DETAILED ACTION
Continued Examination Under 37 CFR 1.114
1. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/24/2025 has been entered.
2. This Non-Final Office Action is in response to Applicant’s RCE filing on 7/24/2025. Claims 1-12 are currently pending. Claims 13-20 were cancelled. The earliest effective filing date of the present application is 7/12/2021.
Claim Rejections - 35 USC § 101
3. 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.
4. Claims 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed a judicial exception (i.e., an abstract idea) without significantly more.
Step 1 – Statutory Categories
As indicated in the preamble of the claim, the examiner finds the claim is directed to a process, machine, manufacture, or composition of matter. Claims 1-12 are systems (machine).
Step 2A – Prong 1: was there a Judicial Exception Recited
Claim 1 recites the following abstract concepts (bolded) that are found to include “abstract idea”:
1. A payment system including a data store, wherein said payment system is arranged to initiate a payment process upon an effective date and to a payment recipient determined by effective date information and payment recipient information stored in a payment record that is stored in said data store, wherein said payment process includes a funds transfer step not initiated by said payment system, and wherein occurrence of said funds transfer step is recorded in an item record in said data store, said payment system comprising:
a computing device including a processing unit and a memory communicably connected with and readable by said processing unit, said memory containing instructions that, when executed by said processing unit, cause said processing unit to:
retrieve by a first parser first bank files from a computational platform operated by or on behalf of a first bank that maintains a virtual account number (VAN) disbursement account;
read by said first parser first information from said retrieved first bank files including a VAN item information;
store said VAN item information in said data store;
retrieve by a second parser second bank files from a computational platform operated by or on behalf of a second bank that maintains one or more phone pay (PP) disbursement accounts, read by said second parser information from said retrieved second bank files including a PP item information:
store said PP item information in said data store;
perform a matching process to attempt to identify an association between said payment record and said item record, wherein said item record includes at least one of said VAN item information or said PP item information, wherein said matching process records an exception record in said data store, in response to a failure of said matching process to identify said association, wherein said exception record includes exception type information;
expose, via a first application interface accessible via a network, information from said item record and said exception type information from said exception record, including presenting said information via a first user interface of a computing platform of a debt settlement company configured review and evaluate said exception type information, wherein said first application interface is invoked by said computing platform of said debt settlement company to call a first function hosted by said computing device that returns said exception type information; and
receive, via a second application interface accessible via said network, a selected response code based on said review and evaluation of said exception type information by said debt settlement company computing platform via the first user interface, wherein said selected response code contains information sufficient to perform operations via said payment system that result in said association being identified, and wherein said second application interface is invoked by said computing platform of said debt settlement company to call a second function hosted by said computing device that returns said list of said response codes.
Claim 1 is directed to a series of steps for categorizing, making available, and associating with potential remedial steps, exception events that arise from the inability of a matching process to properly identify an association between a scheduled payment and an item in a bank file by which the scheduled payment was effectuated in order complete a transaction record and item record, creating an exception record based on a failure to match, exposing information from said item record and said exception type information from said exception record, and receive a selected response code, which is a commercial/legal interaction (sales activities) and thus grouped as a certain method of organizing human interactions. Thus, the claim recites an abstract idea.
Step 2A – Prong 2: Can the Judicial Exception Recited be integrated into a practical application
Limitations that are indicative of integration into a practical application:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
Limitations that are not indicative of integration into a practical application:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)
Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
The independent claims do not include additional elements that are sufficient to amount to a practical application. This judicial exception is not integrated into a practical application because unbolded additional elements (see above) are merely generically recited computer elements that do not add a meaningful limitation to the abstract idea because they amount to simply the abstract idea on a generic computer. Accordingly, alone and in combination, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Step 2B – Significantly More Analysis
The independent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and in combination, the unbolded additional elements (see above) amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Specifically, “said first application interface is invoked by said computing platform of said debt settlement company to call a first function hosted by said computing device” and “said second application interface is invoked by said computing platform of said debt settlement company to call a second function hosted by said computing device” are describing how computer coding operates. The claim is not patent eligible.
Dependent claims 4-7 and 9-12 depend from rejected claim 1, which fail to provide additional elements that were not already introduced that are sufficient to amount to significantly more than the judicial exception. Claim 8 introduces the additional element of a “public network,” which still recited at such a high level to be considered “apply it.”
Claims 1-12 fail to provide additional elements that are sufficient to amount to significantly more than the judicial exception or a practical application.
Allowable Subject Matter over Prior Art
5. The following is a statement of reasons for the indication of allowable subject matter:
The reason for allowable subject matter of claims 1-12 in the instant application is because the prior art of record fails to teach the overall combination as claimed. Therefore, it would not have been obvious to one of ordinary skill in the art to modify the prior art to meet the combination above without unequivocal hindsight and one of ordinary skill would have no reason to do so. In Remarks (11/11/2024), Applicant argues that the nearest art, Oppenheimer U.S. Pat. Pub. No. 2005/0212767 to and Gilder U.S. Pat. Pub. No. 2014/0040182, does not teach the amended limitations, the examiner agrees. Neither Oppenheimer nor Gilder teach the specifically claimed matching exception process. Upon further searching the examiner could not identify any prior art to teach these limitations. The prior art on record, alone or in combination, neither anticipates, reasonably teaches, not renders obvious the Applicant' s claimed invention.
Response to Arguments
6. Applicant's arguments filed 12/4/2025 have been fully considered but they are not persuasive.
Applicant argues novel matching process and the API arrangement improve and streamline the exception identification and resolution process, thus improving operation of the payment system computer. Examiner disagrees. The claims are directed to a business problem with a business solution. Any improvement found in the claim is an improvement to the abstract idea itself, rather than a technological improvement. Here, Applicant is merely using computers and application interfaces technologies as tools to implement the functions of the abstract idea. There is no improvement to the computer itself or the APIs. The improvement to the process and identification is the improvement to the abstract idea. In contrast, the MPEP cite to “a modification of Internet hyperlink protocol to dynamically produce a dual-source hybrid web page” (i.e., the invention of DDR Holdings) to demonstrate an “improvement in the function of a computer or an improvement to other technology or technical field.” That is, the improvements achieved by the claimed invention appear to be directed towards improvements to business practices (i.e., efficiency and laborious, e.g., see [Remarks 12/4/2025 pgs. 6-7]) and/or to commerce (i.e., prevent scrutiny, e.g., see [pg. 4] of the originally filed Specification) rather than technical/technological improvements to those disclosed in, for example, DDR Holdings.
Examiner also notes that novelty does not affect the analysis
of §101 . MPEP §2106.05 states:
Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination. See Mayo, 566 U.S. at 91, 101 USPQ2d at 1973 (rejecting "the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101 "). As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("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."). In addition, the search for an inventive concept is different from an obviousness analysis under 35 U.S.C. 103. See, e.g., BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) ("The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . . [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces."). Specifically, lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional elements. 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. The distinction between eligibility (under 35 U.S.C. 101) and patentability over the art (under 35 U.S.C. 102 and/or 103) is further discussed in MPEP § 2106.05(d).
Examiner maintains position.
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Notice of References Cited, PTO form 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL JARED WALKER whose telephone number is (303)297-4407. The examiner can normally be reached Monday-Thursday 9:00 AM -5:00 PM CT.
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/MICHAEL JARED WALKER/Primary Examiner, Art Unit 3687 Michael.walker@uspto.gov