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 .
Claim Rejections - 35 USC §101
1. 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.
2. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Subject Matter Eligibility Standard
3. The examiner contends that, under the judicial exceptions enumerated in the 2019 PEG, to determine the patent-eligibility of an application, a two- part analysis has to be conducted.
Part 1: it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
Part 2A: Prong 1: (1) Determine if the claims are directed to an abstract idea or one of the judicial exceptions. Examples of abstract ideas referenced in Alice Corp. include:
1. Certain method of organizing human activity such as Fundamental Economic Practices, Commercial and Legal Interactions, or Managing Personal Behavior or Relationships or Interactions Between People.
2. A mental process.
3. Mathematical relationships/formulas.
Part 2A: Prong 2: determine if the claim as a whole integrates the judicial exception into a practical application.
Part 2B: determine if the claim provides an inventive concept.
Analysis
4. Under Step 1 of the analysis, it is found that the claim indeed recites a series of steps and therefore, is a process - one of the statutory categories.
Under Step 2A (Prong 1), using claim 17 as the representative claim, it is determined that apart from generic hardware and extra-solution activity discussed in Step 2A, Prong 2 below, the claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language “implementing a cross-medium transaction service; and performing…responsive to the transaction request and based at least in part upon the monitoring, an exchange transaction that includes a value amount to a receiving client in accordance with a conversion from an originating value medium to a destination value medium” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. Further, the limitations “publishing to an event feed…non-errant messages from the originating exchange; publishing to an event feed…non-errant messages from the destination exchange; monitoring…the non-errant messages from the originating and destination exchanges” are steps that can be performed in the human mind. Any steps that can be performed in the human mind fall into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Under Step 2A (Prong 2), the examiner contends that the claim recites a combination of additional elements including “communicating...with computing systems of exchanges; based on a transaction request from a sending client, establishing network communications with a computing system of an originating exchange and a computing system of a destination exchange; transmitting and receiving communications asynchronously with the computing systems of the originating exchange and the destination exchange..., and in response to determining, from the monitoring, that the exchange transaction has settled, recording the exchange transaction on a decentralized ledger over the one or more networks as an immutable transaction record,
and, based on the immutable transaction record, transmitting to the sending client and the receiving client a confirmation that the exchange transaction has completed.” These additional elements, considered in the context of claim 1 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of inputting data, processing data, and outputting data using a generic computer system. In other words, these additional limitations are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, the processors, one or more networks, computing systems are caused to perform these steps. The processors, one or more networks, exchange management engine; first and second programmatic adapters; computing systems, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Further, the additional limitations can be reasonably characterized as reciting insignificant extra-solution and post-solution activities. For instance, the limitations “in response to determining, from the monitoring, that the exchange transaction has settled, recording the exchange transaction on a decentralized ledger over the one or more networks as an immutable transaction record,” when considered as a whole, are mere data gathering steps considered to be insignificant extra-solution activities. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Further, the limitation “based on the immutable transaction record, transmitting to the sending client and the receiving client a confirmation that the exchange transaction has completed; communicating…with computing systems of exchanges; based on a transaction request from a sending client, establishing network communications with a computing system of an originating exchange and a computing system of a destination exchange and transmitting asynchronously with the computing systems of the originating exchange and the destination exchange…” are directed to insignificant extra-solution activities of sending data from one system to another (see Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir. 2016). Lastly, the limitations “wherein each of the exchanges implements conversions between at least one value medium and at least one digital currency; wherein the first programmatic adapter and the second programmatic adapter each publish to the event feed while also preventing any errant communications from the computing systems of the originating exchange and the destination exchange from failing computing operations performed by the network-based computing system, so as to increase throughput capability with the computing systems of the originating and destination exchanges” are recited to further narrow the scope of the abstract idea. In all, these recited steps merely describe an intangible property of the data that does affect the examiner’s characterization of the additional limitations as insignificant extra-solution activities. Thus, it is determined that claim 17 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Under Step 2B, it is determined that, taken alone, the additional elements in the claim amount to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 17 are the generically recited “processors, one or more networks, exchange management engine; first and second programmatic adapters; computing systems.” The specification does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional hardware components or systems being used in their ordinary manner. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
The examiner further contends that the ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188— 89 (1981).” A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.” Specifically, an improvement to an abstract idea cannot be a basis for determining that the claim recites significantly more than an abstract idea. Furthermore, relying on a “processor” to “perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OJP Techs., Inc. v. Amazon.com, Inc., 7788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, the examiner concludes that the claim does not recite additional elements that amount to significantly more than the judicial exception within the meaning of the 2019 Guidance. Note: The analysis above applies to all statutory categories of invention. As such, the independent claims otherwise styled as a computer-readable medium encoded to perform specific tasks, machine or manufacture, for example, would be subject to the same analysis. Furthermore, the limitations in the dependent claims are thus subject to the same analysis as in claim 17 and are rejected using the same rationale as in claim 17 above. More specifically, dependent claims 2, 8, 10, 16 and 18 do not recite additional elements but are recited to merely further narrow the scope of the abstract idea. Further, dependent claims 4, 12 and 20 recite additional elements, but these additional elements comprise the analyses of data, which is nothing but the automation of mental tasks. See Benson, Bancorp and Cyberphone. Also see Electric Power, 830 F.3d at 1354 (“[W]e have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes”). Also, dependent claims 5, 7, 13 and 15 recite additional elements, but they are mere data gathering steps considered to be insignificant extra-solution activities. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Lastly, dependent claims 3, 6, 11, 14 and 19 recite additional elements but the elements are a combination of both data gathering steps and the automation of mental tasks.
Response to Arguments
Applicant's arguments filed 06/24/26 have been fully considered but they are not persuasive.
In response to applicant’s argument that the claim is not directed to an abstract idea, the examiner disagrees. The claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language “implementing a cross-medium transaction service; and performing…responsive to the transaction request and based at least in part upon the monitoring, an exchange transaction that includes a value amount to a receiving client in accordance with a conversion from an originating value medium to a destination value medium” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. Further, the limitations “publishing to an event feed…non-errant messages from the originating exchange; publishing to an event feed…non-errant messages from the destination exchange; monitoring…the non-errant messages from the originating and destination exchanges” are steps that can be performed in the human mind. Any steps that can be performed in the human mind fall into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
In response to applicant’s argument that the additional elements integrate the alleged abstract idea into a practical application, the examiner disagrees. The examiner contends that the claim recites a combination of additional elements including “communicating...with computing systems of exchanges; based on a transaction request from a sending client, establishing network communications with a computing system of an originating exchange and a computing system of a destination exchange; transmitting and receiving communications asynchronously with the computing systems of the originating exchange and the destination exchange..., and in response to determining, from the monitoring, that the exchange transaction has settled, recording the exchange transaction on a decentralized ledger over the one or more networks as an immutable transaction record, and, based on the immutable transaction record, transmitting to the sending client and the receiving client a confirmation that the exchange transaction has completed.” These additional elements, considered in the context of claim 1 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of inputting data, processing data, and outputting data using a generic computer system. In other words, these additional limitations are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, the processors, one or more networks, computing systems are caused to perform these steps. The processors, one or more networks, exchange management engine; first and second programmatic adapters; computing systems, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Further, the additional limitations can be reasonably characterized as reciting insignificant extra-solution and post-solution activities. For instance, the limitations “in response to determining, from the monitoring, that the exchange transaction has settled, recording the exchange transaction on a decentralized ledger over the one or more networks as an immutable transaction record,” when considered as a whole, are mere data gathering steps considered to be insignificant extra-solution activities. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Further, the limitation “based on the immutable transaction record, transmitting to the sending client and the receiving client a confirmation that the exchange transaction has completed; communicating…with computing systems of exchanges; based on a transaction request from a sending client, establishing network communications with a computing system of an originating exchange and a computing system of a destination exchange and transmitting asynchronously with the computing systems of the originating exchange and the destination exchange…” are directed to insignificant extra-solution activities of sending data from one system to another (see Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir. 2016). Lastly, the limitations “wherein each of the exchanges implements conversions between at least one value medium and at least one digital currency; wherein the first programmatic adapter and the second programmatic adapter each publish to the event feed while also preventing any errant communications from the computing systems of the originating exchange and the destination exchange from failing computing operations performed by the network-based computing system, so as to increase throughput capability with the computing systems of the originating and destination exchanges” are recited to further narrow the scope of the abstract idea. In all, these recited steps merely describe an intangible property of the data that does affect the examiner’s characterization of the additional limitations as insignificant extra-solution activities. Thus, it is determined that claim 17 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Further, it is determined that, taken alone, the additional elements in the claim amount to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 17 are the generically recited “processors, one or more networks, exchange management engine; first and second programmatic adapters; computing systems.” The specification does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional hardware components or systems being used in their ordinary manner. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
Applicant's citation of Bascom is unpersuasive, as the claims at issue in Bascom are readily distinguishable over the instant claims. In Bascom the claims were held to be patent-eligible because the claimed solution focused upon the specific asserted improvement in filtering technology by providing individually customizable filtering at a remote ISP server by taking advantage of the technical capability of certain communication networks. The invention in Bascom was a technological solution to a technological problem, using an improved filtering technology rather than using conventional filtering technology. In contrast, again, the instant claims provide a generically computer-implemented solution to a business-related or economic problem, and are incomparable to the claims at issue in Bascom.
In response to applicant’s argument that the claims provide a specific technical solution to the technological problem, the examiner disagrees. The elements recited by the claims above provide a commercial solution not a technical solution. As the Federal Circuit explained in Bancorp Svcs., LLC v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012), both Research Corp. and SiRF Tech, involved improvements to the underlying technology itself. That is not the case here. Rather here, as in Bancorp, the claimed invention merely uses the underlying computer technology in its ordinary capacity to perform processes “more efficiently.” See Bancorp, 687 F.3d at 1279.
The examiner contends that while the patent claims in DDR Holdings, as described by the Court, involve conventional computers and the Internet, the claims addressed the problem of retaining website visitors who, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be instantly transported away from a host’s website after “clicking” on an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257. “[T]he claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” However, this is just not the case with the claimed subject matter.
The examiner contends that, in McRo, the claimed rules transform a traditionally subjective process performed by humans into a mathematically automated process executed on computers. The human process and computer process in McRO produced a similar result but do so in fundamentally different ways. It is the incorporation of the claimed rules, not the use of the computer that improves the existing technological process by allowing the automation of further tasks. In contrast, the present claims do not provide improved rules and “merely implement an old practice in a new environment.
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 OJO O OYEBISI whose telephone number is (571)272-8298. The examiner can normally be reached on Monday-Friday, 9am-7pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Behncke can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OJO O OYEBISI/Primary Examiner, Art Unit 3695
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