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 .
Response to Amendment
The following is a FINAL Office action in reply to the Amendments and Arguments received on May 5, 2026.
Status of Claims
Claims 1, 8, and 15 have been amended.
Claims 1-20 are currently pending and have been examined.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on February 2, 2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 an abstract idea without significantly more.
Step 1:
Claims 1-7 are drawn to methods while claim(s) 8-20 is/are drawn to an apparatus. As such, claims 1-20 are drawn to one of the statutory categories of invention (Step 1: YES).
Step 2A - Prong One:
Claim 1 (representative of independent claim(s) 8 and 15) recites the following steps:
A method for enabling transactions, comprising
defining a plurality of states and a plurality of transitions between the states, wherein each transition between the states comprises a data item;
defining a first entity and a second entity that transact; wherein the second entity defines a choreography key which defines data format rules for transacting with the second entity and forming a choreography that follows the choreography key and that involves the first entity and the second entity;
determining the states and the transitions between the states used by the first entity; determining the states and the transitions between the states used by the second entity; determining a required state in the plurality of states, wherein the required state is not used by the first entity but is used by the second entity;
determining a required transition between the states in the plurality of transitions between the states, wherein the required transition between the states is not used by the first entity but is used by the second entity;
determining a required data item of the required transition the between states; and
These steps, under its broadest reasonable interpretation, encompass a human manually (e.g., in their mind, or using paper and pen) enabling transactions (i.e., one or more concepts performed in the human mind, such as one or more observations, evaluations, judgments, opinions), but for the recitation of generic computer components. If one or more claim limitations, under their broadest reasonable interpretation, covers performance of the limitation(s) in the mind but for the recitation of generic computer components, then it falls within the "mental processes" subject matter grouping of abstract ideas.
As such, the Examiner concludes that claim 1 recites an abstract idea (Step 2A - Prong One: YES).
Independent claim(s) 8 and 15 are determined to recite an abstract idea under the same analysis.
Step 2A - Prong Two:
This judicial exception is not integrated into a practical application. The claim(s) recite the additional elements/limitations of:
electronic transactions
disparate computer systems
a transactional system
defining a handler to handle the required data item
A system for enabling electronic transactions across disparate distributed computer systems, the system comprising: a processor; and a memory coupled to the processor, the memory comprising instructions that when executed by the processor, perform a method comprising
A computer programming product for enabling electronic transactions across disparate distributed computer systems, the computer programming product comprising a non-transitory computer readable medium storing instructions executable by a processor for
The requirement to execute the claimed steps/functions listed above is equivalent to adding the words ''apply it'' on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. This/these limitation(s) do/does not impose any meaningful limits on producing the abstract idea and therefore do/does not integrate the abstract idea into a practical application (see MPEP 2106.05(f)).
Additionally, “Step 2A - Prong 2”, the recited additional element(s) of “defining a handler to handle the required data item, wherein the handler thus defined is operable to: perform a normalization to convert an electronic transactions from the first entity into a normalized representation; and perform a particularization to convert the electronic transactions in the normalized representation into a particularized format as required by the choreography key of the second entity so as to enable the electronic transaction between the first entity and the second entity in the choreography, across disparate computer systems of the first entity and the second entity.” serve merely to generally link the use of the judicial exception to a particular technological environment or field of use. These limitations therefore do not integrate the abstract idea into a practical application (see MPEP 2106.05(h)).
The Examiner has therefore determined that the additional elements, or combination of additional elements, do not integrate the abstract idea into a practical application. Accordingly, the claim(s) is/are directed to an abstract idea (Step 2A -Prong Two: NO).
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above in "Step 2A - Prong 2", the requirement to execute the claimed steps/functions listed above is equivalent to adding the words "apply it" on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations therefore do not qualify as "significantly more" (see MPEP 2106.05 (f)).
As discussed above in “Step 2A - Prong 2”, the recited additional element(s) of “defining a handler to handle the required data item, wherein the handler thus defined is operable to: convert an electronic transactions from the first entity into a normalized representation; and convert the electronic transactions in the normalized representation into a particularized format as required by the choreography key of the second entity so as to enable the electronic transaction between the first entity and the second entity” serve merely to generally link the use of the judicial exception to a particular technological environment or field of use. These limitations therefore do not integrate the abstract idea into a practical application (see MPEP 2106.05(h)).
The Examiner has therefore determined that no additional element, or combination of additional claims elements is/are sufficient to ensure the claim(s) amount to significantly more than the abstract idea identified above (Step 2B: NO).
Regarding Dependent Claims:
Dependent claims 4-5, 11-12 and 18 fail to include any additional elements and are further part of the abstract idea as identified by the Examiner.
Dependent claims 2,3, 6, 7, 9, 10, 13, 14, 16, 17, 19 and 20 include additional limitations that are part of the abstract idea except for:
the transactional system
a handler
an application programming interface function or an input from a user interface component
The additional elements of the dependent claims are equivalent to adding the words ''apply it'' on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. Even in combination, these additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. The claims are ineligible.
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. 20100083084 Creating electronic data interchange relationships: See [0022] “ a service and method for facilitating the provisioning of an electronic document exchange relationship between a pair of entities includes providing a template for specifying values for a set of document exchange parameters and for storing the values.”
Response to Arguments
Applicant's arguments with respect to the rejection under 35 USC 101 have been fully considered but they are not persuasive.
Applicant argues: Applicant respectfully submits that the "additional limitations" of the claim cannot be parsed out and must be considered as a whole in evaluating whether the claim, as a whole with the additional limitations included, qualifies as patent-eligible subject matter.
Examiner respectfully disagrees and maintains the previous rejection. The fact that the Examiner parsed the abstract concept from additional elements for purposes of the multi-step analysis does not constitute error but in fact follows the analysis set forth by the Supreme Court in Alice: if the claim is “directed to” an abstract idea, Examiner turns to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation fail[s] to transform that abstract idea into a patent-eligible invention.” Id
It should be noted that the generically recited computer components add to patent eligibility only to the extent that it links the method to a technological environment, which does not, in and of itself, render the claim any less abstract.
Applicant argues: Applicant respectfully disagrees and submits that claim 1 does not merely apply an alleged abstract idea "using some unspecified, generic computer and/or computing elements" because no prior art rejection is issued against claim 1.
Examiner respectfully disagrees. Without reference to the currently pending claims, even if a claim were found to contain novel elements, such a conclusion would not automatically transform the claim into patentable subject matter. Just as it is possible for an abstract idea or other judicial exception to be novel while still remaining a judicial exception, determination of novelty under 35 U.S.C. 102 and 103 are a separate inquiry than determinations of patent subject matter eligibility under 35 U.S.C. 101. The examiner would note issues of novelty are separate and distinct from issues of patent eligibility, and those issues should not be conflated.
Applicant argues: It appears that the "abstract idea" alleged by the Examiner is "a human manually (e.g., in their mind, or using paper and pen) enabling transactions." However, this alleged "abstract idea" is neither described in Applicant's specification nor recited in Applicant's claims.
Examiner respectfully disagrees. The first sentence of the instant claims recites “A method for enabling electronic transactions across disparate distributed computer systems, comprising…” As stated before, it is appropriate to parse out the claim for further examination under Step 2A- Prong 2.
Examiner respectfully disagrees. The examiner reiterates from the 101 rejection above that the limitations of " defining a plurality of states… and a plurality of transitions between the states... defining a first entity and a second entity..., determining the states and the transitions..., determining a required state in the plurality of states,... determining a required transition between the states…, determining a required data item of the required transition between the states…) represent a process that under broadest reasonable interpretation, covers performance of the limitations in the human mind or by a human using a pen and paper, but for the recitation of generic computer components. These claimed steps relate to concepts that merely involve observing, evaluating and judging data. This concept falls under the "Mental Processes" abstract idea grouping. There is nothing that precludes these steps from being performed in the human mind, and there is nothing limiting or excluding regarding the real-time implementation, as observations and judgements occur in real-time all the time. As such, the examiner is not persuaded by applicant's argument.
Applicant argues: Applicant already pointed out that the Examiner's statements did not meet the requirement for the broadest reasonable interpretation standard. Notice two words used by the Examiner in relying on the "broadest reasonable interpretation" - "encompass" and "covers" - both of which extend beyond what could be considered as the "broadest reasonable interpretation" in light of Applicant's specification.
Examiner respectfully disagrees with Applicant’s argument and maintains the previous response. As explained in the rejection, additional elements are parsed out of the claim language and considered during step 2A prong two and step 2B of the analysis. Parsing out the additional elements during step 2A prong one is proper, and does not mean the Examiner ignored any limitations. The parsed out language that is examined in Step 2A - Prong One merely outlines determining steps, as the converting step is considered an additional element. Without the additional elements the steps describe the abstract idea of business relations of data exchange as a high level that is void of technology.
Applicant argues: Applicant respectfully requests clarifications on how the Examiner's application of the broadest reasonable interpretation standard complies with the precedential decision by the Federal Circuit Court in In re Smith International, Inc. (871 F.3d 1375 (2017) in which the Federal Circuit Court explicitly explained the proper inquiry in light of the broadest reasonable interpretation standard: The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is "consistent with the specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (citation and internal quotation marks omitted); see also In re Suitco Surface, 603 F.3d 1255, 1259--60 (Fed. Cir. 2010).
Examiner respectfully disagrees. Examiner notes that as stated in the updated 101 rejection above, the particular “defining” and “determining…" features of the claims are SO broad that they could reasonably be done mentally in the human mind as part of an observation, evaluation, judgement, or opinion. There is nothing in the claim language nor in the specification that would prohibit such an implementation. In fact, there is no limiting technology tied to these features at all other a generic memory and processor. Therefore, contrary to applicant's assertion, these claimed features can and should be deemed part of a recited abstract idea categorized in Mental Process. Therefore, the argument is not persuasive.
Applicant argues: Applicant's specification does not describe that the steps recited in claim 1 "encompass" a human manually enabling transactions.
As previously stated, the technical elements are evaluated in Step 2A- Prong two, as is proper and the claims were found to be SO broad that they could reasonably be done mentally in the human mind as part of an observation, evaluation, judgement, or opinion. There is nothing in the claim language nor in the specification that would prohibit such an implementation. In fact, there is no limiting technology tied to these features at all other a generic memory and processor. Therefore, contrary to applicant's assertion, these claimed features can and should be deemed part of a recited abstract idea categorized in Mental Process. Therefore, the argument is not persuasive.
Applicant argues: No human mind can enable anything "across disparate distributed computer systems," even with the aid of pen and paper.
Examiner agrees. Applicant has pointed out a feature that was evaluated under Step 2A- Prong 2 and found to be mere instructions to implement the abstract idea on a generic computer.
Applicant argues: Applicant has provided explicit definitions for claim terms, including "choreography," "choreography key," "transaction," "handler," etc. For example, a "choreography key" is a set of rules that must be followed by actors (e.g., entities and/or avatars) involved in a choreography.
Respectfully, a set of rules is abstract and the use of avatars merely generally link the use of the judicial exception to a particular technological environment or field of use. The use of the handler was evaluated using the same rationale. It was not included as a part of the abstract idea, however under further evaluation was found to generally link the use of the judicial exception to a particular technological environment or field of use.
Applicant argues: The Examiner argued that "a human can receive the data and use pen and paper to convert information to a normalize representation." However, what is the use of such a "normalize representation" created by a human using pen and paper? No record evidence shows any human needing or performing a conversion that converts "an electronic transaction from the first entity into a normalized representation."
Respectfully, the normalized step was evaluated under Step 2A- Prong two as an additional element and was found to generally link the use of the judicial exception to a particular technological environment or field of use.
Applicant argues: Example 42 from the USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance outlines a "Method for Transmission of Notifications When Medical Records Are Updated". The Examiner pointed out that "[the] instant claims converting step is not the same as the example." This is correct as no prior art is cited against the instant claims, including the converting steps. However, the legal holding of this case still applies. Example 42 shows that claims focused on the specific manner of data transformation (e.g., specific technology-based automation) are more likely to be eligible, whereas simple, generic data gathering is not.
Examiner respectfully disagrees. The claims of Examiner 42 are not at all like the instant claims. In Example 42 the claims are directed to converting information into the normalized representation. The combination of additional elements in the Example claim is what makes the claim patent eligible and more particularly it provided a specific improvement . The instant claims converting step is not do not provide enough information to prove that this is a technical solution.
With reference to no prior art being applied… The examiner would note issues of novelty are separate and distinct from issues of patent eligibility, and those issues should not be conflated.
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 RASHIDA R SHORTER whose telephone number is (571)272-9345. The examiner can normally be reached Monday- Friday from 9am- 530pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jessica Lemieux can be reached at (571) 270-3445. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RASHIDA R SHORTER/Primary Examiner, Art Unit 3626
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