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 Status
Claims 1-20 are currently pending and are presented for examination on the merits.
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 1-20 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.
In sum, claims 1-20 are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception to patentability (i.e., a law of nature, a natural phenomenon, or an abstract idea) and do not include an inventive concept that is something “significantly more” than the judicial exception under the January 2019 patentable subject matter eligibility guidance (2019 PEG) analysis which follows.
Under the 2019 PEG step 1 analysis, it must first be determined whether the claims are directed to one of the four statutory categories of invention (i.e., process, machine, manufacture, or composition of matter). Applying step 1 of the analysis for patentable subject matter to the claims, it is determined that the claims are directed to the statutory category of a process (claims 9-15) and a machine (claims 1-8 and 16-20), where the machine is substantially directed to the subject matter of the process. (See, e.g., MPEP §2106.03). Therefore, we proceed to step 2A, Prong 1.
Under the 2019 PEG step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more designated categories of patent ineligible subject matter (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability. Here, the claims recite the abstract idea of receiving tracking information pertaining to the transfer of funds by:
sending a payment request, the payment request specifying an identifier for a recipient institution and an amount of the payment request; wherein an account associated with the identifier for the recipient institution is otherwise directly unobtainable over the network hub.
receiving a payment response to the payment request indicating that the payment request is being forwarded, wherein the response to the payment request comprises at least a supernetwork tracking identifier;
configured to obtain and render tracking information for the supernetwork tracking identifier
sending a tracking request to a transaction tracker service, the tracking request comprising the supernetwork tracking identifier; and
receiving a tracking response to the tracking request, the tracking response comprising at least:
a first tracking status that corresponds to a first transfer of funds; and
a second tracking status that corresponds to a second transfer of funds…
Here, the recited abstract idea falls within one or more of the three enumerated 2019 PEG categories of patent ineligible subject matter, to wit: the category of certain methods of organizing human activity, which includes fundamental economic practices or principles and commercial or legal interactions (e.g., receiving tracking information pertaining to the transfer of funds).
Under the 2019 PEG step 2A, Prong 2 analysis, the identified abstract idea to which the claim is directed does not include limitations that integrate the abstract idea into a practical application, since the recited features of the abstract idea are being applied on a computer or computing device or via software programming that is simply being used as a tool (“apply it”) to implement the abstract idea. (See, e.g., MPEP §2106.05(f)). Therefore, the claim is directed to an abstract idea. Independent claims 1 and 16 are nearly identical to independent claim 9 so the same analysis applies to those two claims as well. Claim 1 includes additional elements such as a “memory” which is being used to implement the abstract idea noted in claim 9. That the transaction identifier comprises a URL and is consistent across an entirety of a cross-network transaction is extraneous to the abstract idea, but it fails to effect a practical application, because they do not offer an innovative concept. Moreover, sending a tracking request involving the tracking identifier fails to offer an innovative concept. See, similarly, USPS, global tracking of a package across countries and networks utilizing a singular tracking number being entered into a URL provided by the tracking service.
Under the 2019 PEG step 2B analysis, the additional elements are evaluated to determine whether they amount to something “significantly more” than the recited abstract idea. (i.e., an innovative concept). Here, the additional elements, such as: a “device,” “hub,” “network”, “instance,” and “module,” do not amount to an innovative concept since, as stated above in the step 2A, Prong 2 analysis, the claims are simply using the additional elements as a tool to carry out the abstract idea (i.e., “apply it”) on a computer or computing device and/or via software programming. (See, e.g., MPEP §2106.05(f)). The additional elements are specified at a high level of generality to simply implement the abstract idea and are not themselves being technologically improved. (See, e.g., MPEP §2106.05 I.A.); (see also, paragraphs [0025-0026] of the specification).
Dependent claims 2–8, 10–15, and 17–20 have all been considered and do not integrate the abstract idea into a practical application. Dependent claims 2 and 10 recite nearly identical limitations that further define the abstract idea noted in claim 9 in that they describe the displaying of data on an interface. Dependent claim 3 recites limitations that further define the abstract idea noted in claim 9 in that it describes displaying further data onto a generic device using a generic interface. Dependent claim 4 recites limitations that further define the abstract idea noted in claim 9 in that it describes the estimated dates of funds transfer completion. Dependent claim 5 recites limitations that further define the abstract idea noted in claim 9 in that it describes that the two transfers are completed at the same time. Dependent claims 6, 7, and 20 recite nearly identical limitations that further define the abstract idea noted in claim 9 in that they describe how the second and first estimated dates are determined. Dependent claim 8 recites limitations that further define the abstract idea noted in claim 9 in that it describes what kind of payment network the first payment network is (“an ACH network”). Dependent claim 11 recites limitations that further define the abstract idea noted in claim 9 in that it describes rending information on a user interface of a device. Dependent claim 12 recites limitations that further define the abstract idea noted in claim 9 in that it describes the order of completion for a transfer of funds. Dependent claim 13 recites limitations that further define the abstract idea noted in claim 9 in that it describes what he tracking module consists of. Dependent claim 14 recites limitations that further define the abstract idea noted in claim 9 in that it describes that at least one of the payment networks is a real-time payment network. Dependent claim 15 recites limitations that further define the abstract idea noted in claim 9 in that it describes that at least one of the payment networks is a blockchain network. Dependent claim 17 recites limitations that further define the abstract idea noted in claim 9 in that it describes generating a unique identifier that is associated with both transfer of funds. Dependent claim 18 recites limitations that further define the abstract idea noted in claim 9 in that it describes receiving status information of the funds and their transfer status. Dependent claim 19 recites limitations that further define the abstract idea noted in claim 9 in that it describes what exactly the identifier is (“a unique resource locator”).
The elements of the instant process steps when taken in combination do not offer substantially more than the sum of the functions of the elements when each is taken alone. The claims as a whole, do not amount to significantly more than the abstract idea itself because the claims do not effect an improvement to another technology or technical field (e.g., the field of computer coding technology is not being improved); the claims do not amount to an improvement to the functioning of an electronic device itself which implements the abstract idea (e.g., the general purpose computer and/or the computer system which implements the process are not made more efficient or technologically improved); the claims do not perform a transformation or reduction of a particular article to a different state or thing (i.e., the claims do not use the abstract idea in the claimed process to bring about a physical change. See, e.g., Diamond v. Diehr, 450 U.S. 175 (1981), where a physical change, and thus patentability, was imparted by the claimed process; contrast, Parker v. Flook, 437 U.S. 584 (1978), where a physical change, and thus patentability, was not imparted by the claimed process); and the claims do not move beyond a general link of the use of the abstract idea to a particular technological environment (e.g., simply claiming the use of a computer and/or computer system to implement the abstract idea).
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.
Claim 1-20 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. The added limitation “wherein an account associated with the identifier for the receipient institution is otherwise directly unobtainable . . .” is not supported by the specification. At ¶ [0084] it states that an account “of another user” may be otherwise unobtainable. This differs from an account “associated with an identifier.” Applicant is asked to amend this limitation to better match what is disclosed in the specification, or pinpoint support in the specification for this limitation.
Appropriate correction/clarification is required.
Response to Arguments
Applicant’s arguments filed on June 23, 2025 have been fully considered, but are not persuasive where objections/rejections are maintained.
The § 101 rejection is maintained, because the instant amendment fails to add an innovative concept under prong 2, or where conventional, significantly more, under Step 2B. The invention remains directed to an abstract idea (e.g., a peer-to-peer fund request system operable to fulfill across multiple networks) in functional terms, and recites the structure at a high level. Peer-to-peer systems, cross network transactions, and tracking identifiers are all economic in nature and reflect long standing commercial practices. All of the structure (e.g., a global transaction router, source network hubs, and even “super-network instances”) fail to introduce an innovative concept. See, US 2015/0063202 (¶¶ [0154-55]). The definition of a supernetwork is a network that consolidates or enables intercommunication between networks that are otherwise not in communication with one another via a unique identifier. Applicant’s traversal is unpersuasive and repeats what has been previously argued. No one claim recites sufficient extraneous limitation to effect a practical application; and it is noted that a combination claim combining the limitations of multiple dependent claims have not been submitted.
The claims fail to effect a practical application or significantly more (e.g., have no prior human or manual analogue) than the abstract idea; but merely applies generic computing technology (e.g., supernetworks, supernetwork identifiers, etc.) in a particular context (to enable payment between multiple payment networks. An executable tracking module may be a conventional website/URL itself, or a downloaded app from the above-referenced services. Bascom is distinguishable from the instant case, because a technical solution is not presented herein; rather a business method is being performed across generic computing technology. Finally, it is noted that Applicant’s traversal of Claims 16-20 as reciting “different subject matter compared to claims 1 and 9” may indicate restriction. Nevertheless, the 101 rejection of the broader Claim 16 (directed to the same transaction and subject matter) is maintained. As per the prior art references of record, deference has been made to the prior examiner’s prior art search and prior art rejection decision; it would require improper hindsight and piecemeal to construct a proper § 103 rejection. However, an updated search has been performed. Daetz (US 2022/0207532) has been added to the record, which teaches managing transaction tokens linked to account identifiers across multiple networks for fulfillment, as an example of the state of the art under § 101 (it is implicit that the tokens are trackable across the networks).
As previously presented, Applicant first argues that “Office Action (p. 4) mischaracterizes claim 16 by stating that "independent claims 1 and 16 are nearly identical" when a comparison of the claims shows that not to be the case. Accordingly, the Office Action fails to discuss these elements or explain.” (See Applicant’s Arguments, p. 11). However, although there may be a few differences in the wording of claim 16, it is very similar to claims 1 and 9. A few limitations present in claims 1 and 9 may be missing from claim 16, however other limitations are present in all of these claims. For example, the first and second tracking statuses found in claims 1 and 9 are both present in claim 16. The same additional element of “network” is also present in all three independent claims. Both claims 1 and 9 state in their limitations that the computing device “receive” or “receiving” “first” and “second” tracking status” that corresponds to the first or second transfer of funds which is the same thing that is occurring in claim 16 where the “first status” and “second status” are sent. This sending of “tracking status” is identical in all three claims. Therefore, all of the claim limitations of independent claim 16 have been considered and do not overcome the pending rejection under 35 U.S.C. § 101.
Applicant also argues that “claims 1, 9, and 16 integrate any alleged abstract idea into a practical application.” (See Applicant’s Arguments, p. 15). However, the identified abstract idea to which the claim is directed does not include limitations that integrate the abstract idea into a practical application, since the recited features of the abstract idea are being applied on a computer or computing device or via software programming that is simply being used as a tool (“apply it”) to implement the abstract idea. (See, e.g., MPEP §2106.05(f)). However, the use of generic elements to track payment status over multiple networks does not integrate the abstract idea into a practical application. There are no interactive elements in this invention which would do so.
For these reasons and those cited above, the previously cited rejection under 35 U.S.C. §101 is maintained.
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 William J. Jacob whose telephone number is (571) 270-3082. The examiner can normally be reached Mon - Thu 8 AM - 6 PM EST. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Gart, can be reached at (571) 272-3955. The Examiner’s fax number is (571) 273-6087. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM J JACOB/Examiner, Art Unit 3696