured to receive the transfer amount and the identifier of the particular form via the communication network and transmit the transfer record information including the identifier of the particular form and the transfer amount via the communication network to the server apparatus (observation),
store the received transfer record information in the invoice information management database in association with a status (opinion), and
automatically synchronize the invoice information management database with the received transfer record information by:
extracting the identifier of the particular form from the received transfer record information (observation),
performing a search of the invoice information management database using the extracted identifier as a search key to identify and retrieve the particular form (evaluation),
comparing the billing amount of the retrieved particular form with the transfer amount included in the received transfer record information (evaluate),
when (i) the billing amount of the retrieved particular form and the transfer amount included in the received transfer record information do not match and (ii) a sum of the offset amount and the transfer amount included in the received transfer record information matches the billing amount of the retrieved particular form (evaluation), change the status of the transfer record information to indicate that the offset amount is to be checked (opinion), and
when the sum of the offset amount and the transfer amount included in the received transfer record information does not match the billing amount of the retrieved particular form (evaluation), change the status of the transfer record information to indicate that the transfer is not completed (opinion).
Claim 1 is directed to a series of steps for data transfer, which is a commercial/legal interaction and/or managing personal behavior or relationships or interactions between people (include social activities, teaching, and following rules or instructions); thus, grouped as a certain method of organizing human interactions and/or a mental process (see above notations), mental processes (observations, evaluations, judgments, and opinions) and/or mathematics (summation, mathematical comparisons). Thus, the claim recites an abstract idea. See MPEP §2106.4(a).
Step 2A – Prong 2: Can the Judicial Exception Recited be integrated into a practical application
Limitations that are indicative of integration into a practical application:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
Limitations that are not indicative of integration into a practical application:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)
Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
This judicial exception is not integrated into a practical application because the memory, circuitry, servers, communication network, and terminals are merely generically recited computer elements that do not add a meaningful limitation to the abstract idea because they amount to simply the abstract idea on a generic computer. Accordingly, alone and in combination, 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 2B – Significantly More Analysis
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and in combination, a memory that stores; terminals, servers, and circuitry configured to generate, receive, and transmit data are no more than mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Claims 1, 10, and 11 are not patent eligible.
Dependent claims 2-9 and 12-19 fail to provide additional elements that are sufficient to amount to significantly more than the judicial exception of the claim from which they depend. The dependent claims do not introduce any new additional elements and only further the abstract idea. Therefore, claims 2-9 and 12-19 are rejected for the same reasons as stated in the rejection of claim 1.
Allowable Subject Matter
5. The following is a statement of reasons for the indication of allowable subject matter:
The reason for allowable subject matter of claims 1-19 and in the instant application is because the prior art of record fails to teach the overall combination as claimed. Therefore, it would not have been obvious to one of ordinary skill in the art to modify the prior art to meet the combination above without unequivocal hindsight and one of ordinary skill would have no reason to do so. In Remarks (5/1/2025), Applicant argues that the nearest art, Sabat 2020/0364760 and Agrawal2022/0067365, does not teach the amended limitations, the examiner agrees. Neither Sabat nor Agrawal teaches a transmit the transfer data including the identifier of the particular form to a second terminal operated by the second user, the second terminal including circuitry configured to receive the transfer data including the identifier of the particular form from the server apparatus and send a transfer request including the transfer data including the identifier of the particular form to a first account management server including circuitry configured to receive the transfer request including the transfer data including the identifier of the particular form and transmit a transfer amount and the identifier of the particular form to a second account management server.
Upon further searching the examiner could not identify any prior art to teach these limitations. The prior art on record, alone or in combination, neither anticipates, reasonably teaches, not renders obvious the Applicant' s claimed invention.
Response to Arguments
6. Applicant's §101 arguments filed 1/30/2026 have been fully considered but they are not persuasive.
Applicant argues that the claim is directed to a practical application because the claims are directed to a technical improvement. Examiner disagrees. Applicant’s argument that the claims amount to be “technical improvement” under the MPEP analysis is not persuasive because an improvement (processing of forms) of conventional computer technologies is not a technical solution to a technical problem. Instead, the argued improvement represent improvements to the abstract idea of the certain methods of organizing human activity as discussed above. In contrast, the MPEP cite to “a modification of Internet hyperlink protocol to dynamically produce a dual-source hybrid web page” (i.e., the invention of DDR Holdings) to demonstrate an “improvement in the function of a computer or an improvement to other technology or technical field.” That is, the improvements achieved by the claimed invention appear to be directed towards improvements to business practices (i.e., to save time and effort, e.g., see [pg. 1, l. 15-20] of the originally filed Specification) rather than technical/technological improvements to those disclosed in, for example, DDR Holdings and Examples 37-42 of the MPEP. As stated above the newly added limitations amount to no more than a notification according the specification; thus, were analyzed as part of the abstract idea. See MPEP §2106.04(a)(2)(II)(C) discussing Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 115 USPQ2d 1636 (Fed. Cir. 2015) and MPEP §2106.04(a)(2) (III) discussing Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016). Both sections of the MPEP discuss the notification of a person as part of the abstract idea. Examiner notes that inefficiencies and error-prone manual intervention are human errors and thus, a business problem not a technical problem.
Applicant argues that the claims are like Enfish and McRO. Examiner disagrees. Diehr was directed at a rubber molding process, whereas here, Applicant’s claims are directed to processing forms in payment process. In Enfish, the claims were direct to the specific shape and functioning of a data table, the current claims merely use a database as a tool. MPEP §2106.05(a) states, “ For example, in McRO, the court relied on the specification’s explanation of how the particular rules recited in the claim enabled the automation of specific animation tasks that previously could only be performed subjectively by humans, when determining that the claims were directed to improvements in computer animation instead of an abstract idea. McRO, 837 F.3d at 1313-14, 120 USPQ2d at 1100-01.” Again, the current claims are directed setting flags based on data comparison, which is similar to Electric Power Group. See MPEP §2106.05(h) Limiting the abstract idea of collecting information, analyzing it, and displaying certain results of the collection and analysis to data related to the electric power grid, because limiting application of the abstract idea to power-grid monitoring is simply an attempt to limit the use of the abstract idea to a particular technological environment, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016).
Examiner maintains position.
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 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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Notice of References Cited, PTO form 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL JARED WALKER whose telephone number is (303)297-4407. The examiner can normally be reached Monday-Thursday 9:00 AM -5:00 PM CT.
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/MICHAEL JARED WALKER/Primary Examiner, Art Unit 3627 Michael.walker@uspto.gov
1 Examiner notes that the use of the term database here is that of a matrix not a physical memory.