DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This office action is in response to applicant's communication of December 9, 2025. The rejections are stated below. Claims 1-13 are pending and have been examined.
Response to Amendment/Arguments
2. Applicant’s arguments concerning 35 U.S.C. 101 have been considered but are not persuasive. The claims describe a method and system for migrating payment instrument portfolios through a series of steps involving a payment network computer and its interactions with issuer computers and partner computers. The steps outlined appear to revolve around the organization of data and processes, which fall under the abstract idea of methods for organizing human activity. While Applicant emphasizes the integration of APIs and automated processes, the core of the claims appears to be the organization of financial data and processes rather than a technology that provides a fundamentally new way of computing or processing. The implementation of these methods using a computer does not transform the nature of the abstract idea into a patentable invention. The arguments suggest that the claimed invention solves a longstanding technical challenge. However, the fundamental nature of the claims still appears to align with the judicial exceptions outlined by the courts, which include organizing human activity.
Applicant’s arguments concerning 35 U.S.C. 102 have been considered and are persuasive so therefore the rejection has been withdrawn.
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.
7. Claims 1-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of portfolio management.
8. The Examiner has identified independent method Claim 1 as the claim that represents the claimed invention for analysis.
9. Claim 1 is directed to a method which is one of the four statutory categories of invention (Step 1: YES).
10. Claim 1 recites “method of migrating a payment instrument portfolio, the method comprising: receiving, by a …, a payment instrument portfolio conversion request message from an … to convert a payment instrument portfolio from a prior payment instrument scheme to a new payment instrument portfolio based on a new payment instrument scheme, the request message comprising information about existing payment instrument references from the prior payment instrument scheme;
creating, by the …, enrollments based on the information about the existing payment instrument references;
sending, by the …, a portfolio migration event notification message to a payment instrument requestor partner computer associated with a payment network payment instrument requestor identifier which is subscribed to a new event type for the payment instrument portfolio migration;
receiving, by the …, a provision payment instrument from the …; and
sending, by the …, a new payment instrument provisioning approval request message to the issuer computer”. These limitations (with the exception of italicized limitations) describe an abstract idea of portfolio management and corresponds to Certain Methods of Organizing Human Activity (fundamental economic practice). Accordingly, the claim 1 recites an abstract idea (Step 2A: Prong 1: YES).
11. The claim also recites as additional elements such as “payment network computer, issuer computer, payment instrument requestor partner computer” which do no more than implement the abstract idea and/or provide a particular technological environment. Therefore, claim 1 is directed to an abstract idea without a practical application (Step 2A - Prong 2: NO).
12. Further, as the additional elements of claim 1 do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field. Thus, claim 1 is not patent eligible (Step 2B: NO).
13. Claim 11 also recites the abstract idea of portfolio management which is grouped under “organizing human activity…” [fundamental economic practice; ] in prong one of step 2A (MPEP 2106.04). Claim 30 includes the additional elements of “payment network computer comprising a processor and a memory for storing machine executable instructions that when executed by the processor, issuer computer, and payment instrument requestor partner computer”. The additional elements do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement to the functioning of a computer, or lo any other technology or technical field (MPEP 2106.05(a}.
14. Claim 2 recites “wherein the payment instrument portfolio conversion request message comprises a list of consumer references from the prior payment instrument scheme and the payment network payment instrument requestor identifier and wherein creating the enrollments is based on the list of consumer references and the payment network payment instrument requestor identifier” which further defines the abstract idea.
14. Claim 3 recites “wherein the new event type for the payment instrument portfolio migration comprises current push provisioning event request data for a current payment instrument and meta data associated with the prior scheme” which further defines the abstract idea.
13. Claim 4 recites “wherein the provision payment instrument comprises a payment instrument reference received in the payment instrument portfolio conversion request message, and wherein the provision payment instrument is based on the payment instrument portfolio conversion request message from the … to the … using a payment instrument reference received in the portfolio migration event notification message” which further define the abstract idea. The claim includes “issuer computer” and “payment network computer” as additional elements. The additional elements do no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. And, as they do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field.
13. Claim 5 recites “comprising, identifying, by the …, the information about existing payment instrument references from the prior payment instrument scheme” which further define the abstract idea. The claim includes “payment instrument requestor partner computer” as an additional element. The additional element does no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. And, as they do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field.
13. Claim 6 recites “receiving, by the … from the …; and sending, by the …, the new payment instrument to the payment instrument requestor partner computer, wherein the new payment instrument comprises a prior scheme payment instrument reference for TAR/API issuers in provisioning approval request to the issuer” which further define the abstract idea. The claim includes “payment network computer”, “issuer computer”, and “payment instrument requestor partner computer” as additional elements. The additional elements do no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. And, as they do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field.
13. Claim 7 recites “comprising sharing, by the …, the new payment instrument with a …” which further define the abstract idea. The claim includes “payment instrument requestor partner computer” and “merchant payment instrument requestor computer” as additional elements. The additional elements do no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. And, as they do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field.
14. Claim 8 recites “wherein the payment instrument is a token” which further defines the abstract idea.
14. Claim 9 recites “wherein the payment instrument requestor is a payment instrument service provider” which further defines the abstract idea.
13. Claim 10 recites “receiving, by the …, the payment instrument portfolio request message from a primary account number (PAN) lifecycle management (LCM) …” which further define the abstract idea. The claim includes “payment network computer” and “API executable on the issuer computer” as additional elements. The additional elements do no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. And, as they do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field.
13. Claim 12 recites “receive approval of the provisioning of the new payment instrument provisioning approval from the …; and send the new payment instrument to the …, wherein the new payment instrument comprises a prior scheme payment instrument reference for TAR/API issuers in provisioning approval request to the issuer” which further define the abstract idea. The claim includes “issuer computer” and “payment instrument requestor partner computer” as additional elements. The additional elements do no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. And, as they do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field.
13. Claim 13 recites “receive the payment instrument portfolio request message from a primary account number (PAN) lifecycle management (LCM)” which further define the abstract idea. The claim includes “processor” and “API executable on the issuer computer” as additional elements. The additional elements do no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. And, as they do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field.
Conclusion
THIS ACTION IS MADE FINAL. 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 KEVIN T POE whose telephone number is (571)272-9789. The examiner can normally be reached on Monday-Friday 9:30am through 6pm EST.
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, Ryan Donlon can be reached on 571-270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/K.T.P/Examiner, Art Unit 3692 /KEVIN T POE/
/RYAN D DONLON/Supervisory Patent Examiner, Art Unit 3692 April 14, 2026
Prosecution Insights