DETAILED ACTION
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 .
Status of Claims
Claims 1-2, 4, 7-8, 10-13, 15, and 18-20 are amended. Claims 1-20 filed December 30, 2025 are pending and are hereby examined.
Double Patenting
Claims 1-20 of this application is patentably indistinct from claims 1-20 of Application No. 18/476716 and claims 1-20 of 18/476662. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
Claim Rejections - 35 USC § 101
4. 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.
5. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
6. Step 1 Statutory Category: Claims 1-11 are directed to a system, claims 12-19 are directed to a method, and claim 20 is directed to a non-transitory computer readable medium, all of which are statutory. Claims 1-20 are statutory classes of invention.
7. Step 2A – Prong 1: Judicial Exception Recited: Nevertheless, independent claims 1, 12, and 20 recite an abstract idea of applying data transformations for payroll.
The independent claims 1, 12, and 20 recite the following limitations which fall under commercial or legal interactions:
…;
…;
identify a plurality of… for a company, wherein each respective… is configured to process payroll transactions for employees in a unique geographic location of a plurality of geographic locations, and the respective… is associated with the unique geographic location;
for each respective…:
determine, from a plurality of data types, a respective subset of data types unique to the… and needed to process the payroll transactions based on the unique geographic location associated with the…;
and determine a respective data format required by the respective… to process the payroll transactions;
receive payroll data of an employee;
in response to determining that the employee is associated with a first geographic location of the plurality of geographic locations, generate a change file specific to a first payroll engine of the plurality of payroll engines that is associated with the first geographic location by transforming a subset of the payroll data corresponding to a first subset of data types unique to the first… into a first data format required by the first…;
and transmit the change file to the first… to cause the first… to process the payroll transactions for the employee.
8. According to the MPEP, "Commercial interactions" or "legal interactions" include agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. Clearly, applying data transformations for payroll falls under sales activities, therefore commercial or legal interactions. If the claim limitations, under the broadest reasonable interpretation, covers performance of the limitations as a commercial or legal interaction, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
9. Step 2A – Prong 2: Practical Application: This judicial exception is not integrated into a practical application because the claim as a whole merely recites applying data transformations for payroll with generally recited computer elements such as a memory, hardware processor, and payroll engine, which in these steps are recited at a high-level of generality such that it amounts to more than mere instructions to apply the exception using a generic computer component, and are merely invoked as tools for applying data transformations for payroll. Accordingly, these elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Simply implementing the abstract idea on a generic computing environment is not a practical application of the abstract idea, and does not take the claim out of the Commercial or Legal Interactions subgrouping of Certain Methods of Organizing Human Activity grouping. The claims are directed to an abstract idea.
10. Step 2B – Inventive Concept: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered individually and as an ordered combination, they do not add significantly more (also known as “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of a memory, hardware processor, and payroll engine to perform these steps 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. Accordingly, these additional elements, do not change the outcome of the analysis, when considered individually and as an ordered combination as there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The claims are not patent eligible.
11. Regarding dependent claims 2, 7-8, 10, 13, and 18-19, although these claims recite a generally recited hardware processor and payroll engine, these claims merely narrow the abstract idea of applying data transformations for payroll, and these claims neither integrate into a practical application nor contain additional elements which amount to significantly more than the abstract idea.
12. Regarding dependent claims 3-6, 9, 11, and 14-17, these claims merely narrow the abstract idea of applying data transformations for payroll, and these claims neither integrate into a practical application nor contain additional elements which amount to significantly more than the abstract idea.
13. Therefore, the limitations of the claims, when viewed individually and in ordered combination, are directed to ineligible subject matter.
Examiner Notes
14. Claims 1-20 are novel and unobvious over the prior art, however, there remains a pending 35 U.S.C. 101 rejection and double patenting rejection. The Examiner suggests incorporating dependent claims 3 and 4 (dependent on 2), 5-6, and 9 (dependent on 8) together into the independent claims. Finally, the Examiner suggests incorporating more hardware from the Specification and any unique arrangements of hardware, unique hardware, or unique ways the hardware is communicating. The aforementioned claim suggestions, in combination together, is suggested to help advance prosecution forward, although further search, examination, and consideration is required.
15. After further search and consideration, the most pertinent U.S. prior art was found to be Edwards et al (US 2016/0328799) and Schrage (US 2021/0004915). Schrage (US 2021/0004915) is directed to machine-learning based techniques for detecting payroll fraud. Edwards et al (US 2016/0328799) is directed to dynamic user interfaces and selective calculations. Ballard et al (Moving Forward with the On Demand Real-time Enterprise, NPL) was found to be the most pertinent NPL prior art, and is directed to an on demand real-time enterprise.
16. However, both the most pertinent U.S. prior art and NPL fail to disclose all of the limitations particularly:
in response to determining that the employee is associated with a first geographic location of the plurality of geographic locations, generate a change file specific to a first payroll engine of the first plurality of payroll engines that is associated with the first geographic location by transforming a subset of the payroll data corresponding to a first subset of data types unique to the first payroll engine into a first data format required by the first payroll engine;
and transmit the change file to the first payroll engine to cause the first payroll engine to process the payroll transactions for the employee.
17. No prior art cited here or in any previous Office Action neither fully anticipates nor supports a conclusion of obviousness with respect to the subject matter present in the independent claims, either alone or in combination. The limitations lacking in the prior art, in combination with the other limitations clearly claimed in the application, are novel and unobvious.
Response to Arguments
18. Applicant's arguments filed 12/30/25 have been fully considered and are not found to be convincing, therefore the double patenting rejection, and 35 U.S.C. 101 rejection are hereby maintained. With regards to the double patenting rejection, the argument is not found to be persuasive as the claimed subject matter in the present invention is similar to the claims of 18/476,716 and 18/476,662. However, the extensive claim amendments filed 12/30/25 overcome the previous 35 U.S.C. 103 rejection, which is hereby withdrawn.
a) Argument #1: Claims do not recite a judicial exception because it is not directed to “certain methods of organizing human activity” and therefore not an abstract idea
19. With regards to the 35 U.S.C. 101 rejection, the Examiner respectfully disagrees. First, the applicant argues that the claims are not directed to an abstract idea. The Examiner respectfully disagrees as the claims are related to applying data transformations for payroll, which would fall under certain methods of organizing human activity of commercial or legal interactions. According to MPEP 2106.04(a)(2), "commercial interactions" or "legal interactions" include agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. Applying data transformations for payroll is a form of marketing or sales activity or behavior, and is therefore an abstract idea.
b) Argument #2: Applicant argues that the abstract idea is integrated into a practical application under Step 2A, Prong 2 (improvement in technology)
20. The Examiner respectfully disagrees. In regards to improving the functioning of the computer/technology/technical field, the claims recite a memory, hardware processor, and payroll engine, and they are recited at a high level of generality, and therefore are merely using computer processing components for applying data transformations for payroll. After further review of the Specification, there is no disclosure of technical enhancements to any of the computing components, as in multiple instances of the Specification it discloses generally recited elements. Interpreting the claims in view of the Specification, the claims recite the judicial exception are mere instructions to apply the exception of applying data transformations for payroll (see MPEP 2106.05(f)). The elements recited above do not recite and are not directed to any elements or functions that improve underlying technology.
21. According to MPEP 2106.05(a), it states: “It is important to note that in order for a method claim to improve computer functionality, the broadest reasonable interpretation of the claim must be limited to computer implementation. That is, a claim whose entire scope can be performed mentally, cannot be said to improve computer technology. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 120 USPQ2d 1473 (Fed. Cir. 2016) (a method of translating a logic circuit into a hardware component description of a logic circuit was found to be ineligible because the method did not employ a computer and a skilled artisan could perform all the steps mentally). Similarly, a claimed process covering embodiments that can be performed on a computer, as well as embodiments that can be practiced verbally or with a telephone, cannot improve computer technology. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1328, 122 USPQ2d 1377, 1381 (Fed. Cir. 2017) (process for encoding/decoding facial data using image codes assigned to particular facial features held ineligible because the process did not require a computer).”
22. Furthermore, in determining whether a claim integrates a judicial exception into a practical application, a determination is made of whether the claimed invention pertains to an improvement in the functioning of the computer itself or any other technology or technical field (i.e., a technological solution to a technological problem). Here, the claims recite generic computer components, a memory, hardware processor, and payroll engine, i.e., that are recited at a high level of generality and are recited as performing generic computer functions customarily used in computer applications. The pending claims do not describe a technical solution to a technical problem. The pending claims are directed to solving the problem of applying data transformations for payroll. The claims of the instant application describe an improvement to a business process i.e., applying data transformations for payroll, not improvement in the functioning of the computer itself or an improvement to any other technology or technological field. Therefore, the claims do not integrate into a practical application either by improvement to a computer/technology/technical field.
23. The claims are not directed to any improvement in computer technology. The claims are directed to an abstract idea of real-time payroll data validation. The applicant must take into consideration that in order to view the claims as supplying an inventive concept the technological improvement must be present within the claims themselves (Accenture Global Servs., GmbH v. Guidewire Software, inc., 108 USPQ2d 1173 (Fed. Cir. 2013)), (Synopsys, inc. v. Mentor Graphics Corp... 120 USPQ2d 1473 (Fed. Cir. 2016). Additionally, the Specification does not provide any evidence that how the claims provide an improvement to functioning of computing systems or technology. The applicant failed to provide persuasive arguments supported by any necessary evidence to demonstrate that one of ordinary skill in the art would understand that the disclosed invention improves technology.
c) Argument #3: Applicant argues that the claim elements are significantly more than the abstract idea under Step 2B
24. Having determined under step one of the Mayo/Alice framework that claims 1, 12, and 20 are directed to an abstract idea, we next consider under Step 2B of the Guidance, the second step of the Mayo/Alice framework, whether the claims include additional elements or a combination of elements that provides an “inventive concept,” i.e., whether an additional element or combination of elements adds specific limitations beyond the judicial exception that are not “well-understood, routine, conventional activity” in the field (which is indicative that an inventive concept is present) or simply appends well-understood, routine, conventional activities previously known to the industry to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 56.
25. Under step two of the Mayo/Alice framework, the elements of each claim are considered both individually and “as an ordered combination” to determine whether the additional elements, i.e., the elements other than the abstract idea itself, “transform the nature of the claim” into a patent-eligible application. Alice Corp., 573 U.S. at 217 (citation omitted); see Mayo, 566 U.S. at 72-73 (requiring that “a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself’ (emphasis added) (citation omitted)).
26. Here the only additional elements recited in claims 1, 12, and 20 beyond the abstract idea are: a memory, hardware processor, and payroll engine, i.e., generic computer components. See Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”). Applicant has not identified any additional elements recited in the claim that, individually or in combination, provides significantly more than the abstract idea.
27. Accordingly, there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself. The dependent claims do not resolve the deficiency of the independent claims and accordingly stand rejected under 35 U.S.C. 101 based on the same rationale.
Conclusion
28. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Ballard et al (Moving Forward with the On Demand Real-time Enterprise, NPL) is found to be the most pertinent NPL prior art.
29. 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).
30. 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.
31. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FAWAAD HAIDER whose telephone number is (571)272-7178. The examiner can normally be reached Mon-Fri 8 AM to 5 PM.
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33. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Florian Zeender can be reached on 571-272-6790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FAWAAD HAIDER/Primary Examiner, Art Unit 3627