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 (RCE) 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/11/2025 has been entered.
Application Status
This Office Action is in response to RCE received 12/11/2025.
Claims 21, 28, and 35 have been amended.
Claims 21-40 are pending and have been examined.
This action is non-final.
Claim Rejections
Claims 21-40 are rejected under 35 U.S.C. §112(a) for failing to comply with the written description requirement, specifically with respect to the limitation “dynamically translating … based on the plurality of likelihood of authorization acceptances” recited within independent claims 21, 28, and 35.
Claims 21-40 remain rejected under 35 U.S.C. §101 for being directed to an abstract idea without significantly more.
Acknowledgement of Issues Raised by Applicant
Applicant’s arguments with respect to the 35 U.S.C. § 101 rejection of claims 21-40 have been fully considered but are not persuasive; see “Response to Arguments” section below.
Response to Arguments
35 U.S.C. § 101
With respect to the 35 U.S.C. § 101 rejections, examiner notes Applicant asserts the claims either integrate the judicial exception into a practical application or amount to significantly more under either step 2A prong II or step 2B, as they maintain the claims provide a technological solution to a technological problem, particularly in light of Ex parte Guillaume Desjardins1. The Examiner respectfully disagrees and maintains the claims are not patent eligible under 35 U.S.C. §101 (analysis continues below).
Examiner’s Response to Step 2A Prong II Arguments
Examiner respectfully disagrees with Applicant arguments2 that the claims are directed to an improvement to the functioning of a computer, or another technology or technical field3 and integrate the judicial exception into a practical application for the following reasons:
Applicant’s remarks drawn to the Desjardins decision and corresponding USPTO 12/05/2025 memorandum are not persuasive, as neither the claims nor the Alice/Mayo analyses of Desjardins are analogous to the instant claims for at least the following reasons:
The previous rejection for the instant claims did not assert mathematical concepts as an abstract idea under step 2A Prong I, unlike the Desjardins case. Furthermore, Desjardins does not disclose any commercial interactions, unlike the instant case. I.e., Desjardins does not apply, even at step 2A Prong I of Alice/Mayo analysis. The only notable overlap between Desjardins and the instant claims applicable with respect to step 2A Prong I of Alice/Mayo analysis is that both sets of claims recite an abstract idea.
The eligibility rationale relied upon in Desjardins included a determination that the claims provided a technological solution to a technological problem at step 2A Prong II4, where the technological problem of “catastrophic forgetting” in continual learning systems was directly addressed5; the claims of Desjardins reflected a particular training strategy that allows the model to preserve performance on earlier tasks learned, even as it learns new ones6. Conversely, the instant claims do not indicate an improvement to any technology or technical field, as previously maintained and explained further below in the 101 rejections – the examiner respectfully maintains the instant claims provide a technical solution to an abstract business problem – see MPEP § 2106.05(a): “[I]t is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology”. Unlike Desjardins, Examiner respectfully fails to see as to how the instant claim limitations provide any particular technological solution to a technological problem, as the instant claims do not reflect any technological solution addressing technological problems concerned with the functioning of a computer or to any other technology or technical field – what is addressed is how to determine a least cost route for a transaction, without any technical details sufficient to indicate an improvement to the functioning of a computer, or to any other technology or technical field. What is purportedly improved is the business method, as the steps determine a least cost route for a transaction, and it is only achieved by merely incorporating a machine learning model and computer hardware at a high degree of generality, so as to carry out the abstract idea recited (MPEP §2106.05(f)); this is not indicative of a technological solution to a technological problem, unlike the technological solution to the technological problem of catastrophic forgetting that the claims of Desjardins addressed and solved. Instead, Applicant’s claims are indicative of a technological solution to an abstract business problem.
The claim limitations of Desjardins included sufficient details to indicate a technological solution to a technological problem. Examiner respectfully disagrees with Applicant’s assessment that the claims provide any specific ordered combination of elements indicative of a technological solution to a technological problem. Rather, examiner respectfully maintains the additional elements are merely applied, and merely limit the use of the abstract idea to a particular technological environment – even the ordered combination of additional elements does not point to a technological solution to a technological problem.
Applicant’s arguments drawn to “reduced … latency across networks …” is cursory and do not provide any underlying reasoning or rationale rooted in the additional elements themselves. When a claim directed to an abstract idea contains no restriction on how an asserted improvement is accomplished and the asserted improvement is not described in the claim, then the claim does not become patent eligible – See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 131.
Accordingly, for the reasons identified above, examiner respectfully disagrees with Applicant’s arguments drawn to Desjardins and corresponding USPTO 12/05/2025 memorandum.
With respect to applicant’s arguments drawn to the claimed method and system being done in “…real-time…”, and the claim limitations including additional element “…dynamically…”, they do no more than indicate the abstract business method is automated. Merely automating the abstract process to try to make the process faster or more efficient does not integrate the abstract idea into a practical application or amount to significantly more.
The additional elements “…(payment) networks…”, “…trained machine learning…”, and “…(transaction routing) table…” of claim 1, the additional elements “A device comprising: a memory configured to store instructions; and one or more processors configured to execute the instructions to perform operations comprising:”, “…networks…”, “…trained machine learning…”, “…dynamically…” and “…(transaction routing) table…” of claim 28, and the additional elements “A non-transitory computer-readable medium storing instructions that, when executed by one or more processors of a device, cause the one or more processors to perform operations comprising:”, “…networks…”, “…trained machine learning…”, and “…(transaction routing) table…” of claim 35 amount to no more than mere instructions to implement the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05 (f), (h)), even when considering each claim’s additional elements both separately and as an ordered combination.
An improvement in the abstract idea itself is not a technological solution to a technological problem, and the “…predicting a plurality of likelihood of authorization acceptances…” referenced in applicant remarks refers to the abstract idea recited; an improvement to the abstract idea itself is not a technological solution to a technological problem – see MPEP 2106.05(a): “… it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology”. Hence, as the purported improvements discussed in ¶¶33-35, 72 of Applicant specification are squarely drawn to abstract financial and/or business considerations, it is not indicative of a technological solution to a technological problem (MPEP § 2106.05(a)) under Alice/Mayo analysis, and, accordingly, does not point to the additional elements integrating the judicial exception into a practical application.
Accordingly, for the reasons provided above, as well as in the 101 rejections further below, the Examiner respectfully maintains that the claims do not integrate the judicial exception into a practical application (Step 2A Prong II of Alice/Mayo Test: NO, the additional elements do not integrate the judicial exception into a practical application), as the focus of the claims is not an improvement in computers as tools, but rather on an abstract idea of least-cost transaction routing that uses computers as tools. Considered both separately and as an ordered combination, the additional elements of the claims do no more than represent computers performing functions that correspond to (,i.e., implement,) the acts of the abstract least-cost transaction routing within a particular technological environment, and do not provide details such that one of ordinary skill in the art would recognize the claims as reflecting an improvement to the functioning of a computer or any other technology or technical field.
Accordingly, in view of the analysis performed with respect to steps 2A Prong I and 2A Prong II, the examiner respectfully maintains the claims are directed to an abstract idea under step 2A (Step 2A: The claims are directed to an abstract idea of least-cost transaction routing).
Examiner’s Response to Step 2B Arguments
Examiner respectfully disagrees with Applicant’s arguments drawn to step 2B and respectfully maintains the claims do not provide an inventive concept for the following reasons:
The same reasons identified in the examiner’s step 2A Prong II analysis and subsequent supporting rationales (in the section immediately above) are generally applicable to step 2B of Alice/Mayo analysis, and still indicate the additional elements as being merely applied and generally limiting the use of the abstract idea to a particular technological environment, absent of any particular technological solution to a technological problem. See MPEP § 2106.05: “Although the conclusion of whether a claim is eligible at Step 2B requires that all relevant considerations be evaluated, most of these considerations were already evaluated in Step 2A Prong Two.”
The well-understood, routine, and conventional rationale must pertain to involvement of the additional elements / components outside the abstract idea – not the abstract idea itself. see TLI Communications LLC v. AV Automotive L.L.C. 823 F.3d 607, 613, 118 USPQ2d 1744, 1748, underline and bold emphasis added: “It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. Rather, the components must involve more than performance of “wellunderstood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294)”. I.e., The details of the abstract idea indicated by Applicant in remarks are an insufficient basis for patent eligibility under the “well-understood, routine, and conventional” rationale – see also the following case law and MPEP cites:
Synopsys, 839 F.3d at 1151:
“a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty” (emphasis omitted).
BSG Tech LLC vs. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018):
“It has been clear since Alice that a Claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept”.
MPEP § 2106.05:
“…An inventive concept "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself." … Instead, an "inventive concept" is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself. Alice Corp., 573 U.S. at 27-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966).”.
Case law makes clear that a lack of an obviousness rejection under 35 U.S.C. 103 does not confer patent eligibility to an abstract idea under 35 U.S.C. 101. See Synopsys, 839 F.3d at 1151 (“a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty”). See also MPEP § 2106.05 (“Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101”);
Accordingly, when considered both separately and as an ordered combination, none of the elements of the claims add significantly more to the abstract idea itself (i.e., an inventive concept), as the manner by which the claims’ additional elements are used is indistinguishable from mere addition of general-purpose computers added post-hoc to the abstract idea recited. The claims merely limit the use of the abstract idea to a particular technological environment by merely invoking computers as tools, and do not provide any particular improvement to the functioning of a computer, or to any other technology or technical field7 (MPEP §§ 2106.05 (a), (f), (h), 2106.04(d)(1)). Merely employing computers as tools to automate and/or implement the abstract idea cannot provide significantly more than the judicial exception itself, as indicated by BSG Tech LLC vs. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018); (Step 2B: No, the claims do not amount to significantly more than the judicial exception).
Hence, for the reasons listed above, as well as the reasons provided in 101 rejections further below, the Examiner respectfully maintains the claims do not provide an inventive concept8 under step 2B of Alice/Mayo analysis, and maintains the 35 U.S.C. §101 rejections. The claims are not patent eligible under 35 U.S.C. §101, when analyzed under the Alice/Mayo test.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-40 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The aforementioned claims recite (underline emphasis added): “…dynamically translating message formats and transmission parameters between the merchant and the one or more eligible acquirer processors based on the plurality of likelihood of authorization acceptances;”. Despite the specification disclosing determinations of authorization acceptances (¶66) and translations between various messaging formats (¶67), the specification does not describe any dynamic translation occurring “based on the plurality of likelihood of authorization acceptances” – the basis for translation described within the specification is with respect to what formats devices require for communication.
Claims 22-27, 29-34, and 35-40 are rejected by virtue of dependency.
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 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
As an initial matter, the relevant test is the Alice/Mayo test9. The following analysis provided in this section results from the instant application’s claims being examined within the scope of the Alice/Mayo test framework.
With respect Step 1 of Alice/Mayo analysis, each of the claims are either directed to a method, system, or product of manufacture. Therefore, each of the claims are directed to one of the four statutory categories of invention (Step 1 of Alice/Mayo Test: YES).
In light of step 2A Alice/Mayo analysis performed on the instant claims10, claims 21-40 have been determined to be directed to an abstract idea of least-cost transaction routing. The rationales for the aforementioned determination are explained further below.
Prior to step 2A Prong I Alice/Mayo analysis, examiner notes they have identified method claim 21 as the claim that represents the claimed invention for analysis under step 2A Prong I, as method claim 21 is analogous to claims 28 and 35 under step 2A Prong I analysis. I.e., the step 2A Prong I Alice/Mayo rationales applied to claim 21 (below) are similarly applied to claims 28 and 35, mutatis mutandis.
When analyzed under prong I of revised step 2A, claims 21-40 each recite a method of organizing human activity,11 because independent claims 21, 28, and 35 each recite claim limitations drawn to:
“21. A method comprising:
receiving transaction-related information from a merchant;
extracting transaction routing criteria from the transaction-related information; identifying one or more eligible payment … [paths] based on the transaction routing criteria;
identifying one or more eligible acquirer processors12 based on the transaction routing criteria;
applying a … model for predicting a plurality of likelihood of authorization acceptances for a plurality of combinations of the one or more acquirer processors and the one or more eligible payment… [providers], wherein the … model determines factor weights that are applied to one or more parameters of one or more transactions for generating the prediction;
… translating message formats and transmission parameters between the merchant and the one or more eligible acquirer processors based on the plurality of likelihood of authorization acceptances;
determining a least cost combination among the plurality of combinations based on the plurality of likelihood of authorization acceptances;
updating a transaction routing … according to the least cost combination; and
routing a transaction from the merchant according to the updated transaction routing …”
Under broadest reasonable interpretation consistent with the specification, these are recitations of fundamental economic practices of performing least-cost transaction routing, including preliminary data gathering steps of (A) receiving transaction-related information from a merchant, (B) extracting transaction routing criteria from the transaction-related, (C), identifying one or more eligible acquirer processors based on the transaction routing criteria, (D) applying a model for predicting a plurality of likelihood of authorization acceptances, (E) translating message formats and transmission parameters between the merchant and the one or more eligible acquirer processors based on the plurality of likelihood of authorization acceptances (F) determining a least cost combination among a plurality of possible paths, (G) updating the transaction routing to be used, and (H) routing the transaction from the merchant according to the updated transaction routing Thus, the claims recite an abstract idea (Step 2A Prong I: Yes, the claims recite an abstract idea).
This judicial exception recited in independent claims 21, 28, and 35 is not integrated into a practical application because, when analyzed under prong II of revised step 2A of the Alice/Mayo test:
The additional elements “…(payment) networks…”, “…trained machine learning…”, “…dynamically…”, and “…(transaction routing) table…” of claim 1, the additional elements “A device comprising: a memory configured to store instructions; and one or more processors configured to execute the instructions to perform operations comprising:”, “…networks…”, “…trained machine learning…”, “…dynamically…”, and “…(transaction routing) table…” of claim 28, and the additional elements “A non-transitory computer-readable medium storing instructions that, when executed by one or more processors of a device, cause the one or more processors to perform operations comprising:”, “…networks…”, “…trained machine learning…”, “…dynamically…”, and “…(transaction routing) table…” of claim 35 amount to no more than mere instructions to implement the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05 (f), (h)), even when considering each claim’s additional elements both separately and as an ordered combination. See Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014): "… Stating an abstract idea "while adding the words ‘apply it’ " is not enough for patent eligibility. … Nor is limiting the use of an abstract idea " ‘to a particular technological environment.’ … Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result”.
The Applicant’s claims fail to provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement to the functioning of a computer or to any other technology or technical field (MPEP §§2106.04(d)(1) & 2106.05(a)). For example, the instant claims do not include any specific technical details as to how the claimed machine learning model is specifically employed “…for predicting a plurality of likelihood of authorization acceptances for a plurality of combinations of the one or more acquirer processors and the one or more eligible payment networks, …” beyond merely stating “… applying a trained machine learning model…wherein the trained machine learning model determines factor weights that are applied to one or more parameters of one or more transactions for generating the prediction;”. This is indicative of the machine learning being merely applied, and further supports the stance that the claims are merely limiting the use of the abstract idea to a particular technological environment.
An improvement in the abstract idea itself is not a technological solution to a technological problem (MPEP §§ 2106.05 (a), (a) II). See the following:
MPEP 2106.05(a) II: “… it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology … Merely adding generic computer components to perform the method is not sufficient.”
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015): “... our precedent is clear that merely adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea.”
Customedia Techs. V. Dish Network Corp., 951 F.3d 1359, (Fed. Cir. 2020): “We have held that ‘claiming the improved speed or efficiency inherent with applying the abstract idea on a computer’ was insufficient to render the claims patent eligible as an improvement to computer functionality”.
In light of the above rationales provided for step 2A Prong II analysis, the Examiner respectfully submits the focus of the claims is not on an improvement in computers as tools, but rather on an abstract idea that uses computers as tools. Considered both separately and as an ordered combination, the additional elements of the independent claims do not integrate the abstract idea into a practical application, as they do no more than represent computers performing functions that correspond to (,i.e., implement,) the acts of the abstract least-cost transaction routing, and do not provide details such that one of ordinary skill in the art would recognize the claims as reflecting an improvement to the functioning of a computer or any other technology or technical field. (Step 2A Prong II of Alice/Mayo Test: NO, the additional elements do not integrate the judicial exception into a practical application). Accordingly, claims 21, 28, and 35 are determined to be directed to an abstract idea.
When analyzed under step 2B, claims 21, 28, and 35 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Claims 21, 28, and 35, each when viewed as a whole, do not include additional elements amounting to significantly more, as their additional elements, each viewed both individually and as an ordered combination, amount to no more than mere instructions to implement the abstract least-cost transaction routing concept within a particular technological environment – see MPEP §§ 2106.05 (f), (h) and Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014). Accordingly, when considered both separately and as an ordered combination, none of the elements of the independent claims add significantly more to the abstract idea itself (i.e., an inventive concept), as merely employing computers as tools to automate and/or implement the abstract idea cannot provide significantly more than the judicial exception itself – see BSG Tech LLC vs. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018): “It has been clear since Alice that a Claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept”.
Hence, independent claims 21, 28, and 35 are not patent eligible.
In order to further support the aforementioned determinations that the aforementioned additional elements drawn to machine learning are merely applied13 and do not provide improvements to the functioning of a computer or to any other technology or technical field under steps 2A Prong II and 2B, Examiner notes the following evidentiary support14:
the following prior art indicating or otherwise suggesting the claimed “applying a trained machine learning model…wherein the trained machine learning model determines factor weights that are applied to one or more parameters …” as well-understood, routine and conventional activity in the technical field of machine learning (i.e., not an improvement to the technical field of machine learning):
United States Patent Application Publication No. US 20150170024 A1 (Chatterjee), disclosing, in ¶3: “Artificial neural networks (ANNs) are computational ... ANNs generally include sets of adaptive weights, i.e., numerical parameters that are tuned by a learning algorithm. The adaptive weights are, conceptually, connection strengths between "neurons," which are activated during training and prediction.”
United States Patent Application Publication No. US 20170344910 A1 (Wu), disclosing it is common for certain machine learning implementations (e.g., neural networks and random forest) to use millions of weight parameters (¶8).
United States Patent Application Publication No. US 20170061282 A1 (Ryskamp), disclosing, in ¶2: “Traditional approaches to artificial intelligence and/or machine learning rely on random convergence of a series of weights. Such approaches require large amounts of computational resources (e.g., processing power) and/or time resources, often both.”
United States Patent Application Publication No. US 20140180994 A1 (Lobera), suggesting in ¶66, that adjusting parameters and weights of parameters is common to machine learning technology, as it states “it is common to say to `adjust a parameter`, or to `adjust the weights` of a set of parameters within the machine learning … literature.”.
the following prior art indicating or otherwise suggesting the claimed “…translating message formats and transmission parameters …” as well-understood, routine and conventional activity for payment network environments when network entities are managing merchant transactions (i.e., not a technological improvement in payment network environments):
United States Patent Application Publication No. US 20170308880 A1 (Phillips), disclosing in background section (¶3): “In terms of recording and tracking the transactions, conventional transactions at … [payment] terminals may not be isolated as such, and instead may be identified as attended POS transactions by Issuers, Acquirers and card associations (e.g., MasterCard). Conventionally, merchants set the codes associated with attended POS transactions according to Acquirer instructions, which are based on standards established by card associations (e.g., MasterCard). Merchants send data to Acquirers, who reformat the data into the MasterCard or other card format.”
United States Patent Application Publication No. US 20120221468 A1 (Kumnick), disclosing in in background section (¶3): “There are many acquirers that work with payment processing networks to facilitate transactions. Some of these acquirers have specific guidelines and standards for the format of the authorization logs and captures files that they receive from various entities in the payment networks. For example, if a merchant wants to be able to accept payment from consumers using a multitude of payment methods, each from a different acquirer using a different payment processing network, the merchant must adapt their systems, establish a connection between its own systems and the systems of each acquirer, and format its messages to the specifications of each acquirer.”
With respect to the dependent claims, the dependent claims have been given the full analysis, including analyzing the additional limitations both individually and as an ordered combination (if any). The dependent claims, when analyzed both individually and in combination, are also held to be patent ineligible under 35 U.S.C. 101 because of the same reasoning as above, and because the claim limitations of the dependent claims fail to establish that the claims are integrated into a practical application or amount to significantly more. The rationales for the aforementioned determinations are explained further below.
With respect to dependent claims 22, 24, 29, 31, 36, and 38, the additional limitations, when considered individually and as an ordered combination, do not recite additional elements outside of the abstract idea that integrate the judicial exception into a practical application, and do not amount to significantly more than the abstract idea. The claims fail to establish that the previously mentioned additional elements are successfully integrated / amounting to significantly more, either alone or in combination and do not recite any further additional elements. Accordingly, in view of the claims failing to establish that the aforementioned additional elements are successfully integrated / amounting to significantly more, either alone or in combination, dependent claims 22, 24, 29, 31, 36, and 38 are not patent eligible subject matter.
With respect to dependent claims 22, 24, 29, 31, 36, and 38, their limitations each fail to provide any further additional elements outside the abstract idea, and only further specify the abstract least-cost transaction routing concept. Furthermore, their limitations do not indicate that the previously mentioned additional elements of their respective parent claims successfully integrate the judicial exception into a practical application or amount to significantly more than the judicial exception itself, either individually or as an ordered combination. Accordingly, claims 22, 24, 29, 31, 36, and 38 do not integrate the judicial exception into a practical application or amount to significantly more than the judicial exception. Therefore, dependent claims 22, 24, 29, 31, 36, and 38 are also not patent eligible.
With respect to dependent claims 23, 30, and 37, the additional limitations, when considered individually and as an ordered combination, do not recite additional elements outside of the abstract idea that integrate the judicial exception into a practical application, and do not amount to significantly more than the abstract idea. The claims fail to establish that the previously mentioned additional elements are successfully integrated / amounting to significantly more, either alone or in combination, and the claim merely utilizes the pseudo-networks at a high degree of generality, such that it amounts to no more than mere instructions to implement the abstract idea by adding the words “apply it” (or an equivalent) – see MPEP 2106.05(f). Accordingly, in view of the claims failing to establish that the aforementioned additional elements are successfully integrated / amounting to significantly more, either alone or in combination, dependent claims 23, 30, and 37 are not patent eligible subject matter.
With respect to dependent claims 25-27, 32-34, 39, and 40, the additional limitations, when considered individually and as an ordered combination, do not recite additional elements outside of the abstract idea that integrate the judicial exception into a practical application, and do not amount to significantly more than the abstract idea. The claims fail to establish that the previously mentioned additional elements are successfully integrated / amounting to significantly more, either alone or in combination, and the claim merely utilizes generic displays and user interfaces at a high degree of generality, in terms of the desired results, and in a manner conventional with the technological environment of computers, such that it amounts to no more than mere instructions to implement the abstract idea by adding the words “apply it” (or an equivalent) – see MPEP 2106.05(f). Accordingly, in view of the claims failing to establish that the aforementioned additional elements are successfully integrated / amounting to significantly more, either alone or in combination, dependent claims 25-27, 32-34, 39, and 40, are not patent eligible subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK A MALKOWSKI whose telephone number is (313)446-6624. The examiner can normally be reached Monday - Friday, 9:00AM - 5:00PM ET.
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/M.A.M./Examiner, Art Unit 3696
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696
1 See pages 10-12 of Applicant Remarks.
2 Pages 10-12 of Remarks.
3 I.e., a technological solution to a technological problem.
4 See MPEP § 2106.05(a).
5 See pages 7 and 9 of the Desjardins decision.
6 Again, see pages 7 and 9 of the Desjardins decision.
7 I.e., a technological solution to a technological problem.
8 I.e., “significantly more” than the judicial exception.
9 See MPEP § 2106 I.
10 See MPEP §§ 2106.04 I, II, (d) I.
11 See MPEP § 2106.04(a)(2) II
12 See ¶¶45-46 of Applicant specification characterizing acquirer processors as business entities
13 See MPEP §2106.05(f), emphasis added: “For example, because this [Mere Instructions To Apply An Exception] consideration often overlaps with the improvement consideration (see MPEP § 2106.05(a)), the particular machine and particular transformation considerations (see MPEP § 2106.05(b) and (c), respectively), and the well-understood, routine, conventional consideration (see MPEP § 2106.05(d)), evaluation of those other considerations may assist examiners in making a determination of whether an element (or combination of elements) is more than mere instructions to apply an exception”.
14 MPEP §2106.07, underline emphasis added: “When evaluating a claimed invention for compliance with the substantive law on eligibility, examiners should review the record as a whole (e.g., the specification, claims, the prosecution history, and any relevant case law precedent or prior art) before reaching a conclusion with regard to whether the claimed invention sets forth patent eligible subject matter.”