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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 23, 2025 has been entered.
Status of Claims
Claims 1, 8, and 15 have been amended.
Claims 1-20 are currently pending and have been examined.
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;
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:
a transactional system
defining a handler to handle the required data item
a system for enabling transactions, comprising: a processor; and a memory coupled to the processor, the memory comprising instructions that when executed by the processor
a computer programming product comprising a non-transitory computer readable medium storing instructions executable by a processor for enabling transactions
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: 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 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. 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 the Examiner's statement does not meet the requirement for the broadest reasonable interpretation standard because Applicant's specification does not describe "enabling transactions" as amounting to "commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)" or "managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)" as alleged by the Examiner.
Examiner respectfully disagrees with Applicant’s argument. 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: Thus, the claimed solution is necessarily rooted in computer automation technology to overcome a problem specifically arising in the realm of computer networks. Such claims amount to significantly more than any abstract idea and are patentable subject matter. DOR Holdings, LLC v. Hotels.com L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014).
In combination, the steps disclose a sequence of operations that include defining data and determining states of data. The only arguable inventive aspect of this set of steps is the particulars of the information processed. Apart from such particulars as is known of those of ordinary skill , the claimed combination of operations amounts to adding the words “apply it” using generic, routine and conventional sequence of generic, routine and conventional operations of a computer system.
Examiner maintains claim 1 amounts to nothing significantly more than instructions to apply the abstract idea using some unspecified, generic computer and/or computing elements. That is not enough to transform an abstract idea into a patent eligible invention. Considered as an ordered combination, the computer components of claim 1 adds nothing that is not already present when the steps are considered separately.
Applicant argues: Examiner has not met the burden of showing "adding the words "apply it" using generic, routine and conventional sequence of generic, routine and conventional operations of a computer system" would enable an electronic transaction between a first and second entities when the states of these entities transition differently and have different requirements - e.g., a required state of states used by the first and second entities is "not used by the first entity but is used by the second entity" and a required transition between the states is "not used by the first entity but is used by the second entity," as recited in claim 1.
Examiner respectfully disagrees. The claims do not need to specifically state “apply it” to be considered routine and conventional sequence of generic, routine and conventional operations of a computer system. This generic system with processor and memory coupled to the processor limitation is no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Applicant argues: Applicant first points out that the Examiner still did not take Official Notice or provide documentary evidence or technical support that proves that the steps expressly recite in claim 1 could actually be "performed in the human mind." … claim 1 does not recite any claim limitation that could reasonably be interpreted in light of the as-filed specification as something that "can practically be performed in the human mind."
Examiner respectfully disagrees and maintains the previous response. The evidence was cited and repeated for Applicant’s convenience by citing the Manual of Patent Examining Procedure (MPEP). Examiner directs Applicant to MPEP 2106.04 (a)(2) III A. “claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations [determining/ defining], judgments, and opinions. “The courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75, 674 (noting that the claimed "conversion of [binary-coded decimal] numerals to pure binary numerals can be done mentally," i.e., "as a person would do it by head and hand.")…” See further “Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. As the Federal Circuit has explained, "[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind." Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (Fed. Cir. 2016) (holding that computer-implemented method for "anonymous loan shopping" was an abstract idea because it could be "performed by humans without a computer").
Applicant’s amended claims focuses on the choreographic key being the basis for converting the electronic transaction. The specification in as-filed paragraph [0062] provides disclosure that is not technical. The choreography keys are described as rules. The claims remain overly broad and lacking in technical disclosure. For example, Examiner could interpret the claims to have a choreography key or rule that states that transaction must be completed using a first name last name field assignment. If the transaction comes in as last name, first name, the converting could merely be switching fields of information in order to process that transaction. In other words, a human can receive the data and use pen and paper to convert information to a normalize representation.
Applicant argues: Applicant respectfully submits that when the additional elements are properly analyzed in consideration of the claim as a whole, the claim is eligible for patent under Step 2A… To this end, claims 1, 8, and 15 are further amended herein in view of Subject Matter Eligibility (SME) Example 42 with support from the specification.
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 nonstandard updated information into the standardized format. The combination of additional elements is what makes the claim patent eligible and more particularly it provided a specific improvement . The instant claims converting step is not the same as the example and the claims do not provide enough information to prove that this is a technical solution. There are no details about how the converting is an improvement.
Conclusion
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RASHIDA R SHORTER/Primary Examiner, Art Unit 3626