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 .
Application Status
This Office Action is in response to amendments and remarks received 01/20/2026.
Claims 1-3, 6-10, 13-16, and 19-20 have been amended.
Claims 4, 5, 17, and 18 are canceled.
Claims 1-3, 6-16, and 19-20 are pending and have been examined.
This action is final, necessitated by Applicant amendment.
Withdrawn Objections
The claim objection of claim 3 drawn to “…in response to…” are withdrawn in view of the claim amendments received.
Withdrawn Rejections
The previous 35 U.S.C. § 112(b) rejections of claims 3, 5, 9, 10, 16, and 181 are withdrawn in light of the amendments received. However, examiner other 112(b) rejections applied in light of the newly amended claims.
The 35 U.S.C. § 103 rejections are withdrawn in light of the amendment received.
Claim Rejections
Claims 1-3, 6-16, and 19-202 are rejected under 35 U.S.C. § 101 for being directed to an abstract idea without significantly more.
Claims 2-3, and 15-16 are rejected under 35 U.S.C. § 112(b) per contradictory claim language.
Claims 1-3, 6-16, and 19-203 are rejected under 35 U.S.C. § 112(b) per antecedent basis issue.
Claims 1, 6-12, 14, and 19-20 are rejected under 35 U.S.C. § 103 in view of the following prior art of record4:
US 20240428232 A1 (Akula)
US 20210334800 A1 (Kanwar)
US 20080230600 A1 (Black)
US 20110087592 A1 (Van Der Veen)
US 20090138396 A1 (Boal)
US 20240127223 A1 (Francis)
US 20040088232 A1 (Minnis)
Acknowledgement of Issues Raised by Applicant
The following Applicant arguments drawn to the 35 U.S.C. § 103 rejections are persuasive, but are moot in view of the new grounds of rejection, necessitated by Applicant amendment.
Applicant’s arguments with respect to the 35 U.S.C. § 101 rejections of the claims have been fully considered but are not persuasive.
Any (non-moot) discrepancies between Applicant and Examiner stances shown above are addressed in the following section.
Response to Arguments
35 U.S.C. § 101
With respect to the 35 U.S.C. § 101 rejections, examiner notes Applicant asserts the claims are patent eligible under 35 U.S.C. §101 and Alice/Mayo analysis per the claims not reciting an abstract idea under step 2A Prong I. Additionally, examiner notes Applicant asserts the claims are patent eligible under 35 U.S.C. §101 and Alice/Mayo analysis per the claims providing additional elements that go beyond the judicial exception and either integrate the judicial exception into a practical application or amount to significantly more, as the claims provide a technological solution to a technological problem and include additional elements that are more than what is well-understood, routine and conventional activity5. The Examiner respectfully disagrees and maintains the claims are not patent eligible under 35 U.S.C. §101 (analysis continues below).
Issues Drawn to Claim Interpretation
The examiner notes Applicant disagrees with examiner’s broadest reasonable interpretation consistent with the specification and argues that “…the interpretation of the Examiner is not reasonable and is inconsistent with the specification and the understanding of a person of ordinary skill in the art…”6 for the following reason:
“…the passage [¶42] …does not equate the “database resources” with fiat currency or cryptocurrency… the passage states that the resources are database resources, which to a person skilled in the art, is any component or asset that supports the functioning, storage, and management of a database system. In this context, the skilled person would conclude that the database resources refers to… [a] database structure”.
The examiner respectfully disagrees with the overall thrust of Applicant’s argument and fails to find the above arguments persuasive in indicating patent eligibility of the instant claims for the following reasons:
The claims do not recite “…database resources…”. Therefore, the Applicant’s disclosure of “database resources” in Applicant’s specification is not limiting of claim scope – although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). See also ¶122 of Applicant specification: “As noted, certain adaptations and modifications of the described embodiments can be made. Therefore, the above discussed embodiments are considered to be illustrative and not restrictive”. In other words, Applicant’s arguments seem to suggest claim scope of the instant claims is far narrower than what one of ordinary skill in the art would interpret “…data resources…” as including. Therefore, Applicant’s arguments drawn towards “…database resources…” are moot in view of the instant claims not even incorporating the term argued in Applicant remarks.
While not relevant to the instant claims for the reasons as shown above, the examiner respectfully disagrees with Applicant’s suggestion of “…database resources…” having a plain meaning of “…any component or asset that supports the functioning, storage, and management of a database system…” to one of ordinary skill in the art. The examiner respectfully notes Applicant’s contention is not reasonable/credible to one of ordinary skill in the art for at least the following reasons:
Applicant’s only recitation of “database resources” in the specification is “…the resources may be database resources, and may represent stored value, such as financial instruments, including fiat currency and cryptocurrency.” (¶50). There is no suggestion or evidence that Applicant’s disclosed database resources representing financial instruments “…supports the functioning, storage, and management of a database system…”, and no explanation is provided in Applicant specification explaining the nexus between the “database resources … [representing] financial instruments”, or how such a database resource representing financial instruments is purportedly “…supporting the functioning, storage, and management of a database system”.
Applicant has not provided any evidentiary support (e.g., a dictionary entry of phrase “database resources” meeting Applicant’s filing date) which states “database resources” are defined as something that “…supports the functioning, storage, and management of a database system”.
Arguendo, even assuming these “…database resources…” were specifically claimed and necessarily limited to ‘data structures’, and not just merely any data associated with a database, (of which examiner respectfully disagrees and maintains is not the case), Applicant’s Specification’s disclosure is deficient in showing any particular data structures in any technological sense, and, at best, only describes them ipsis verbis without any particular architecture / structure at all. This is indifferentiable from every and all forms of hypothetical data structures that correspond to conditional / non-conditional “resources” / “database resources”, and is not indicative of a technical solution to a technical problem – this instead indicates, at best, the claims merely limiting the use of the abstract idea to a particular technological environment (MPEP § 2106.05(h)) at step 2A Prong II of the Alice/Mayo test. One of ordinary skill in the art knows that every given instance of computer data has some underlying representation that is structured in some form within computer memory. In view of such, Applicant’s supporting rationales drawn to “…data structures…” are not persuasive in indicating patent eligibility of the instant claims. To further support examiner’s stance that Applicant’s invention is not at all focused on particular data structures or their improvement in a technological sense, examiner notes the following of Applicant specification:
[¶1] The present application relates to data records and, more particularly, to systems and methods for managing conditional use data resources… [¶121] The present application is not limited to particular processors, computer languages, computer programming conventions, data structures, or other such implementation details. Those skilled in the art will recognize that the described processes may be implemented as a part of computer-executable code stored in volatile or non-volatile memory, as part of an application-specific integrated chip (ASIC), etc.
As shown above, the claims instead claim “…data resources…”, of which may generally include various disparate embodiments, such as bank balances, and spreadsheet data, etc; see ¶¶50, 51, 122:
¶50: “The data resources may, for example, be … spreadsheet data …and may include … text….”
¶50: “…In at least some implementations, the resources may be … goods which are exchange mediums … the … goods may be …monetary instruments…”7
¶51 (emphasis added): “The records may define metrics reflecting a total quantity of data resources that are associated with the first entity. The records may further define metrics reflecting one or more quantities of conditional data resources and/or a quantity of non-conditional data resources that are associated with the first entity. The metrics may be … one or more balances; for example, one or more bank balances”.
¶122: “As noted, certain adaptations and modifications of the described embodiments can be made. Therefore, the above discussed embodiments are considered to be illustrative and not restrictive.”
Accordingly, in view of the above, it is understood to one of ordinary skill in the art that the claimed “data resources” may include abstract financial data within a spreadsheet or be data generally corresponding to bank account balances, of which does not have to “…support… the functioning, storage, and management of a database system”, or correspond to particular “…data structures…” of a database, as implied by Applicant’s argument narrowly focusing on a portion of ¶51 of Applicant’s specification. Additionally, in view of the above, it is plainly understood to one of ordinary skill in the art that the claimed data resources are generally not limited to any specific computer technology, as (A) all of Applicant’s examples are exemplary and not limiting, and (B) point to various disparate / unrelated technology or technologies that are themselves generic, and at best, merely limit the use of the abstract idea to a particular technological environment, as made evident above by the cites to Applicant’s specification further above. Conversely, the non-limiting examples in Applicant’s specification8 make it clear to one of ordinary skill in the art that the data resources are very broadly characterized by Applicant’s specification and may generally include abstract financial information such as financial currency / transactions / bank balances, data within a spreadsheet, etc.
In view of the above and in light of Applicant’s specification, the Examiner respectfully maintains it is not reasonable to construe the Applicant’s claimed “…data resources…” as being entirely devoid of embodiments corresponding directly to financial data (e.g., currency) / transactions / bank balances. I.e., the claimed data resources clearly may refer to abstract financial data, in light of disclosure of Applicant’s Specification, and is not limited to either (a) the narrower embodiment contemplated by Applicant arguments or (b) the non-limiting exemplary examples listed in Applicant specification.
Examiner’s Response to Step 2A Prong I Arguments
Examiner respectfully disagrees with Applicant’s arguments drawn to step 2A Prong I9 and respectfully maintains the claims recite an abstract idea for the following reasons:
Applicant’s arguments do not specifically refute examiner’s position in the previous non-final rejection that fund transfers are considered abstract commercial interactions, or that fund transfers are positively recited by the claims, as Applicant’s arguments instead more broadly (implicitly) assert the claims do not recite an abstract idea under step 2A Prong I in a cursory manner, and instead draws attention to (a) the additional elements recited by the claims and (b) arguments drawn narrower embodiments within Applicant specification. I.e., Applicant fails to provide any substantive argument specifically addressing as to why the limitations drawn to “fund transfers” identified by examiner in their step 2A Prong I analysis are (a) not abstract, (b) not recitation of commercial interactions, or (c) not present within the claim limitations identified by examiner. The examiner respectfully presses that fund transfers falls under abstract commercial interactions, and that the claim limitations previously identified positively recite limitations drawn to the aforementioned abstract idea specified. Examiner respectfully notes Applicant’s arguments are not convincing when they fail to provide any substantive underlying reasoning or rationale outlining Applicant’s position as to why the concept of fund transfers identified by examiner is, at least one of: (a) non-abstract, (b) not falling under either commercial interactions, and/or (c) not present within the claim limitations identified by examiner. Applicant noting that the claims requiring computer components distinct from the abstract idea identified by examiner in their step 2A Prong I analysis does not sufficiently address these particular deficiencies in the Applicant’s arguments, as "[a]n abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer" – see Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792 F.3d 1363, 1366, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015).
Regardless of Applicant’s asserted basis for eligibility drawn to the computer components / additional elements, Examiner fails to see how the aforementioned claim are not recitations of commercial interactions under step 2A Prong I. The Examiner does not contend that the claimed additional elements are abstract. However, the mere inclusion of claim limitations drawn to computer components / additional elements does not necessarily preclude the same aforementioned claims from being considered to recite an abstract idea under step 2A prong I of Alice/Mayo analysis – again, see Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792 F.3d 1363, 1366, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015), emphasis added: ("An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer"). This fact is evident in light of the sequence of steps performed during the revised Alice/Mayo test – see MPEP § 2106.04 II A showing a visual summary of revised step 2A of the Alice/Mayo test.
Examiner notes Applicant’s reliance upon the additional elements recited in step2A Prong I are possibly implying a stance that the claims indicate a clear improvement to technology or some computer functionality even at step 2A Prong I, and thus do not need to undergo the full eligibility analysis (see MPEP § 2106.06(b)). However, the examiner notes streamlined analysis is optional and respectfully submits streamlined analysis should not be performed for the instant claims, because there are no claim limitations, either individually or as an ordered combination, which clearly improve technology, or are otherwise self-evidently patent-eligible – see MPEP §2106.06(b): “Only when the claims clearly improve technology or computer functionality, or otherwise have self-evident eligibility, should the streamlined analysis be used”. Accordingly, the Examiner respectfully submits that a full eligibility analysis should be performed, consistent with MPEP § 2106.06(b).
Examiner respectfully submits that claim limitations failing to perfectly fit within claim limitations of previous case law are not automatically presumed to be non-abstract, as implied by Applicant arguments. Just because an abstract idea hasn’t been explicitly identified as abstract by courts does not mean that examiners are to presume the claim limitations in question are not abstract. Examiner notes this is supported by § 2106.04(a) of the MPEP: “By grouping the abstract ideas, the examiners’ focus has been shifted from relying on individual cases to generally applying the wide body of case law spanning all technologies and claim types” and Synopsys, 839 F.3d at 1151 (“a claim for a new abstract idea is still an abstract idea.”).
The 35 U.S.C. § 101 rejections of the previous office action did not and do not take the position that the abstract idea identified was a mental process, as implied by applicant’s argument stating “…claimed steps could not reasonably be performed mentally, as they
inherently require computational capabilities far beyond human capacity”. Instead, what was identified at step 2A I of the examiner’s analysis was the claims reciting certain methods of organizing human activity (MPEP § 2106.04(a)(2) II), and more specifically commercial practices of fund transfers. Examiner notes that the 101 rejections in the previous Office Action did not assert the claims to be a mental process, but rather certain methods of organizing human activity, including commercial interactions, which is appropriate. Mental processes are a different grouping of abstract ideas distinct from ‘Certain Methods of Organizing Human – see MPEP § 2106.04(a) for the enumerated groupings. Accordingly, Examiner respectfully notes that the “cannot be performed by the human mind” consideration is an irrelevant/incorrect consideration to apply to the ‘Certain Methods of Organizing Human’ activity grouping.
Applicant’s contentions drawn to the physicality / concreteness of the claimed invention are not relevant, because, again, as noted in Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792 F.3d 1363, 1366, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015): ("An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer")”. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception does not guarantee eligibility – see Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1983-84 (2014) ("The fact that a computer ‘necessarily exist[s] in the physical, rather than purely conceptual, realm,’ is beside the point")”. Accordingly, Examiner respectfully notes that the fact that the elements of the claims aren’t purely conceptual is an irrelevant/incorrect consideration to apply within the Alice/Mayo framework.
Accordingly, for the reasons provided above, as well as the reasons provided in the 101 rejections further below, Applicant’s arguments drawn to step 2A Prong I are not persuasive. The examiner respectfully maintains the claims recite an abstract idea (Step 2A Prong I: Yes – the claims recite an abstract idea).
Examiner’s Response to Step 2A Prong II Arguments
Examiner respectfully disagrees with Applicant arguments10 that the claims are directed to an improvement to the functioning of a computer, or another technology or technical field11 and integrate the judicial exception into a practical application for the following reasons:
With respect to Applicant’s arguments drawn to efficient implementation, etc., (pages 12-15 of Remarks), the Examiner respectfully disagrees with the overall thrust of Applicant arguments. As an initial matter, Applicant’s arguments drawn to the increased efficiency are not commensurate with the claims (i.e., Specification’s purported basis for improvement is not reflected by any limitations of the claims), excepting possibly claims 2-3. For example, ¶44 discloses: “when a transfer request is received, the system may not immediately evaluate whether conditional data resources are available for the particular transfer request. Instead, the system may simply approve the transfer after determining that there are sufficient non-conditional data resources available to complete the transfer, without first evaluating the available conditional data resources”. Accordingly, this argument is not persuasive for the other pending claims.
Examiner additionally notes this argument is not persuasive for claims 2 and 3 either though. Examiner notes the ordered combination of verifying sufficient resources without evaluating other conditional data resources is analogous to a balance inquiry at a bank (e.g., “determine the data resources12 associated with the non-conditional data record13”) merely setting a default financial account (e.g., record) for a balance inquiry process during transaction authorization, and utilizing more restricted accounts later during settlement, and is not indicative of a technological solution to a technological problem; it is instead indicative of a difference in the steps of the abstract solution (e.g., performing a balance inquiry with a less-restricted account during authorization, and a settlement after authorization, where clearing uses more restricted accounts). I.e., the claim limitations are indistinguishable from an abstract authorization / accounting solution for conditional and non-conditional funds/balances more than any technological solution to a technological problem. The generic computing system having to process less data as a result of the abstract method being performed differently is not indicative of a technical solution to a technical problem, and is instead indicative of an improvement in the abstract idea itself, as none of the additional elements themselves are improved by any aspect necessarily rooted in a technological environment – see MPEP § 2106.05(a): “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” and MPEP § 2106.04 II A 2: “…eligibility ‘cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself’. … For a claim reciting a judicial exception to be eligible, the additional elements (if any) in the claim must ‘transform the nature of the claim’ into a patent-eligible application of the judicial exception, Alice Corp., 573 U.S. at 217, 110 USPQ2d at 1981, either at Prong Two or in Step 2B”. In other words, examiner respectfully maintains 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; an improvement in the abstract idea itself is not a technological solution to a technological problem and is not sufficient for patent eligibility – see SAP America, Inc. v. Investpic, LLC, No. 17-2081 (Fed. Cir. 2018): “No matter how much of an advance in the finance field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm. An advance of that nature is ineligible for patenting…Under the principles developed in interpreting §101, patent law does not protect such claims, without more, no matter how groundbreaking the advance”.
Applicant’s arguments drawn towards McRo, Enfish, and DDR Holdings are not persuasive for the following reasons:
The same reasons as indicated in item ‘b.’, above.
As per MPEP § 2106.05(a), underline emphasis added: ”… An important consideration in determining whether a claim improves technology is the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome. McRO, 837 F.3d at 1314-15, 120 USPQ2d at 1102-03; DDR Holdings, 773 F.3d at 1259, 113 USPQ2d at 1107”, and Applicant’s specification makes clear that the focus of the claims is using computers as tools at a high degree of generality to implement the abstract idea recited, not any specific technological technique necessarily rooted in a technological environment (i.e., do not indicate a technological solution to a technological problem – see ¶122 of Applicant Specification: “The present application is not limited to particular processors, computer languages, computer programming conventions, data structures, or other such implementation details. Those skilled in the art will recognize that the described processes may be implemented as a part of computer-executable code stored in volatile or non-volatile memory, as part of an application-specific integrated chip (ASIC), etc”.
With respect to McRo, McRo determined the claims recited mental processes under step 2A Prong I, of which is not the case for the 101 rejections of the instant claims – the instant claims instead were determined to recite commercial activity. Accordingly, Applicants argument drawn to the similarities between McRo and the instant claims are not persuasive, even at step 2A Prong I of the Alice/Mayo test.
McRo’s eligibility rationale relied upon (A) “… an improvement in [a] technology or technical field…”, (B) “…Here, the structure of the limited rules reflect a specific implementation not demonstrated as that which any [animator] engaged in the search for [an automation process] would likely have utilized … By incorporating the specific features…”, and (C) “When looked at as a whole, claim 1 is directed to a … technological improvement over the existing, manual 3-D animation techniques…”. Unlike McRo, Examiner respectfully fails to see as to how the instant claim limitations use “rules reflect[ing] a specific implementation not demonstrated as that which … [one of ordinary skill in the art] engaged in the search for [an automation process] would likely have utilized.” – the claims instead utilize a generic and non-descript “…system…” with generic computer components used to perform the automation at a high degree of generality. The “system” mechanism for the automation process is one that one of ordinary skill in the art “would have likely utilized” for performing transfer requests, especially given the generality by which the system is claimed – the computer components (e.g., processor, memory, communications module) are relatively non-descript and are generally indistinguishable from basic and conventional components of a general-purpose computer. To further highlight the distinction in specificity between applicant’s claims and McRo, note the following claim limitations of McRo:
“a method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising: obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence; obtaining a timed data file of phonemes having a plurality of sub-sequences; generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules; generating a final stream of output morph weight sets at a … frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters”,
relative to the following automation processes of the instant claims:
“…A system comprising: a communications module; a processor coupled to the communications module; a memory coupled to the processor, the memory storing instructions which, when executed, configure the processor to: …”.
The above claim limitations “…A system comprising: a communications module; a processor coupled to the communications module; a memory coupled to the processor, the memory storing instructions which, when executed, configure the processor to: …” point to the additional elements being merely applied, and not a technological solution to a technological problem, unlike in the case of DDR Holdings. I.e., the additional elements do not amount to more than merely instructing that the abstract idea should be applied on a computer / computer network – see MPEP § 2106.05(f)(1).
Examiner respectfully disagrees with Applicant’s implied assessment that the claims provide any particular “…logical structures…” analogous to the ones found in Enfish (e.g., a self-referential table), as the instant claims’ data resources are limited only in terms of what they represent – there is no particular logical data structure or specific technology the claimed various forms of abstract data are limited to. See ¶122 of Applicant Specification.
Accordingly, Examiner respectfully disagrees with Applicant’s contentions that the fact patterns applied to McRo, Enfish, and DDR are applicable to the Alice/Mayo analysis of the instant claims, and respectfully submits that the instant claims do not have sufficient details to indicate improvements to a technical field, unlike the claimed subject matter discussed in McRo and Enfish. The examiner respectfully maintains that the additional elements are merely applied (MPEP § 2106.05(f)) and merely limit the use of the abstract idea to a technological environment (MPEP § 2106.05(h)).
The additional elements “a system comprising: a communications module; a processor coupled to the communications module; a memory coupled to the processor, the memory storing instructions which, when executed configure the processor to…” of claim 1 and the additional elements “…A non-transitory computer-readable storage medium comprising processor-executable instructions, which, when executed, configured a processor to:…”, of claim 20 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 combination14. Stating an abstract idea while adding the words "apply it" (or an equivalent) is insufficient to impart patent eligibility under Alice. 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”.
When viewed as a whole, the claims amount to merely invoking computers as tools to perform an abstract business process of conditional fund transfers and merely limit the use of the judicial exception to a particular technological environment – see MPEP §§ 2106.05 (f)(2), (h). This stance is supported by Applicant specification disclosing, in ¶122: “The present application is not limited to particular processors, computer languages, computer programming conventions, data structures, or other such implementation details. Those skilled in the art will recognize that the described processes may be implemented as a part of computer-executable code stored in volatile or non-volatile memory, as part of an application-specific integrated chip (ASIC), etc”. See also MPEP § 2106 I: “the programmed computer or "special purpose computer" test of In re Alappat, 33 F.3d 1526, 31 USPQ2d 1545 (Fed. Cir. 1994) (i.e., the rationale that an otherwise ineligible algorithm or software could be made patent-eligible by merely adding a generic computer to the claim for the "special purpose" of executing the algorithm or software) was also superseded by the Supreme Court’s Bilski and Alice Corp. decisions”.
Applicant’s specification and 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). This stance is also supported by ¶122 of Applicant specification (above).
With respect to the “data resources” claim limitations whose claim interpretation is disagreed upon between Applicant and examiner, examiner respectfully submits, that, arguendo, even if the data resources representing abstract financial information were necessarily limited to some generic technological aspect provided within Applicant specification, and, therefore, an additional element (,of which examiner does not agree), those generic details do not indicate anything other than those “data resources” (A) being used at a high degree of generality and (B) acting as a stand-in for abstract information directed to the abstract idea recited, such that they do nothing more than amount to 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)).
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 conditional fund transfers 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 conditional fund transfers 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 conditional fund transfers).
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 include involvement of the additional elements / components outside the abstract idea – not just 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:
MPEP § 2106 I:
“eligibility should not be evaluated based on whether the claimed invention has utility, because "[u]tility is not the test for patent-eligible subject matter." Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1380, 118 USPQ2d 1541, 1548 (Fed. Cir. 2016)”.
Synopsys, 839 F.3d at 1151:
“a claim for a new abstract idea is still an abstract idea. …” (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)”.
SAP America, Inc. v. Investpic, LLC, No. 17-2081 (Fed. Cir. 2018):
“No matter how much of an advance in the finance field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm. An advance of that nature [i.e., where it lies entirely within the realm of abstract ideas,] is ineligible for patenting…Under the principles developed in interpreting §101, patent law does not protect such claims, without more, no matter how groundbreaking the advance.”
Accordingly, the examiner respectfully disagrees with Applicant’s arguments drawn to “…specific update logic…” and “…data-driven determinations…”, as they are recitation of the abstract idea recited.
With respect to Applicant argument arguing that the present claims are not obvious in view of the prior art of record, and accordingly patent eligible, Examiner respectfully disagrees with the overall thrust of the argument and fails to find argument convincing. 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 field15 (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 concept16 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
35 U.S.C. § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3, 6-16, and 19-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth the subject matter which the inventor or applicant regards as the invention.
Unclear Scope
Claims 2 and 15
With respect to claims 2 and 15, they incorporate the following limitations from their corresponding parent claim (emphasis added): “…determine the conditional data record that records a plurality of a third data resources …, the third data resources being insufficient to approve the transfer request; … determine a sum of the third data resources and the fourth data resources is sufficient to approve the transfer request; approve the transfer request; …”. Claims 2 and 15 then include limitations (emphasis added): “…determine the data resources associated with the non-conditional data record that are sufficient to approve the transfer request without first evaluating the conditional data record”. The parent claim limitations requiring determination of a sum between the third data resources and the fourth data resources to approve the transfer request, yet the dependent limitations require determination of sufficiency for approval “without first evaluating the conditional data record” in an apparent contradiction.
Claims 3 and 16 are rejected by virtue of dependency.
Antecedent Basis
Independent Claims 1, 14, and 20
The independent claims 1, 14, and 20 recite the limitation "… the non-conditional data record that records a plurality of fourth data resources…", and “…the conditional data record that records a plurality of third data resources…”. There is insufficient antecedent basis for these limitations in the claims. Examiner notes removing the limitation “…that…” would appear to resolve the antecedent basis issue, and would more closely mirror the limitations of the canceled claims.
All the dependent claims are rejected by virtue of dependency.
Examiner notes the same issue above applies to dependent claims 2, 3, and 16, mutatis mutandis.
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 1-3, 6-16, and 19-20 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 test17. 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, the claims are either directed to a system, product of manufacture, or method. Therefore, each of the claims are directed to one of the four statutory categories of invention (Step 1 of Alice/Mayo Test: YES).
Based upon consideration of all relevant factors with respect to the claims as a whole, claims 1-3, 6-16, and 19-20 are determined to be directed to an abstract idea of conditional fund transfers. 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 14 as the claim that represents the claimed invention for analysis under step 2A Prong I, as method claim 14 is analogous to system claim 1 and non-transitory computer readable medium claim 20 under step 2A Prong I analysis. I.e., the step 2A Prong I Alice/Mayo rationales applied to claim 14 (below) are similarly applied to claims 1 and 20, mutatis mutandis.
With respect Step 2A Prong I of Alice/Mayo analysis, claims 1-3, 6-16, and 19-20 recite as a whole a method of organizing human activity because independent claims 1, 14, and 20 each recite claim limitations drawn to:
“A method comprising:
receiving a first transfer of first data resources to an account, the first transfer including a first condition restricting use of the first data resources;
updating a conditional data record based on the first data resources by recording only data resources including conditions restricting a use and excluding data resources defined in a non-conditional data record that records data resources having no conditions restricting use;
receiving a transfer request for second data resources, the transfer request including metadata defining a second condition;
based on the metadata, determining whether the data resources associated with the conditional data record or the data resources associated with the non-conditional data record should be used to approve the transfer request;
determining the conditional data record that records a plurality of third data resources including the second condition, the third data resources being insufficient to approve the transfer request;
determining the non-conditional data record that records a plurality of fourth data resources; and
determining a sum of the third data resources and the fourth data resources is sufficient to approve the transfer request;
approving the transfer request;
updating the conditional data record by reducing, to zero, the recorded data resources including the second condition; and
updating the non-conditional data record by reducing the recorded data resources by a first difference between the second data resources and the third data resources.”
Under broadest reasonable interpretation consistent with the specification, these are recitations of commercial and/or legal interactions of conditional (fund) transfers. 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 1, 14, and 20 is not integrated into a practical application because, when analyzed under prong II of revised step 2A of the Alice/Mayo test18:
The additional elements “a system comprising: a communications module; a processor coupled to the communications module; a memory coupled to the processor, the memory storing instructions which, when executed configure the processor to…” of claim 1 and the additional elements “…A non-transitory computer-readable storage medium comprising processor-executable instructions, which, when executed, configured a processor to:…”, of claim 20 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 combination19. Stating an abstract idea while adding the words "apply it" (or an equivalent) is insufficient to impart patent eligibility under Alice. 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”.
When viewed as a whole, the claims amount to merely invoking computers as tools to perform an abstract business process of conditional (fund) transfers and merely limit the use of the judicial exception to a particular technological environment – see MPEP §§ 2106.05 (f)(2), (h). This stance is supported by Applicant specification disclosing, in ¶122: “The present application is not limited to particular processors, computer languages, computer programming conventions, data structures, or other such implementation details. Those skilled in the art will recognize that the described processes may be implemented as a part of computer-executable code stored in volatile or non-volatile memory, as part of an application-specific integrated chip (ASIC), etc”. See also MPEP § 2106 I: “the programmed computer or "special purpose computer" test of In re Alappat, 33 F.3d 1526, 31 USPQ2d 1545 (Fed. Cir. 1994) (i.e., the rationale that an otherwise ineligible algorithm or software could be made patent-eligible by merely adding a generic computer to the claim for the "special purpose" of executing the algorithm or software) was also superseded by the Supreme Court’s Bilski and Alice Corp. decisions”.
Applicant’s specification and 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). This stance is also supported by ¶122 of Applicant specification (above).
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”.
With respect to the “…data resources…” claim limitations whose claim interpretation is disagreed upon between Applicant and examiner, examiner respectfully submits, that, arguendo, even if the data resources representing abstract financial information were necessarily limited to some generic technological aspect provided within Applicant specification, and, therefore, an additional element (,of which examiner does not agree), those generic details do not indicate anything other than those “data resources” (A) being used at a high degree of generality and (B) acting as a stand-in for abstract information directed to the abstract idea recited, such that they do nothing more than amount to 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)).
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 conditional (fund) transfers, 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 1, 14, and 20 are determined to be directed to an abstract idea.
When analyzed under step 2B, claims 1, 14, and 20 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Claims 1, 14, and 20, each when viewed as a whole, do not include additional elements amounting to significantly more, as their elements, each viewed both individually and as an ordered combination, amount to no more than mere instructions to implement the abstract conditional (fund) transfers concept within a particular technological environment, absent of any particular technological details 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 – see MPEP §§ 2106.05 (a), (f), (h) and Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014). Accordingly, the Examiner respectfully maintains the focus of the claims is not on such an improvement in computers as tools, but rather on abstract ideas that use computers as tools and respectfully maintains 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”.
Accordingly, independent claims 1, 14, and 20 are not patent eligible.
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 2, 3, 6, 7, 8, 11-13, 15, 16, and 19 their limitations each fail to provide any further additional elements outside the abstract idea, and only further specify the abstract conditional (fund) transfers 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 2, 3, 6, 7, 8, 11-13, 15, 16, and 19 do not integrate the judicial exception into a practical application or amount to significantly more than the judicial exception. Therefore, dependent claims 2, 3, 6, 7, 8, 11-13, 15, 16, and 19 are also not patent eligible.
Dependent claim 9 further describes the abstract idea of commercial interactions as it recites “…displays a metric from a combination of the conditional data record and the non-conditional data record”. The additional element “generate a user interface that” does no more than represent the use of a computer as a tool to perform the abstract idea and/or does no more than merely limit the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)), and therefore, does not improve the functioning of a computer, or to any other computer, technology, or technical field, does not integrate the judicial exception into a practical application, and does not amount to significantly more.
Dependent claim 10 further describes the abstract commercial interactions as it recites “…displays one or more metrics, each of the one or more displayed metrics reflecting data resources associated with a distinct condition recorded by the conditional data record”. The additional element “generate a user interface that” does no more than represent the use of a computer as a tool to perform the abstract idea and/or does no more than merely limit the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)), and therefore, does not improve the functioning of a computer, or to any other computer, technology, or technical field, does not integrate the judicial exception into a practical application, and does not amount to significantly more.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims Rejected in View of Akula, Kanwar, Black, and Van Der Veen
Claims 1, 7, 11, 12, 14, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 20240428232 A1 (Akula), in further view of US 20210334800 A1 (Kanwar), in further view of US 20080230600 A1 (Black), in further view of US 20110087592 A1 (Van Der Veen).
Claims 1, 14, and 20
With respect to claim 1, Akula discloses the following limitations:
A system comprising: (Fig. 1)
PNG
media_image1.png
592
724
media_image1.png
Greyscale
a communications module; (At least Fig. 4, “Communications Interface” 420, in further view of ¶72)
PNG
media_image2.png
785
796
media_image2.png
Greyscale
[0072] Digital wallet management system 400 is also
shown to include a communications interface 420 that
facilitates communications between digital wallet management
system 400 and any external components or devices,
including any of external system(s) 108.
a processor coupled to the communications module; (Processing Circuit / Processor, Fig. 4, 404, in further view of ¶69)
PNG
media_image3.png
785
765
media_image3.png
Greyscale
[0069] Digital wallet management system 400 is shown to
include a processing circuit 402 that includes a processor
404 and a memory 410. Processor 404 can be a general-purpose
processor, an application-specific integrated circuit
(ASIC), one or more field programmable gate arrays, (FPGAs
), a group of processing components, or other suitable
electronic processing structures. In some implementations,
processor 404 is configured to execute program code stored
on memory 410 to cause digital wallet management system
400 to perform one or more operations, as described below
in greater detail. It will be appreciated that, in implementations
where digital wallet management system 400 is part of
another computing device, the components of digital wallet
management system 400 may be shared with, or the same as,
the host device. For example, if digital wallet management
system 400 is implemented via a server ( e.g., a cloud server),
then digital wallet management system 400 may utilize the
processing circuit, processor(s ), and/or memory of the host
server to perform the functions described herein.
a memory coupled to the processor, the memory storing instructions which, when executed, configure the processor to:(Fig. 4, “Memory”, 410, in further view of ¶¶69, 70)
receive a first transfer of first data resources to an account (e.g., a transfer from fund sources to holding account), (At least ¶¶16, 19, 21, 36)
[0016]… the disclosed digital wallet system is generally configured to procure funds from any number of external sources, including
sources that are not directly owned or associated with a
primary owner/user of the digital wallet. Thus, the digital
wallet system allows for fund sources to be "detached" from
the primary owner/user. For example, family members or
caregivers, government entities, charities, and the like can
all contribute funds to a privately held digital wallet to
facilitate … payment of healthcare expenses…
[0019] Fund sources 104 can generally include any number
of sources from which funds can be procured by digital
wallet system 110, e.g., to satisfy payment requests … for
example, fund sources 104 can include one or more health
savings accounts (HSAs), flexible spending accounts
(FSAs), bank accounts (e.g., trust accounts), credit/debit
cards, charity accounts (e.g., crowd-fund accounts), and the
like…
[0021] … digital wallet system 110 is generally configured to procure and/or manage funds from a plurality of sources (e.g., fund sources 104) and can intelligently disburse funds to satisfy healthcare-related payment
requests ( e.g., received from requesting device 106)… digital wallet system 110 is configured to maintain a number of rule sets and/or user preferences dictating the procurement and/or disbursement of
funds. In some implementations, digital wallet system 110
maintains at least one rule set for procuring funds and at
least one rule set for disbursing funds, as described in greater
detail below.
[0036] Procurement manager 112 is generally configured to facilitate the procurement of funds from fund sources 104. More specifically, procurement manager 112 may facilitate the electronic transfer of funds from any of fund sources 104 to a holding account 202. Similar to a traditional bank account, holding account 202 is generally configured to maintain or "hold" funds obtained from any of fund sources 104. As described herein, holding account 202 may be implemented by (e.g., hosted on) digital wallet system 110 …
the first transfer (e.g., transfer from fund sources to holding account) having a first condition (disbursement rules) restricting use of the first data resources; (At least ¶¶26, 78, in further view of ¶¶21,22,84, and ¶44; See also Fig. 9 and associated disclosure)
[0026] … one or more of fund sources 104 can provide their own procurement and/or disbursement rules. For example, when adding an
HSA to digital wallet system 110, the HSA's host computing
system may provide digital wallet system 110 with a set of
rules that dictate the types of goods or services that can be
paid for using HSA funds ( e.g., qualifying medical
expenses). …
[0078] … disbursement rules are any rules and/or preferences that dictate how funds are apportioned and transferred from … holding account 202.… In some implementations, disbursement rules are defined by a user (e.g., the primary account owner or secondary authorized account user); however, disbursement rules can also be set by each connected fund source and/or other third parties (e.g., a regulatory body).
[0021] … In some implementations, digital wallet system 110 evaluates
the payment request based on the rule sets …
[0022] In some implementations, digital wallet system 110 is configured to identify medical expenses that are eligible to be paid by an HSA, FSA, or another similar account [e.g., fund source 104], e.g., that includes restrictions on the type of products or services that the associated funds can be used to pay for.
[0084] At step 604, the electronic payment request is evaluated to determine how best to disburse funds … to satisfy the request. In some implementations, relevant data is first extracted from the electronic payment requests for evaluation, e.g., using a NLP and/or by parsing the electronic payment request. Relevant data points may include, for example, a type, identifier, and value of each line item or expense in the request. In some implementations, additional data can be extracted such as identifying information for the requestor, recipient, and/or person associated with the electronic payment request. In some implementations, a “type” of electronic payment request (e.g., electronic healthcare claim, reimbursement, etc.) can first be identified, which can inform how to extract data and/or the data that should be extracted. The extracted data, and/or the electronic payment request itself, are then evaluated against disbursement rules to determine whether parameters (e.g., a condition) of any rules are met. Additionally, or alternatively, an AI model is used to evaluate the electronic payment request data.
[0044] … in implementations where funds are maintained in holding account 202, disbursement manager 116 determines how to apportion funds that are associated with (e.g., previously procured from) each of fund sources 104. For example, holding account 202 may hold $500 in funds from “Source 1” and $1000 in funds from “Source 2,” for a total of $1500 in funds. However, funds from “Source 1” may be restricted to use for qualifying medical expenses. If a $1200 payment request is received, disbursement manager 116 may be configured to determine how to apportion funds from “Source 1” and “Source 2” to satisfy the payment request while abiding by various disbursement rules, as discussed below.
… a conditional data record based on the first data resources, by recording only data resources associated with [a] condition… restricting use … (balance of funds from a given fund source in holding account, e.g., “holding account 202 may hold $500 in funds from "Source 1" …”)(¶¶44)
[0044] … For example, holding account 202 may hold $500 in funds from “Source 1” and $1000 in funds from “Source 2,” for a total of $1500 in funds. However, funds from “Source 1” may be restricted to use for qualifying medical expenses. If a $1200 payment request is received, disbursement manager 116 may be configured to determine how to apportion funds from “Source 1” and “Source 2” to satisfy the payment request while abiding by various disbursement rules, as discussed below.
Examiner’s Note: Examiner notes Akula disclosing the value associated with the fund sources may include multiple conditions restricting use – see ¶78: “…however, disbursement rules can also be set by each connected fund source” and at least Fig. 9 in further view of ¶92.
(¶44, 85, 87; ¶¶48,49)
[0044] … For example, holding account 202 may hold $500 in funds from “Source 1” and $1000 in funds from “Source 2,” for a total of $1500 in funds. However, funds from “Source 1” may be restricted to use for qualifying medical expenses. If a $1200 payment request is received, disbursement manager 116 may be configured to determine how to apportion funds from “Source 1” and “Source 2” to satisfy the payment request while abiding by various disbursement rules, as discussed below.
[0085] Generally, the evaluation at step 604 is performed in order to determine which of one or more sources funds should be apportioned from for disbursement, e.g., to satisfy the electronic payment request, based on user-defined rules, fund-source-defined rules, and/or third-party-defined rules. This can include first determining which of the one or more sources are eligible for satisfying the electronic payment request and then, of the fund sources that are eligible, determining a priority or order of how funds should be apportioned and/or an amount of funds that can be apportioned from each of the sources.
[0087] At step 608, funds are disbursed to satisfy the electronic payment request. In particular, funds can be electronically transferred from a holding account and/or individual fund sources to a recipient (e.g., requesting device 106), e.g., based on the disbursement determined at step 604. For example, funds may be transferred from a single holding account to a recipient to satisfy the payment; however, the transferred funds may be debited against the balance of funds from multiple different fund sources maintained by the holding account. Additionally, or alternatively, funds may be transferred from individual fund sources to a recipient.
[0048] In some implementations, user-defined rules are received via user input, e.g., when a user sets up a digital wallet account or at any point thereafter. For example, a primary account owner may set one or more disbursement rules when creating their digital wallet account and/or a secondary authorized account user could set disbursement rules after the digital wallet account is created. In some implementations, fund-defined rules are obtained directly from fund sources 104, e.g., when a fund is connected to the digital wallet account. In some such implementations, any of fund sources 104 may periodically or occasionally transmit new or updated rules to digital wallet system 110, which are then used to update disbursement rules database 118. In some implementations, third-party-defined rules are obtained directly from a third-party source. For example, Medicare/Medicaid rules may be received from or retrieved from a remote database, system, or website.
[0049] In some implementations, disbursement rules database 118 includes one or more transaction-specific rules which dictate how funds are disbursed based on a type of payment request and/or based on the individual line items or expenses contained within the payment request. For example, disbursement rules database 118 may include a plurality of set limits (e.g., a dollar value) on the amount of funds that can be apportioned from each of fund sources 104 based on transaction or expense type, recipient/requestor/merchant identifier, etc. In some implementations, disbursement rules database 118 includes one or more user-specific rules which dictate how funds are disbursed based on user preferences. For example, user-specific rules may assign a priority to fund sources 104 for apportioning funds (e.g., use “Fund A first, then Fund B”), which may also be based on payment request or expense type. In some implementations, disbursement rules database 118 includes one or more fund-specific rules which dictate how funds are disbursed based on limits set by each of fund sources 104.
… by excluding data resources defined in a non-conditional data record that records data resources having no conditions restricting use,; (With respect to the prior conditional data record, see above. With respect to the limitations “[excluded] data resources defined in a non-conditional data record that records data resources having no conditions restricting use”, see at least ¶38: “…fund sources 104 include one or more credit or debit cards…For example, a primary account owner … could add a credit card for paying non-qualifying medical expenses …”)
Examiner’s Note: Examiner takes the stance that one of ordinary skill in the art reading Akula understands the debit / credit card as a source of non-conditional data resources (e.g., funds), of which may be portion of value stored in holding account 202, per ¶37 of Akula. See also ¶44 suggesting source 2 is unrestricted, while source 1 is restricted.
receive a transfer request for second data resources, the transfer request including metadata defining a second condition; (Fig. 6, ref 602, in further view of at least ¶¶83, 85)
Examiner’s Note: Examiner takes the stance that one of ordinary skill in the art reading Akula understands that the payment requests are understood to include a payment amount (e.g., the “second data resources”).
based on the metadata, determine whether the data resources associated with the conditional data record or the data resources associated with … [another] data record should be used to approve the transfer request; (¶85 in further view of Fig. 6, ref 604; See also ¶29 in further view of at least ¶¶49-51)
Examiner’s note: “to approve the transfer request” is a statement of intended use.
approve the transfer request. (¶87. See also at least Fig. 6, ref 608, in further view of ¶87, abstract, and ¶¶3, 15; in an alternative interpretation, see ¶85: “…the evaluation at step 604 is performed in order to determine which of one or more sources funds should be apportioned from for disbursement … to satisfy the electronic payment request.”)
Akula arguably implicitly discloses, but fails to explicitly teach: update a … data record based on the first data resources (¶43 of Akula). However, Kanwar discloses:
update a … data record based on the first data resources (¶5)
Accordingly, it would have been rendered obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have the conditional data records of Akula be updated based on the first data resources, as disclosed by Kanwar, resulting in updating the conditional data record based on the first data resources, in order to advantageously maintain accurate apportionments (e.g., balances) from each of the fund sources as they’re received in the holding account.
Akula in view of Kanwar fails to expressly disclose or otherwise render obvious the conditional data record recording only data resources associated with conditions restricting use.
However, Black discloses:
a conditional data record based on the first data resources by recording only data resources associated with conditions restricting use and by excluding data resources defined in a non-conditional data record that records data resources having no conditions restricting use; (¶¶11, 12, 25, claim 7)
¶11: Applicant has recognized that there is a need for methods, systems, apparatus, means and computer program products for disbursing and processing a combination of EBT programs having restricted funds and other benefit programs having unrestricted funds via a single payment card.
¶12 In some embodiments, a payment card associated with restricted funds account and an unrestricted funds account is provided that allows a beneficiary of a benefits program disbursing restricted use funds and a benefits program disbursing unrestricted funds to initiate purchase transactions with the payment card. The unrestricted funds account and the restricted funds account are each associated with their appropriate banking payment processing network. The result is a method, apparatus, and system that enables both restricted use and unrestricted use benefits disbursement and access via a single payment card.
Claim 7: … wherein the unrestricted funds account is associated with at least one of a credit card account, a debit card account, …
¶25: It should be appreciated that the restricted funds account and the unrestricted funds accounts may each be associated with one or more accounts. For example, the restricted funds account may be associated with Food and Nutrition Services food stamp program benefits administered by the U.S. Department of Agriculture (FNS), Supplemental Food Program for Women, Infants, and Children (WIC) benefits, etc. that place restrictions on the particular types of purchase transactions for which the funds can be used. The unrestricted funds account may be associated with more than one type of benefits program that does not place any restrictions on the particular types of purchase transactions for which the funds can be used (child support, unemployment insurance, etc.).
Accordingly, it would have been rendered obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the holding account of Akula in view of Kanwar to be split the account balances from each of the fund sources into an unrestricted account comprising unrestricted accounts, resulting in the holding account to comprise a conditional data record based on the first data resources by recording only data resources associated with conditions restricting use and by excluding data resources defined in a non-conditional data record that records data resources having no conditions restricting use, in order to advantageously increase financial visibility / saliency of the unrestricted and restricted accounts, respectively.
Despite Akula generally disclosing configurable rules for transaction processing (e.g., ¶¶48, 49, 53), Akula fails to disclose, but Van Der Veen discloses:
determine that the conditional data record records third data resources associated with the second condition, the third data resources being insufficient to complete the transfer request; (Fig. 11, refs 1104, 1106, 1116, in further view of at least ref 1110 indicating multiple categories, each corresponding to a given subaccount)
determine that the non-conditional data record records fourth data resources; (Fig 11, ref 1122, in further view of ¶83) and
determine that a sum of the third data resources and the fourth data resources is sufficient to approve the transfer request, (Fig 11, ref 1122, in further view of ¶83)
update the conditional data record to reduce, to zero, the recorded data resources associated with the second condition; (Fig. 11, refs 1106, 1116; ¶65; ¶71) and update the non-conditional data record to reduce the recorded data resources by a difference between the second data resources and the third data resources. (Fig. 11, refs 1122, 1124, 1118; Fig. 4, refs 422, 424, 418; ¶65; ¶71)
Accordingly, it would have been rendered obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the system of Akula in view of Kanwar and Black to incorporate the transaction processing technique of Van Der Veen (e.g., Fig. 11) as part of their priority rules, resulting in the system of Akula in view of Kanwar and Black to implement the above process as their account selection technique, in order to advantageously reduce the need for separate authorization request processing, (¶¶81, 83 of Van Der Veen).
With respect to claims 14 and 20, they are rejected under the same rationale as claim 1 (above), mutatis mutandis.
Claims 6 and 19
With respect to claims 6 and 19, Akula fails to expressly teach, but Van Der Veen discloses:
wherein the processor is further configured to, prior to approving the transfer request (Fig. 11, ref 1118), determine the second data resources including the second condition recorded by the conditional data record are sufficient to approve the transfer request (Fig. 11, refs 1104, 1106, 1108; ¶81),
Accordingly, it would have been rendered obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the system of Akula in view of Kanwar and Black to incorporate the transaction processing technique of Van Der Veen (e.g., Fig. 11) as their priority rules, resulting in the system of Akula in view of Kanwar and Black to implement the above process as their account selection technique, in order to advantageously reduce the need for separate authorization request processing (¶¶81, 83 of Van Der Veen).
Claim 7
With respect to claim 7, Akula in view of Kanwar, Black, and Van Der Veen render obvious the system of claim 1. Akula additionally discloses:
wherein the first and second condition are related to one or more of a transfer category, a set of specific transferees, or a period. (At least ¶¶26, 49-51)
Claim 11
With respect to claim 11, Akula in view of Kanwar, Black, and Van Der Veen render obvious the system of claim 1. Akula additionally discloses:
wherein the metadata included in the transfer request is defined by a transferor of the transfer request. (¶83 in further view of at least ¶¶21, 28, 29, 49)
Claim 12
With respect to claim 12, Akula in view of Kanwar and Black and Van Der Veen renders obvious the system of claim 1. Akula of Akula in view of Kanwar and Black and Van Der Veen additionally discloses:
wherein the data resources recorded by the … data record and the data resources recorded by the non-conditional data record are fungible data resources. (abstract of Akula – Examiner notes one of ordinary skill in the art understands funds as fungible).
Akula in view of Kanwar fails to teach, but Black discloses:
Conditional data record / non-conditional data record (See mapping of claim 1 for obviousness rationale, mutatis mutandis).
Claims Rejected in View of Akula, Kanwar, Black, Van Der Veen, and Boal
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Akula in view of Kanwar, Black, and Van Der Veen, in further view of US 20090138396 A1 (Boal).
Claim 8
With respect to claim 8, Akula in view of Kanwar and Black renders obvious the system of claim 1. Akula additionally discloses:
wherein the first condition is related to …time …, and wherein the processor is further configured to: (¶51)
Akula in view of Kanwar and Black fails to teach, but Boal suggests:
wherein the first condition is related to a time period, and wherein the processor is further configured to: determine that an amount of time between a time of the first transfer and a current time exceeds the time period; and send a second transfer of the first data resources to a transferor of the first transfer. (¶3 of Boal).
Accordingly, it would have been rendered obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the holding account of Akula in view of Kanwar, Black, and Van Der Veen, to determine that an amount of time between a time of the first transfer and a current time exceeds a time period and send a second transfer of the first data resources to a transferor of the first transfer, as disclosed in Boal, in order to advantageously return unspent funds obtained from the funds sources of Akula.
Claims Rejected in View of Akula, Kanwar, Black, Van Der Veen, and Francis
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Akula in view of Kanwar, Black, and Van Der Veen, in further view of US 20240127223 A1 (Francis).
Claim 9
With respect to claim 9, Akula in view of Kanwar and Black renders obvious the system of claim 1. Akula additionally discloses:
generate a user interface that displays a metric … (Fig. 7 of Akula).
Akula fails to teach, but Black discloses the conditional data record and non-conditional data record, as disclosed in parent claim 1.
Akula in view of Kanwar and Black fails to teach, but Francis discloses:
displays a metric from a combination of … [a] data record and … [another] data record. (Fig. 6, ¶75)
Accordingly, it would have been rendered obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to display a combined balance of the holding account of Akula in view of Kanwar, Black, and Van Der Veen, resulting in generating a user interface that displays a metric from a combination of the conditional data record and the non-conditional data record, in order to advantageously display a total amount of value stored in the holding account of Akula, thus increasing saliency of overall value stored therein.
Claims Rejected in View of Akula, Kanwar, Black, Van Der Veen, Francis, and Minnis
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Akula in view of Kanwar, Black, Van Der Veen, and Francis, in further view of US 20040088232 A1 (Minnis).
Claim 10
With respect to claim 10, Akula in view of Kanwar, Black, Van Der Veen, and Francis renders obvious the system of claim 9. Akula additionally discloses:
generate a user interface that displays at least one metric, each of the at least one metrics reflecting data resources including a distinct condition recorded by the conditional data record … (Fig. 9 of Akula, see the two limits).
Arguendo, Minnis discloses: generate a user interface that displays one or more metrics, each of the one or more displayed metrics reflecting data resources associated with a distinct condition recorded by the conditional data record (Fig. 16D, see “Emergency Relief” and “Career Placement” restricted class assets, and a corresponding amount).
Accordingly, it would have been rendered obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have the system of Akula in view of Kanwar, Black, Van Der Veen, and Francis display each of the one or more displayed metrics reflecting data resources associated with a distinct condition recorded by the conditional data record, as disclosing in Minnis, in order to advantageously increase the saliency to user of the allocation of balances with respect to conditions / restrictions.
No Prior Art Rejection
Claims 2, 3, 15, and 16 overcome 35 U.S.C. 102/103 for the following reasons:
Based on prior art search results, the prior art of record neither anticipates nor renders obvious the claimed subject matter when viewed either as an ordered combination.
The closest prior art of record includes:
Akula, Kanwar, Black, and Van Der Veen, as applied in the parent claims.
US 20240257091 A1 (Ducker). Ducker discloses a method which includes a step to determine … data resources associated with …[a] data record are sufficient to complete the transaction request without first evaluating … [another] data record. (¶50: “…the transaction approval logic 222 may first determine whether a single, default or preferred account (e.g., one associated with the card) has a sufficient balance prior to an analysis of multiple customer accounts 310. … (NO in step 406), the transaction is generally approved, and the process proceeds to step 414, in which the account selection logic 224 …select one or more accounts from the customer accounts 310 to fund the transaction.”, in further view of Fig. 5, refs 402, 404, 406)
US 20110295745 A1 (White). At least Figs. 6-7 and corresponding disclosure is pertinent, as the authorization and deducting of account values amongst multiple accounts are decoupled, similar to the Ducker prior art.
Claim 13 overcomes the 35 U.S.C. 102/103 for the following reasons:
Based on prior art search results, the prior art of record neither anticipates nor renders obvious the claimed subject matter when viewed either as an ordered combination.
The closest prior art of record includes:
United States Patent Application Publication No. US 20210240379 A1 (Dunjic). Dunjic discloses: wherein prior to receiving the first transfer of first data resources to an account, the processor is further configured to: send, to a transferor of the first transfer, a confirmation of acceptance of the first condition restricting use of the first data resources. (¶¶135-141). Examiner notes this shares the same Applicant and a same inventor as the instant application. However, Examiner failed to find a prima facie obviousness rationale, short of hindsight bias, rendering the entirety of claim 13 obvious. In other words, Examiner failed to find a convincing obviousness rationale that met the prima facie standard of obviousness, given Akula in view of Kanwar, Black, and Van Der Veen, in further view of Dunjic.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 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 MARK A MALKOWSKI whose telephone number is (313)446-6624. The examiner can normally be reached Monday - Friday, 9:00AM - 5:00PM ET.
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, Matthew Gart can be reached on (571) 272-3955. 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.
/M.A.M./Examiner, Art Unit 3696
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696
1 I.e., all the previous 112(b) rejections.
2 I.e., all the claims.
3 I.e., all the claims.
4 See detailed 103 rejections further within office action for each claim’s specific combination of prior art.
5 See pages 12-17 of Applicant Remarks received 01/20/2026.
6 Page 12 of Remarks.
7 Examiner notes the citation states the resources may be digital goods, in a non-limiting embodiment, per ¶122. At best, incorporation of the term “…digital…” indicates the claims merely limiting the use of the abstract idea to a particular technological environment (MPEP § 2106.05(h)) at step 2A Prong II of the Alice/Mayo test.
8 E.g., ¶¶50-51.
9 Page 12-14 of Remarks.
10 Pages 12-15 of Remarks.
11 I.e., a technological solution to a technological problem.
12 E.g., currency
13 E.g., non-conditional financial account (e.g., financial account without any restrictions)
14 Examiner notes method claim 14, under broadest reasonable interpretation, does not have any additional elements, of which are required for any integration into a practical application or amounting to significantly more – see MPEP §2106.04 II A 2: “If there are no additional elements in the claim, then it cannot be eligible.”
15 I.e., a technological solution to a technological problem.
16 I.e., “significantly more” than the judicial exception.
17 See MPEP § 2106 I.
19 Examiner notes method claim 14, under broadest reasonable interpretation, does not have any additional elements, of which are required for any integration into a practical application or amounting to significantly more – see MPEP §2106.04 II A 2: “If there are no additional elements in the claim, then it cannot be eligible.”
Prosecution Insights