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 .
DETAILED ACTION
This communication is in response to Applicant’s amendment filed 18 June 2026. Claims 1, 8 and 15 have been amended. Claims 1, 5-8, 12-15 and 18-20 are pending. The rejection of claims 1, 5-8, 12-15 and 18-20 under 35 USC § 101 directed to non-statutory subject matter is maintained. The rejections are as stated below.
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, 5-8, 12-15 and 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. In particular, claims are directed to a judicial exception (abstract idea) without significantly more. Examiner incorporates the rejection and response to arguments from the previous office action mailed on 25 March 2026. Further:
Applicant amended the claims to include,
automatically adding by execution of the auto-provisioning workflow by an auto-provisioning workflow module the co-branded card information data as a payment mechanism on the co-branded partner without customer initiation, wherein the auto-provisioning workflow orchestrates transmission and processing of the co-branded card information data across one or more distributed computing systems without modification of executable code, wherein the auto-provisioning workflow module is platform and language agnostic that allows orchestration and passing of data through various components to output a desired result, wherein the auto-provisioning workflow module is independently tuned or modified without affecting configuration or data files, wherein the configuration or data files are written using JSON, or XML or YAML, wherein the method for executing the auto-provisioning workflow is implemented using a hardware computer system that executes software programs including distributed processing. component/object distributed processing, and an operation mode having parallel processing capabilities, wherein the method for executing the auto-provisioning workflow is executed in a cloud- based computing environment including execution within virtual machines or virtual servers, and wherein virtual machines are managed or supervised by a hypervisor, and wherein the auto-provisioning workflow module executes the workflow in a distributed computing environment by decoupling the co-branded partner computing device and the co- branded card issuer computing device through asynchronous API-based message processing, thereby reducing inter-system communication latency and minimizing synchronous network calls.
As mentioned previously, the claimed method simply describes series of steps for processing an auto-provisioning workflow for transmitting customer credit co-branded card information to a partner without customer initiation. These limitations, as drafted, are processes that, under its broadest reasonable interpretation, covers performances and concepts relating to fundamental economic principles or practices that enhance customer experience with credit card transactions (see Priceplay.com, Inc. v. AOL Advert., Inc., 83 F. Supp. 3d 577, 580 (D. Del. 2015), aff'd, 627 F. App’x 925 (Fed. Cir. 2016) (Rule 36)), and, therefore, fall within the certain methods of organizing human activity category of the USPTO’s Guidance. See 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14. These limitations are directed to an abstract idea because they are managing transactions and/or activities (provisioning a co-branded card) that fall within the enumerated group of “certain methods of organizing human activity” in the 2019 PEG.
Next, the claim is analyzed to determine if it is integrated into a practical application. The recited judicial exception may be integrated into a practical application by identifying whether there are any additional elements recited in the claim beyond the judicial exception and evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. The claim recites additional limitation of a processor and a memory (see claim 8), partner computing device, an issuer computing device, a communication network, an application programming interface, a database, configuration data that is independent of platform and programming language, a hardware computer system that executes software programs including distributed processing. component/object distributed processing, and an operation mode having parallel processing capabilities, wherein the method for executing the auto-provisioning workflow is executed in a cloud- based computing environment including execution within virtual machines or virtual servers, and wherein virtual machines are managed or supervised by a hypervisor, and wherein the auto-provisioning workflow module executes the workflow in a distributed computing environment to perform the steps. The processor in the steps is recited at a high level of generality, i.e., as a generic processor performing a generic computer function of processing data. This generic processor limitations are no more than mere instructions to apply the exception using generic computer component. Merely adding generic computer components to perform abstract ideas does not integrate those ideas into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 55 (identifying “merely includ[ing] instructions to implement an abstract idea on a computer” as an example of when an abstract idea has not been integrated into a practical application). Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to the abstract idea.
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer (using the processor as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the computer at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at or provide an inventive concept.
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea. Therefore, the claim is not patent eligible.
The analysis above applies to the statutory category of invention of claims 1, 8 and 15. Furthermore, the dependent claims 5-7, 12-14 and 18-20 do not resolve the issues raised in the independent claims.
The dependent claims do not add limitations that meaningfully limit the abstract idea. Dependent claims 5-7, 12-14 and 18-20, recite additional limitations and steps. However, as mentioned above with respect to the independent claims, the claimed limitations are no more than mere instructions to apply the exception using generic computer component. Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to the abstract idea.
These claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer. The claim merely amounts to the application or instructions to apply the abstract idea on a device, and is considered to amount to nothing more than requiring a generic device to merely carry out the abstract idea itself.
The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as integrating the abstract idea into a practical application or amounts to significantly more than the abstract idea itself.
Accordingly, claims 1, 5-8, 12-15 and 18-20 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Response to Arguments
Applicants’ arguments with respect to 35 USC § 101 directed to non-statutory subject matter been fully considered but they are not persuasive.
Examiner incorporates herein the response to arguments from the previous office actions.
Examiner respectfully disagrees. Claims 1, 5-8, 12-15 and 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Applicant amended the independent claims to include the above-mentioned limitations. However, the concept is directed to processing an auto-provisioning workflow for transmitting customer credit co-branded card information to a partner which does not make it less abstract.
The newly added additional elements (distributed systems, cloud, hypervisor, JSON/YAML, platform-agnostic orchestration), even when limited to a particular context does not change its character as information or data and therefore remain within the realm of the abstract idea. The claim remains centered on the business result (automatically provisioning co-branded card data without customer initiation). The technical features added are mostly functional and result-oriented). Applicant specification has no mention of “thereby reducing inter-system communication latency and minimizing synchronous network calls”. Even if the specification supports it, it is a clause of intended result and not a technical solution nor amount to significantly more.
Examiner respectfully disagrees, the claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem, the auto-provisioning workflow, automation of a manual process (manually adding a card to a wallet) and the configuration of data that is independent of platform and programming language are not directed to any specific improvement in technology (no technical solution to a technical problem). Also, limiting the use of an abstract idea “‘to a particular technological environment’ does not confer patent eligibility as this cannot be considered an improvement to computer or technology and so cannot be “significantly more.
There is no specific improvement to how a computer itself operates, a particular solution to a computer problem more than just applying the idea on a computer. Platform-agnostic orchestration, using files in JSON/XML/YAML, and asynchronous API-based messaging processing are well-known, conventional techniques and do not transform the abstract idea.
Under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to 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 more than a drafting effort designed to monopolize the exception. Limitations that are not indicative of integration into a practical application are those that are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea.-see MPEP 2106.05(f). The instant claims do not attempt to solve an unconventional technological solution. Using the processor as a tool to implement the abstract idea and the way the information is processed and displayed does not make it less abstract. The claimed use of computer elements recited at a high level of generality is an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
As mentioned in the previous office action, in the instant case, the amended limitations of the claims do not result in computer functionality improvement or technical/technology improvement when the underlying abstract idea is implemented using technology. The amendments to the claims only further define the data being used however, a specific abstract idea is still an abstract idea. All the features in the Applicant’s claims can at best be considered an improvement in the abstract idea. The advantages over conventional systems are directed towards improving the abstract idea. Hence, the additional elements in the claims are all generic components suitably programmed to perform their respective functions. The additional elements are recited at a high level of generality and under their broadest reasonable interpretation comprises a generic computer arrangement. The presence of a generic computer arrangement is nothing more than mere instructions to implement the abstract idea on a computer (MPEP 2106.05(f)). Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Hence, the claims as a whole are not integrated into a practical application.
The claims as a whole do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are generic computer components claimed to perform their basic functions. The processor is a general-purpose processor that performs general-purpose functions. The recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer (using the processor as a tool to implement the abstract idea). Taking the additional elements individually and in combination, each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The claim does not amount to significantly more than the abstract idea itself. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply a generic recitation of a computer processor performing its generic computer functions. Accordingly, claims are ineligible.
Lastly, dependent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer. The claim merely amounts to the application or instructions to apply the abstract idea on a processor, and is considered to amount to nothing more than requiring a generic processor to merely carry out the abstract idea itself.
For these reasons the rejection under 35 USC § 101 directed to non-statutory subject matter set forth in this office action is maintained.
Conclusion
Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hani Kazimi whose telephone number is (571) 272-6745. The examiner can normally be reached Monday-Friday from 8:30 AM to 5:00 PM.
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Respectfully Submitted
/HANI M KAZIMI/
Primary Examiner, Art Unit 3691
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