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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/01/2026 has been entered. Response to Amendment
Amendment received on 04/01/2026 is acknowledged and entered. Claims 2 have been canceled. Claim 1 has been amended. Claims 1-25 are currently pending in the application.
Claim Objection
Claim 25 is objected to because it depends upon claim 45. There is only 25 claims in the current application. For the purposes of prosecution, the Examiner considers this as a clerical error, and assumes that necessary changes have been made.
Examiner’s Note
Claim 1 as currently amended recites: “wherein said plurality of additional accounting effect engines execute a shadow-ledger validation protocol within said central data store to simulate transaction outcomes across disparate bank accounts prior to updating primary ERP modules.” However, the Examiner was not able to find a support for said “shadow-ledger” and “to simulate transaction outcomes” limitations. Therefore, for the purposes of prosecution, and in view of the Specification, the Examiner understands the recited limitations as validating a transaction, such as performing a check before the transaction reaches the check writing stage to ensure that the transaction does not result in negative bank funds, or to avoid a negative balance after the transaction. Said limitation is similar to “validating” step in claim 24: “and wherein said detection and said handling of said exceptions is based on bank balance funds available and a transaction type, wherein said exceptions comprise one or more of: (a) transactions that one of result in and increase negative bank balance funds available; and (b) being unable to process one of said positive receipt and said negative receipt due to an inadequacy of said bank balance funds available for processing one of said positive receipt and said negative receipt”.
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 1-25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
In determining whether a claim falls within an excluded category, the Examiner is guided by the Court’s two-part framework, described in Mayo and Alice. Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)); Bilski v. Kappos, 561 U.S. 593, 611 (2010); 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019); the October 2019 Update of the 2019 Revised Guidance (Oct. 17, 2019), and 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence (July 17, 2024).
Step 1
Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability (i.e., laws of nature, natural phenomena, and abstract ideas). Alice Corp. v. CLS Bank Int'l, 573 U. S. ____ (2014).
The broadest reasonable interpretation of claim 1 encompasses a computer system (e.g., hardware such as a processor and memory) that implements the recited functions. If assuming that the system comprises a device or set of devices, then the system is directed to a machine, which is a statutory category of invention. Claim 23 is directed to a statutory category, because a series of steps for controlling transactions satisfies the requirements of a process (a series of acts). Claim 24 is directed to a statutory category, because a non-transitory computer-readable medium comprising computer-readable instructions for implementing the method of controlling transactions satisfies the requirements of a product.
(Step 1: Yes).
Next, the claim is analyzed to determine whether it is directed to a judicial exception.
Step 2A – Prong 1
Claim 24 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more of controlling transactions processed by an enterprise resource planning (ERP) system. The claim recites:
Claim 24. A non-transitory, computer-readable storage medium having embodied thereon, computer program instructions executable by at least one processor of a program server of an enterprise resource planning (ERP) system for controlling transactions processed by said ERP system, said computer program instructions when executed by said at least one processor cause said at least one processor to:
configure a bank balance funds check controller of a control system to communicate with a standard functionality of said ERP system only via a central data store within at least one storage device of said program server;
configure a negative balance controller of the control system to communicate with said standard functionality of said ERP system and with said bank balance funds check controller only via said central data store stored within said at least one storage device of said program server, wherein said central data store is configured such that each of said bank balance funds check controller, said negative balance controller, and said standard functionality of said ERP system is configured to natively query and update transaction details within said central data store, and wherein said updated transaction details are simultaneously available to said bank balance funds check controller, said negative balance controller, and said standard functionality of said ERP system;
validate said transactions processed by said ERP system, wherein said validation of said transactions results in one of allowing and preventing processing of said transactions by a standard functionality of said ERP system, thereby improving functioning of said ERP system, and wherein said validation of said transactions comprises detecting and handling exceptions that occur during said processing of said transactions by said standard functionality of said ERP system, when said standard functionality of said ERP system is unable to detect and handle said exceptions, wherein said processing of said transactions comprises processing one of a journal, an invoice, a positive receipt, and a negative receipt, and wherein said detection and said handling of said exceptions is based on bank balance funds available and a transaction type, wherein said exceptions comprise one or more of: (a) transactions that one of result in and increase negative bank balance funds available; and (b) being unable to process one of said positive receipt and said negative receipt due to an inadequacy of said bank balance funds available for processing one of said positive receipt and said negative receipt;
configure said bank balance funds check controller to:
determine said bank balance funds available by aggregating bank balance amounts available for said transactions in one or more related general purpose bank accounts; and
allow said processing of said transactions based on determining an adequacy of said bank balance funds available for said processing of said transactions, thereby preventing negative bank balance funds from one of resulting in and increasing in said one or more related general purpose bank accounts as a result of said processing of said transactions; and
configure said negative balance controller to monitor said transaction type and allow said processing of said one of said positive receipt and said negative receipt, irrespective of said bank balance funds available being inadequate for said processing of said one of said positive receipt and said negative receipt, thereby controlling and transforming said processing of said transactions, wherein said controlling and said transforming of said processing of said transactions comprise:
creating a first additional account and a second additional account, each associated with said ERP system;
attaching each of said first additional account and said second additional account with a plurality of transaction codes associated with said ERP system;
defining a first additional accounting effect, generated by one of a plurality of additional accounting effect engines associated with said bank balance funds check controller, for said controlling of said processing of said transactions;
defining a second additional accounting effect, generated by another one of said plurality of additional accounting effect engines associated with said negative balance controller, for said controlling of said processing of said positive receipt and said negative receipt;
referencing one of said plurality of transaction codes for said controlling of said processing of said transactions by said bank balance funds check controller, in said communication with said standard functionality of said ERP system only via said central data store, based on said determination of said adequacy of said bank balance funds available for said processing of said transactions; and
allowing said processing of said one of said positive receipt and said negative receipt, by said negative balance controller, in said communication with said standard functionality of said ERP system and said bank balance funds check controller only via said central data store, irrespective of said bank balance funds available being inadequate for said processing of said one of said positive receipt and said negative receipt,
The recited limitations, under its broadest reasonable interpretation, covers performance of the limitation in the mind, which may be practically performed in the human mind using observation, evaluation, judgment, and opinion (MPEP 2106.04(a)(2)
subsection III), and/or certain methods of organizing human activity such as fundamental economic practice, and commercial or legal interaction related to the processing of transactions, but for the recitation of generic computer components.
The claims essentially recite logic/methodology for controlling processing of financial transactions (e.g., journal, invoice, positive receipt, negative receipt) by including additional logic (i.e. additional accounting effect engines) to detect and handle exceptions that occur. For example, the claims are directed to providing automated decision-making for transaction processing by processing some types of financial transactions (e.g., journal, invoice) only when there is an adequate account balance, and processing other types of financial transactions (e.g., positive and negative receipts) irrespective of the account balance.
Specifically, as mental activity, said processing of financial transactions, including checking balances, validating transactions, allowing or preventing processing of said transactions based on said validation, processing positive and negative receipts, aggregating bank balance amounts, and referencing transaction codes - said functions could be performed by a human using mental steps or basic critical thinking, which are types of activities that have been found by the courts to represent abstract ideas (e.g., mental comparison regarding a sample or test subject to a control or target data in Ambry, Myriad CAFC, or the diagnosing an abnormal condition by performing clinical tests and thinking about the results in In re Grams, 888 F.2d 835 (Fed. Cir. 1989) (Grams)). In Grams, the recited functions require obtaining data or patient information (from sensors), and analyze that data to ascertain the existence and identity of an abnormality or estimated responses, and possible causes thereof. While said functions are performed by a computer, they are in essence a mathematical algorithm, in that they represent "[a] procedure for solving a given type of mathematical problem." Gottschalk v. Benson, 409 U.S. 63, 65, 93 S.Ct. 253, 254, 34 L.Ed.2d 273 (1972). Moreover, the Federal Circuit has held, “without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.” Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Further, “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, [are] essentially mental processes within the abstract-idea category.” Elec. Power, 830 F.3d at 1354; see also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016). “[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012).
Further, as fundamental business practice, said processing of financial transactions, including checking balances, validating transactions, allowing or preventing processing of said transactions based on said validation, processing positive and negative receipts, aggregating bank balance amounts, and referencing transaction codes - said functions is an example of a fundamental economic principle or practice. Bozeman Fin. LLC v. Fed. Reserve Bank of Atlanta, 955 F.3d 971, 978 (Fed. Cir. 2020). Also, verifying a transaction to avoid fraud is a long-standing commercial practice. Solutran, Inc. v. Elavon, Inc., (2019). Furthermore, “We explained that “data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions. And banks have, for some time, reviewed checks, recognized relevant data such as the amount, account number, and identity of account holder, and stored that information in their records.” Content Extraction & Transmission LLC v. Wells Fargo Bank, National Ass’n, Nos. 13-1588,-1589, 14-1112, -1687 (Fed. Cir. Dec. 23, 2014) the Federal Circuit affirmed that such limitations were generally directed to “the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory.”)
It is similar to other abstract ideas held to be non-statutory by the courts. See, also, CyberSource Corp. v. Retail Decisions, Inc. 654 F.3d 1366, 99 U.S.P.Q.2d 1690 (Fed. Cir. 2011) - Method and System for Detecting Fraud in a Credit Card Transaction over the Internet; Intellectual Ventures I LLC v. Capital One Bank (USA) 793 F.3d 1363, 115 U.S.P.Q.2d 1636 (Fed. Cir. 2015) - Administration of financial accounts, and advanced internet interface providing user display access of customized webpages; Shortridge v. Foundation Const. Payroll Service, LLC. 655 Fed. Appx. 848 (Fed Cir. 2016) - Payroll Processing, certification reporting and project management system; Automated credit application system, 554 F.3d 967, 89 U.S.P.Q.2d 1641 (Fed. Cir. 2009) - Method and System for Mandatory Arbitration; Credit Acceptance Corp. v. Westlake Services, __ F.3d __, __ U.S.P.Q.2d __ (Fed Cir. 2017) CAFC Appeal No. 16-2001 - System and Method for providing financing; Shortridge v. Foundation Const. Payroll Service, LLC, 655 Fed. Appx. 848 (Fed Cir. 2016) - Payroll Processing, certification reporting and project management system; In re Chorna 656 Fed. Appx. 1016 (Fed Cir. 2016) - Hindsight allocation instrument for tracking financial instruments; and buySAFE, Inc. v. Google, Inc. 765 F.3d 1350, 112 U.S.P.Q.2d 1093 (Fed. Cir. 2014) - Safe Transaction Guaranty.
As per receiving, storing and outputting data limitations, it has been held that “As many cases make clear, even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (citation omitted); see also In re Jobin, 811 F. App’x 633, 637 (Fed. Cir. 2020) (claims to collecting, organizing, grouping, and storing data using techniques such as conducting a survey or crowdsourcing recited a method of organizing human activity, which is a hallmark of abstract ideas).
All these cases describe the significant aspects of the claimed invention, albeit at another level of abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer.").
Therefore, if a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” and/or “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. (Step 2A – Prong 1: Yes).
Step 2A – Prong 2
In Prong Two, the Examiner determines whether claim 24, as a whole, recites additional elements that integrate the judicial exception into a practical application of the exception, i.e., whether the additional elements apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is no more than a drafting effort designed to monopolize the judicial exception. See Guidance, 84 Fed. Reg. at 54-55. If the additional elements do not integrate the judicial exception into a practical application, then the claim is directed to the judicial exception. See id., 84 Fed. Reg. at 54. “An additional element [that] reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field” is indicative of integrating a judicial exception into a practical application. See Guidance, 84 Fed. Reg. at 55.
The Examiner determined that this judicial exception is not integrated into a practical application, because there are no meaningful limitations that transform the exception into a patent eligible application. In particular, the claim recites additional elements – using a processor to perform the recited steps. However, the processor in each step is recited (or implied) at a high level of generality, i.e., as a generic processor performing a generic computer functions of processing data, such as receiving, storing, comparing, and outputting data. This generic processor limitation is nor more than mere instructions to apply the exception using a generic computer component. See MPEP 2106.05(f). The processor that performs the recited steps merely automates these steps which can be done mentally or manually. Thus, while the additional elements have and execute instructions to perform the abstract idea itself, this also does not serve to integrate the abstract idea into a practical application as it merely amounts to instructions to "apply it." The claim only manipulates abstract data elements into another form, and does not set forth improvements to another technological field or the functioning of the computer itself and, instead, uses computer elements as tools in a conventional way to improve the functioning of the abstract idea identified above.
Further, looking at the limitations as an ordered combination adds 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, - their collective functions merely provide conventional computer implementation. None of the additional elements "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Alice Corp., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)).
Furthermore, the limitation of “configure a bank balance funds check controller of a control system to communicate with a standard functionality of said ERP system only via a central data store…”(emphasis added) does not constitutes an improvement in transaction processing system technology, which is admitted by the Applicant, and represents a standard configuration of a transaction processing system. Applicant explicitly confirms this fact in Applicant’s arguments at pages 10-13 of the Appeal Brief filed on 08/27/2024. For example, from page 10 of the Appeal Brief:
“Furthermore, a data store and component units configured for intra-system
communication through the central data store is a well-known system requirement in the art of transaction processing systems including ERP Systems from before Manohar, Publication No. US 2019/0197615 Al and Hufschmid, Publication No, US 2017/0185955 A1.
Furthermore, applicant's disclosure recited in application no. 18/164,794 is an improvement to an existing enterprise resource planning system, comprising, among other system components, a program server (1900) of the existing ERP System, which in turn comprises, among other components, at least one storage device that is configured to store a central data store therewithin. As is clear from the language of the disclosure, the program server, or an integral component thereof, namely the central data store is not something that the applicant used anew that was not already there in an existing ERP system; see the Oracle® and/or Google/yahoo search documents submitted along with this appeal brief (Appendix E (a) - E (h)).”
Therefore, the limitation of “configure a bank balance funds check controller of a control system to communicate with a standard functionality of said ERP system only via a central data store…” does not constitute an improvement in transaction processing system technology, and does not establish practical application.
Thus, the recited steps do not control or improve operation of a machine (MPEP 2106.05(a)), do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and do not apply the judicial exception with, or by use a particular machine (MPEP 2106.05(b)), but, instead, require receiving, storing, comparing and outputting data.
As per receiving, storing and/or outputting data limitations, these recitations amount to mere data gathering and/or outputting, is insignificant post-solution or extra-solution component and represents nominal recitation of technology. Insignificant "post-solution” or “extra-solution" activity means activity that is not central to the purpose of the method invented by the applicant. However, “(c) Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the execution of the claimed method steps. Use of a machine or apparatus that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would weigh against eligibility”. See Bilski, 138 S. Ct. at 3230 (citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, ___ (1978)). Thus, claim drafting strategies that attempt to circumvent the basic exceptions to § 101 using, for example, highly stylized language, hollow field-of-use limitations, or the recitation of token post-solution activity should not be credited. See Bilski, 130 S. Ct. at 3230.
Therefore, the method as a whole, outputs only data structure, - everything remains in the form of a code stored in the computer memory. Accordingly, even in combination, 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. Therefore, the claim is directed to an abstract idea. (Step 2A – Prong 2: No).
Step 2B
If a claim has been determined to be directed to a judicial exception under revised Step 2A, examiners should then evaluate the additional elements individually and in combination under Step 2B to determine whether the provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).
The Examiner determined that 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 additional element of using a processor to perform the recited steps amount to no more than mere instructions to apply the exception using a generic computer component. The claim is now re-evaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field.
The system would require a processor and memory in order to perform basic computer functions of receiving information, storing the information in a database, retrieving information from the database, comparing data, and outputting said information. Based on the Specification, the invention utilizes existing, conventional communication networks, and generic processors, which can be found in mobile devices or desktop computers, conventional memory and display devices, and the functions performed by said generic computer elements are basic functions of a computer - performing a mathematical operation, receiving, storing, comparing and outputting data - have recognized by the courts as routine and conventional activity.
The background of the current application does not provide any indication that the processor is anything other than a generic, off-the-shelf computer component, and the Symantec, TLI, and OIP Techs. court decisions cited in MPEP 2106.05(d)(II) indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). Accordingly, a conclusion that the recited steps are well-understood, routine, conventional activity is supported under Berkheimer Option 2. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Following to the second step of the Mayo analysis, the Examiner did not find “significantly more” by using a particular machine, through specific limitations that are not well-understood, routine, and conventional, and by going beyond linking the abstract idea to a particular technological environment. The claimed steps do not require a particular machine. The Specification discloses:
[0056] In an exemplary implementation, the computer system comprises one or more of custom hardware, a hard-wired logic circuit, a combination of custom hardware and software, and a combination of a hard-wired logic circuit and software. In an embodiment, the computer system and the computer-implemented method disclosed herein have been developed using automated additional accounting effects of financial transactions performed by a user, for example, invoice and receipt processing, in a way the computer system performs a user task as usual, and at the same time, creates an additional accounting effect or effects, as needed, depending on the details of the bank balance funds available and the transaction type of an incoming financial transaction.
[0125] In an embodiment as exemplarily illustrated in FIG. 18, the program server comprises at least one processor 1801, a memory unit 1802 operably and communicatively coupled to the processor(s) 1801, at least one storage device 1808, and a central data store 1811 stored within the storage device(s) 1808. The processor(s) 1801 is an electronic circuit that executes
computer programs. The processor(s) 1801 is configured to execute computer program
instructions stored in the memory unit 1802 and the storage device(s) 1808 for controlling transactions processed by the ERP system 400. The processor(s) 1801 refers to one or more microprocessors, central processing unit (CPU) devices, finite state machines, computers, microcontrollers, digital signal processors, logic, logic devices, application-specific integrated circuits (ASICs), field-programmable gate arrays (FPGAs), chips, etc., or any combination thereof, capable of executing computer programs or a series of commands, instructions, or state transitions. In an embodiment, the processor(s) 1801 is implemented as a processor set comprising, for example, a programmed microprocessor and a math or graphics co-processor. The program server 1800 is not limited to employing the processor(s) 1801. In an embodiment, the program server 1800 employs a controller or a microcontroller. The memory unit 1802 is a non-transitory, computer-readable storage medium configured to store computer program instructions executable by the processor(s) 1801. The memory unit 1802 is a storage unit used for recording, storing, and reproducing data, program instructions, and applications. In an embodiment, the memory unit 1802 comprises a random-access memory (RAM) or another type of dynamic storage device that serves as a read and write internal memory and provides short-term or temporary storage for information and instructions executable by the processor(s) 1801. In another embodiment, the memory unit 1802 further comprises a read-only memory (ROM) or another type of static storage device that stores firmware, static information, and instructions for execution by the processor(s) 1801. In an embodiment, the modules of the ERP system 400 are stored in the memory unit 1802.
[0127] … Depending on the complexity and volume of operations, costs and other factors, user organizations may use different data storage systems as available in the market, one of which is Oracle Database, or any other Database. Oracle Database (Relational Database Management System—RDBMS) is a popular one used by many/most of the large and medium sized end-users of ERP Systems 400. Further, an ERP System 400 is a multi-functional, integrated conglomeration of many subsystems and applications. Accordingly, the nomenclature of “central data store” 400 is used in a general, inclusive meaning of a place where data as well as programs, applications, instructions and data including processed information are stored, as well as updated, retrieved or otherwise used (together called storage and management); and in the meaning it is central or common to the whole of the ERP System 400.
[0128] … In an embodiment, the network interface 1804 is provided as an interface card also referred to as a line card. The network interface 1804 is, for example, one or more of infrared interfaces, interfaces implementing Wi-Fi® of Wi-Fi Alliance Corporation, universal serial bus (USB) interfaces, Ethernet interfaces, frame relay interfaces, cable interfaces, digital subscriber line interfaces, token ring interfaces, peripheral component interconnect (PCI) interfaces, local area network (LAN) interfaces, wide area network (WAN) interfaces, interfaces using serial protocols, interfaces using parallel protocols, asynchronous transfer mode interfaces, fiber distributed data interfaces (FDDI), interfaces based on transmission control protocol (TCP)/internet protocol (IP), interfaces based on wireless communications technology such as satellite technology, radio frequency technology, near field communication, etc.
[0167] The embodiments disclosed herein are configured to operate in a network environment comprising one or more computers that are in communication with one or more devices via a network. In an embodiment, the computers communicate with the devices directly or indirectly, via a wired medium or a wireless medium such as the Internet, satellite internet, a local area network (LAN), a wide area network (WAN) or the Ethernet, or via any appropriate communications mediums or combination of communications mediums. Each of the devices comprises processors that are adapted to communicate with the computers.
Thus, neither claims nor the Specification identify a particular machine, because the Specification implies a vast array of computer elements that are encompassed by the various embodiments envisioned by the Applicant. The operations of receiving, storing, analyzing, and outputting data are primitive computer operations found in any computer system. See In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the required hardware, the recited functions can be achieved by any general-purpose computer without special programming.”). Therefore, none of the claimed or implied memory storage, computer processor, or automatic operation provide “significantly more” that transforms the abstract idea into eligible subject matter.
In addition, as was noted earlier, except for the generic computer elements, there is nothing recited in the claim that goes beyond the abstract idea itself. Therefore, there is nothing recited that fails to be well-understood, routine, and conventional, and the claims are not linked to any particular technological environment, because so many computer options are articulated.
Also, the claim does not involve a non-conventional and non-generic arrangement of known, conventional pieces, as asserted, by receiving information from an external source of data. The receiving of data from an external source over a network, such as via the Internet, can fairly be characterized as insignificant extra-solution activity that does not receive patentable weight. See Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom Bilski v. Kappos, 561 U.S. 593 (2010) (characterizing data gathering steps as insignificant extra-solution activity).
Further, the limitation of “configure a bank balance funds check controller of a control system to communicate with a standard functionality of said ERP system only via a central data store…”(emphasis added) is a standard configuration in transaction processing systems. It appears that Applicant confirms this fact at pages 10-13 of the Appeal Brief filed on 08/27/2024. For example, from page 10 of the Appeal Brief:
“Furthermore, a data store and component units configured for intra-system
communication through the central data store is a well-known system requirement in the art of transaction processing systems including ERP Systems from before Manohar, Publication No. US 2019/0197615 Al and Hufschmid, Publication No, US 2017/0185955 A1.
Furthermore, applicant's disclosure recited in application no. 18/164,794 is an improvement to an existing enterprise resource planning system, comprising, among other system components, a program server (1900) of the existing ERP System, which in turn comprises, among other components, at least one storage device that is configured to store a central data store therewithin. As is clear from the language of the disclosure, the program server, or an integral component thereof, namely the central data store is not something that the applicant used anew that was not already there in an existing ERP system; see the Oracle® and/or Google/yahoo search documents submitted along with this appeal brief (Appendix E (a) - E (h)). “
Therefore, based on established prior art and Applicant’s admission the use of a central data store in transaction processing system is conventional practice, and sending transaction-related information via the central data store does not provide an inventive concept (i.e. said additional elements do not amount to substantially more).
Furthermore, similar to Electric Power Group v Alstom S.A. (Fed Cir, 2015-1778, 8/1/2016) (Power Group), claim’ invocation of computers, networks, and displays does not transform the claimed subject matter into patent-eligible applications. Claim 24 does not require any nonconventional computer, network, or display components, or even a “non-conventional and non-generic arrangement of known, conventional pieces,” but merely call for performance of the claimed information collection, analysis, and display functions on a set of generic computer components and display devices. Nothing in the claim, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information. Analogous to Power Group, claim 24 does not even require a new source or type of information, or new techniques for analyzing it. As a result, the claim does not require an arguably inventive set of components or methods, such as measurement devices or techniques that would generate new data. The claim does not invoke any assertedly inventive programming. Merely requiring the selection and manipulation of information - to provide a “humanly comprehensible” amount of information useful for users - by itself does not transform the otherwise-abstract processes of information collection and analysis into patent eligible subject matter. Merely obtaining and selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas. Therefore, the recited steps represent implementing the abstract idea on a generic computer, or “reciting a commonplace business method aimed at processing business information despite being applied on a general purpose computer” Versata, p. 53; Ultramerical, pp. 11-12.
Furthermore, the recited functions do not improve the functioning of computers itself, including of the processor(s) or the network elements. There are no physical improvements in the claim, like a faster processor or more efficient memory, and there is no operational improvement, like mathematical computation that improve the functioning of the computer. Applicant did not invent a new type of computer; Applicant like everyone else programs their computer to perform functions. The Supreme Court in Alice indicated that an abstract claim might be statutory if it improved another technology or the computer processing itself. Using a (programmed) computer to implement a common business practice does neither. The Federal Circuit has recognized that "an invocation of already-available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is 'well-understood, routine, [and] conventional.'" SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (alteration in original) (citing Mayo v. Prometheus, 566 U.S. 66, 73 (2012)). Apart from the instructions to implement the abstract idea, they only serve to perform well-understood functions (e.g., receiving, storing, comparing and transmitting data - see the Specification as well as Alice Corp.; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016); and Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) covering the well-known nature of these computer functions). Looking at the limitations as an ordered combination adds 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. Their collective functions merely provide conventional computer implementation. “However, it is not apparent how appellant’s programmed digital computer can produce any synergistic result. Instead, the computer will simply do the job it is instructed to do. Where is there any surprising or unexpected result? The unlikelihood of any such result is merely one more reason why patents should not be granted in situations where the only novelty is in the programming of general purpose digital computers”. See Sakraida v. Ag. Pro, Inc., 425 U.S. 273 [ 96 S.Ct. 1532, 47 L.Ed.2d 784], 189 USPQ 449 (1976) and A P Tea Co. V. Supermarket Corp., 340 U.S. 147 [ 71 S.Ct. 127, 95 L.Ed. 162], 87 USPQ 303 (1950).
Furthermore, there is no transformation recited in the claim as understood in view of 35 USC 101. The recited steps merely represent abstract ideas which cannot meet the transformation test because they are not physical objects or substances. Bilski, 545 F.3d at 963. Said steps are nothing more than mere manipulation or reorganization of data, which does not satisfy the transformation prong. It is further noted that the underlying idea of the recited steps could be performed via pen and paper or in a person's mind. Moreover, “We agree with the district court that the claimed process manipulates data to organize it in a logical way such that additional fraud tests may be performed. The mere manipulation or reorganization of data, however, does not satisfy the transformation prong.” and “Abele made clear that the basic character of a process claim drawn to an abstract idea is not changed by claiming only its performance by computers, or by claiming the process embodied in program instructions on a computer readable medium. Thus, merely claiming a software implementation of a purely mental process that could otherwise be performed without the use of a computer does not satisfy the machine prong of the machine-or-transformation test”. CyberSource, 659 F.3d 1057, 100 U.S.P.Q.2d 1492 (Fed. Cir. 2011)
Therefore, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception, because, when considered separately and in combination, the claim elements do not add significantly more to the exception. Considered separately and as an ordered combination, the claim elements do not provide an improvement to another technology or technical field; do not provide an improvement to the functioning of the computer itself; do not apply the judicial exception by use of a particular machine; do not effect a transformation or reduce a particular article to a different state or thing; and do not add a specific limitation other than what is well-understood, routine and conventional in the operation of a generic computer. 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." Id., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)). As per “A non-transitory, computer-readable storage medium having embodied thereon, computer program instructions executable by at least one processor of a program server of an enterprise resource planning (ERP) system for controlling transactions processed by said ERP system,” recitations, these limitations do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment, that is, implementation via computers." Id., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)). Limiting the claims to the particular technological environment of electronic commerce is, without more, insufficient to transform the claim into patent-eligible applications of the abstract idea at their core.
Accordingly, claim 24 is not directed to significantly more than the exception itself, and is not eligible subject matter under § 101. (Step 2B: No).
Because Applicant’s independent method claim 23 adds nothing of substance to the underlying abstract idea, they too are patent ineligi-ble under §101.
Further, independent apparatus claim 1 has been amended to include a wherein clause: “wherein said plurality of additional accounting effect engines execute a shadow-ledger validation protocol within said central data store to simulate transaction outcomes across disparate bank accounts prior to updating primary ERP modules”, which in view of the Specification can be understood as performing a check before the transaction reaches the check writing stage to ensure that the transaction does not result in negative bank funds, or to avoid a negative balance after the transaction. Said limitation has been addressed already in the 101 analysis for claim 24 in “validating” step: “and wherein said detection and said handling of said exceptions is based on bank balance funds available and a transaction type, wherein said exceptions comprise one or more of: (a) transactions that one of result in and increase negative bank balance funds available; and (b) being unable to process one of said positive receipt and said negative receipt due to an inadequacy of said bank balance funds available for processing one of said positive receipt and said negative receipt”.
Accordingly, independent apparatus claim 1 adds nothing of substance to the underlying abstract idea, is too patent ineligi-ble under §101.
Further, although the Examiner takes the steps recited in the independent claim as exemplary, the Examiner points out that limitations recited in dependent claims 2-22 and 25 further narrow the abstract idea but do not make the claims any less abstract. Dependent claims 2-22 and 25 each merely add further details of the abstract idea recited in the independent claims without including an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. These claims "add nothing of practical significance to the underlying idea," and thus do not transform the claimed abstract idea into patentable subject matter. Ultramercial, 772 F.3d at 716. Therefore, dependent claims 2-22 and 25 are also directed to non-statutory subject matter.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
1. Claims 1-25 are rejected under 35 U.S.C. 103 as being unpatentable over Manohar (US 2019/0197615 A1) in view of Hufschmid et al. (US 2017/0185955 A1).
In regard to claims 1, 23, and 24, Monahan, being a pre-grant publication of parent application 16/286,643, discloses all of the features recited in claims 1, 23 and 24, with the exception of a central data store, wherein the recited controllers communicate with each other and the ERP system only via said central data store.
Hufschmid discloses “modules 102 of system 100 are ... integrated natively with data store 104. However, modules 102 are isolated from each other, such that there is no direct communication between individual modules.” See Hufschmid, [0043]; see also, Fig. 1, illustrating data store 104 and its connections to the various modules.
It would have been obvious to one of ordinary skill in the art at the effective time of filing of the presently claimed invention to have modified Manohar to include communication between modules and the ERP system only via said central data store, as disclosed by Hufschmid, so that each module need not “hav[e] a separate, module-exclusive status field that must be managed, communicated, and cross-referenced” (See Hufschmid, [0029]). Moreover, this functionality would allow for immediate updates to all software modules and would improve any computer-implemented ERP system in the same manner. See Hufschmid, [0028].
Alternatively, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Manohar to include the recited limitations, as disclosed in Hufschmid, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).
In regard to claims 2-22 and 25, Manohar, being a pre-grant publication of parent application 16/286,643, further discloses all of the features recited in the present claims related to a bank balance funds check and negative balance control for enterprise resource planning systems as recited in claim 2-22 and 25.
2. Claims 1-25 are rejected under 35 U.S.C. 103 as being unpatentable over Manohar (US 2019/0197615 A1) in view of Applicant’s admission.
In regard to claims 1, 23, and 24, Monahan, being a pre-grant publication of parent application 16/286,643, discloses all of the features recited in claims 1, 23 and 24, without a specific recitation that the recited controllers communicate with each other and the ERP system only via a central data store.
However, Applicant admitted in the Appeal Brief filed on 08/27/2024 that the limitation of “configure a bank balance funds check controller of a control system to communicate with a standard functionality of said ERP system only via a central data store…”(emphasis added) is a standard and well-known configuration in transaction processing systems. Applicant states (page 10 of the Appeal Brief filed on 08/27/2024):
“Furthermore, a data store and component units configured for intra-system
communication through the central data store is a well-known system requirement in the art of transaction processing systems including ERP Systems from before Manohar, Publication No. US 2019/0197615 Al and Hufschmid, Publication No, US 2017/0185955 A1.
Furthermore, applicant's disclosure recited in application no. 18/164,794 is an improvement to an existing enterprise resource planning system, comprising, among other system components, a program server (1900) of the existing ERP System, which in turn comprises, among other components, at least one storage device that is configured to store a central data store therewithin. As is clear from the language of the disclosure, the program server, or an integral component thereof, namely the central data store is not something that the applicant used anew that was not already there in an existing ERP system; see the Oracle® and/or Google/yahoo search documents submitted along with this appeal brief (Appendix E (a) - E (h)). For example, Page 2 of Appendix E (a) (article published in Year 2001) states: "ERP systems are information systems that "integrate information and information-based processes within and across functional areas in an organization" (Kumar and Van Hillegersberg, 2000, p.23). The goal behind an ERP system is to integrate data and business processes from all departments and functions into a single computer system. An ERP system consolidates these processes into one software application utilizing one centralized database". Several other documents in the Appendix E also conclusively establish this fact. “
Therefore, based on Applicant’s admission as supported by the submitted by Applicant list of documents in the Appeal Brief Appendix of 08/27/2024, the Examiner concluded that the use of a central data store in transaction processing system is conventional practice, and sending transaction-related information via the central data store is old and well-known in the art of said transaction processing systems.
Therefore, it would have been obvious to one of ordinary skill in the art at the effective time of filing of the presently claimed invention to have modified Manohar to include communication between modules and the ERP system only via said central data store, as admitted by the Applicant and disclosed in provided by the Applicant documents (e.g. Oracle® and/or Google/yahoo search documents submitted along with this appeal brief (Appendix E (a) - E (h)), because it would advantageously allow to integrate data and business processes from all departments and functions into a single computer system.
In regard to claims 2-22 and 25, Manohar, being a pre-grant publication of parent application 16/286,643, further discloses all of the features recited in the present claims related to a bank balance funds check and negative balance control for enterprise resource planning systems as recited in claim 2-22 and 25.
Response to Arguments
Applicant's arguments filed 04/01/2026 have been fully considered but they are not persuasive.
Regarding “central database” limitation argument, the Examiner maintains that it appears that by filing the current CIP Appellant admits that said central database feature was not disclosed in Appellant’s Manohar, Publication No. US 2019/0197615 A1, which was abandoned before filing the current CIP. Therefore, Examiner rejected claims at issue under 35 USC 103 as being unpatentable over Appellant’s Manohar (US 2019/0197615 A1) in view of Hufschmid et al. (US 2017/0185955 A1), said Hufschmid disclosing the central database feature. It appears that said argument – whether Appellant’s Manohar, Publication No. US 2019/0197615 A1 discloses the central database feature or not should had been resolved during the prosecution of Appellant’s Manohar (US 2019/0197615 A1).
. Regarding the argument that prior art Hufschmid, Publication No, US 2017/0185955 A1 is not relevant as its teaching is already disclosed in Manohar, Publication No. US 2019/0197615 A1, the Examiner maintains that regardless of Manohar’s teaching, Hufschmid was applied to disclose the use of a central data store (modules 102 of system 100 are ... integrated natively with data store 104. However, modules 102 are isolated from each other, such that there is no direct communication between individual modules.) See Hufschmid, [0043]; see also, Fig. 1, illustrating data store 104 and its connections to the various modules.) The motivation to modify Manohar to include that communication between modules and communication between modules and the ERP system only via said central data store, as disclosed by Hufschmid, woulld be that each module need not "hav[e] a separate, module-exclusive status field that must be managed, communicated, cross-referenced."
Regarding technical improvement argument, the Examiner maintains that there are no physical improvements in the claim, like a faster processor or more efficient memory, and there is no operational improvement, like mathematical computation that improve the functioning of the computer. Applicant did not invent a new type of computer; Applicant like everyone else programs their computer to perform functions. The Supreme Court in Alice indicated that an abstract claim might be statutory if it improved another technology or the computer processing itself. Using a (programmed) computer to implement a common business practice does neither. The Federal Circuit has recognized that "an invocation of already-available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is 'well-understood, routine, [and] conventional.'" SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (alteration in original) (citing Mayo v. Prometheus, 566 U.S. 66, 73 (2012)). Apart from the instructions to implement the abstract idea, they only serve to perform well-understood functions (e.g., receiving, storing, comparing and transmitting data - see the Specification as well as Alice Corp.; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016); and Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) covering the well-known nature of these computer functions). Looking at the limitations as an ordered combination adds 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. Their collective functions merely provide conventional computer implementation
Regarding practical application argument, the Examiner maintains that there are no meaningful limitations that transform the exception into a patent eligible application. In particular, the claim recites additional elements – using a processor to perform the recited steps. However, the processor in each step is recited (or implied) at a high level of generality, i.e., as a generic processor performing a generic computer functions of processing data, such as receiving, storing, comparing, and outputting data. This generic processor limitation is nor more than mere instructions to apply the exception using a generic computer component. See MPEP 2106.05(f). The processor that performs the recited steps merely automates these steps which can be done mentally or manually. Thus, while the additional elements have and execute instructions to perform the abstract idea itself, this also does not serve to integrate the abstract idea into a practical application as it merely amounts to instructions to "apply it." The claim only manipulates abstract data elements into another form, and does not set forth improvements to another technological field or the functioning of the computer itself and, instead, uses computer elements as tools in a conventional way to improve the functioning of the abstract idea identified above.
Further, the limitation of “configure a bank balance funds check controller of a control system to communicate with a standard functionality of said ERP system only via a central data store…”(emphasis added) does not constitutes an improvement in transaction processing system technology, which is admitted by the Applicant, and represents a standard configuration of a transaction processing system. Applicant explicitly confirms this fact in Applicant’s arguments at pages 10-13 of the Appeal Brief filed on 08/27/2024. For example, from page 10 of the Appeal Brief:
“Furthermore, a data store and component units configured for intra-system
communication through the central data store is a well-known system requirement in the art of transaction processing systems including ERP Systems from before Manohar, Publication No. US 2019/0197615 Al and Hufschmid, Publication No, US 2017/0185955 A1.
Furthermore, applicant's disclosure recited in application no. 18/164,794 is an improvement to an existing enterprise resource planning system, comprising, among other system components, a program server (1900) of the existing ERP System, which in turn comprises, among other components, at least one storage device that is configured to store a central data store therewithin. As is clear from the language of the disclosure, the program server, or an integral component thereof, namely the central data store is not something that the applicant used anew that was not already there in an existing ERP system; see the Oracle® and/or Google/yahoo search documents submitted along with this appeal brief (Appendix E (a) - E (h)).”
Therefore, the limitation of “configure a bank balance funds check controller of a control system to communicate with a standard functionality of said ERP system only via a central data store…” does not constitute an improvement in transaction processing system technology, and does not establish practical application.
Thus, the recited steps do not control or improve operation of a machine (MPEP 2106.05(a)), do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and do not apply the judicial exception with, or by use a particular machine (MPEP 2106.05(b)), but, instead, require receiving, storing, comparing and outputting data.
Conclusion
The prior art search has been conducted, with no significant prior art found.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Igor Borissov whose telephone number is 571-272-6801. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor Kambiz Abdi can be reached on 571-272-6702. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IGOR N BORISSOV/Primary Examiner, Art Unit 3685 4/17/2026
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