DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
This is the Final Office Action in response to the Amendment filed on July 10, 2026, for Application No. 18/528,463, filed on December 04, 2023, title: “Systems and Methods For Processing Payments To A Third Party Providing A Product Or Service”. This Office Action includes a new 35 USC 112 rejection.
Status of the Claims
Claims 2-6, 8-11, 17-23, 25-26, 34-35, 38-39, and 41-48 were pending. By the 07/10/2026 Amendment, claims 2-6, 8-11, 23, 25-26, 34-35, 41-47 have been amended, new claims 49-63 have been added, and claims 1, 7, 12-16, 24, 27-33, 36-37, and 40 are cancelled. Accordingly, claims 2-6, 8-11, 17-23, 25-26, 34-35, 38-39, and 41-63 are pending in the application and have been examined.
Priority
This Application was filed on 12/04/2023 and is a CON of US Application No. 18/128,856 filed on 03/30/2023, which is a CON of US Application No. 17/351,414 filed on 06/18/2021 (Patented No. 11,829,963), which is a CON of US Application No. 14/721,414 filed on 05/26/2015 (Patented No. 11,068,865), which is a CON of US Application No. 14/243,071 filed 04/02/2014 (abandoned), which is a CON of US Application No. 12/709,810 filed 02/22/2010 (Patent No. 8,732,082), which is a CIP of 12/499,421 filed 07/08/2009 (Patent No. 8,732,080), which claims the benefit of US Provisional Application No. 61/157,097 filed 03/03/2009.
For the purpose of examination, the date 03/03/2009 is considered to be the effective filing date.
Claim Rejections - 35 USC § 112 (New)
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 2-6, 8-11, 17-23, 25-26, 34-35, 38-39, and 41-63 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 41 recites:
Claim 41, A computer-implemented system comprising an integration of an Electronic Funds Transfer Network (EFTN) with a central system, wherein the EFTN is configured to transmit and receive electronic digital data with the central system to automatically generate and transmit third payment request for a tertiary transaction derived from an electronic digital information of a primary transaction processed by the EFTN and an electronic digital information of a secondary transaction processed by the EFTN, wherein the tertiary transaction involves a third transfer of funds relating to a payment associated with a reward program, from a merchant/business to a third party, subject to a consumer qualifying for a reward of the reward program, where the merchant/business has a first account associated with a terminal of a point-of-sale, and the consumer has first and second accounts held at a financial institution, the computer-implemented system further comprising:
at least one data store configured to store:
a merchant/business site ID of the merchant/business;
an ID of the first account of the consumer;
at least one business rule of the reward program;
first data associating the merchant/business site ID with the reward program;
second data associating the ID of the first account of the consumer with the reward program;
third data associating the at least one business rule of the reward program with the merchant/business site ID and the ID of the first account of the consumer; and
fourth data associating the at least one business rule of the reward program with an account of the third party;
further to the consumer executing the primary transaction at the point-of-sale using the first account of the consumer as a source of funds for a purchase of products and/or services from the merchant/business, the primary transaction represented by a first payment request transmitted by the terminal of the point-of-sale, processed through the EFTN and consisting essentially of a first transfer of funds from the first account of the consumer that exactly matches a value of the purchase of the products and/or services at the terminal to the first account of the merchant/business, the computer-implemented system configured to analyze the electronic digital information of the primary transaction to determine (i) that the merchant/business site ID matches the merchant/business site ID stored in the at least one data store, (ii) that the ID of the first account of the consumer matches the ID of the first account of the consumer stored in the at least one data store, and (iii) the value of the purchase of the products and/or services;
subject to successful matching of each of (i) the merchant/business site ID in the electronic digital information of the primary transaction with the merchant/business site ID stored in the at least one data store, and (ii) the ID of the first account of the consumer in the electronic digital information of the primary transaction with the ID of the first account of the consumer stored in the at least one data store, the computer-implemented system further configured to apply the at least one business rule of the reward program to the electronic digital information of the primary transaction to at least partially determine eligibility of the first account of the consumer for the payment reward;
subject to the first account of the consumer being eligible for the payment reward, the computer-implemented system further configured to compute a secondary transaction value for the payment reward, based at least in part on the electronic digital information of the primary transaction and the at least one business rule;
the computer-implemented system further configured to automatically initiate the secondary transaction from a second account of the merchant/business to the second account of the consumer for the secondary transaction value, by use of a first transaction processor to:
(a) initiate a second payment request, containing the electronic digital information of the secondary transaction, and
(b) transmit the second payment request via the EFTN to a financial institution of the second account of the merchant/business, thereby causing the second transfer of funds to be executed;
wherein the secondary transaction is accounted for in a separate transaction from the primary transaction on an account statement of the consumer;
subject to the first account of the consumer being eligible for the payment reward, the computer-implemented system further configured to compute a tertiary transaction value for the payment, based at least in part on the electronic digital information of the primary transaction, the electronic digital information of the secondary transaction and the at least one business rule;
the computer-implemented system further configured to automatically initiate the tertiary transaction that includes the payment from the merchant/business to the account of the third party, by use of a second transaction processor to:
(a) initiate the tertiary payment request, containing an electronic digital information of the tertiary transaction, and
(b) transmit the tertiary payment request via the EFTN to a financial institution of the merchant/business, thereby causing the third transfer of funds to be executed;
wherein the tertiary transaction is accounted for in a separate transaction from both the primary transaction and the secondary transaction, on an account statement of the merchant/business.
The present amended claim recites a computer-implemented system that integrates the EFTN with the central system and that the computer-implemented system performs all the method steps, see below:
A computer-implemented system … the computer-implemented system further comprising:
further to the consumer …., the computer-implemented system configured to analyze …;
subject to successful matching of each of …, the computer-implemented system further configured to apply …;
subject to the first account of the consumer … the computer-implemented system further configured to compute a secondary transaction value …;
the computer-implemented system further configured to automatically initiate the secondary transaction …;
subject to the first account of the consumer … the computer-implemented system further configured to compute a tertiary transaction value …; and
the computer-implemented system further configured to automatically initiate the tertiary transaction ….
The present claim is unclear and indefinite because a person of ordinary skill in the art would be uncertain whether the method steps are performed by the EFTN or the central system because the computer-implemented system comprises the integration of the EFTN and central system. The metes and bounds of the present claim cannot be understood because of the lack of definiteness in the claim. The Applicant’s Specification describes that:
Paragraph 14 of the Publication, Applicant’s Financial Transfer Network (FTN 100), that links the central system 110 to the Electronic Funds transfer Network 130 (EFTN 130), is the system that triggers the secondary and tertiary transactions from the EFTN to the Central system 110. The central computer (Central system 110) and database is the system that manages the distribution of funds according to customizable business rules:
[0014] The following detailed description outlines possible embodiments of the proposed invention for exemplary purposes. The invention is in no way intended to be limited to any specific combinations of hardware and software. As will be described below, the inventive system and method triggers secondary and tertiary transactions by means of a series of payment instructions from an electronic funds transfer (“EFT”) network to a central computer and database. The central computer and database collectively manage the distribution of funds according to customizable business rules defined by cardholders and merchants.
Paragraph 15 of the Publication describes that the Central system 110 and EFTN 130 are separated systems and that the FTN 100 links the Central system 110 to the EFTN 130 in order to establish the FTN 100 system.
[0015] FIG. 1 illustrates a block diagram of the financial transaction network 100 in accordance with an exemplary embodiment of the present invention. Financial transaction network 100 is a system that links one or more EFT networks, users, merchants and financial institutions towards a common purpose of facilitating an optimal model of consumption, savings and investment. In essence, the inventive system and method establishes a symbiotic relationship among all entities by providing a methodology for habitual savings to the user while integrating merchant loyalty rewards. For avoidance of doubt, it is noted that the term “user” is used interchangeably with the term “cardholder” and/or “consumer” throughout this application.
Paragraphs 18 of the Publication describes that the Central system 110 is configured to transmit and receive electronic digital data to and from the EFTN 130, and that the EFTN 130 is provided by the existing credit card providers to route the digital data from the banks or issuers. There is no changes to the EFTN 130 because it is provided by the existing credit card providers (Not the Applicant).
[0018] Central system 110 of FIG. 1 is configured to transmit and receive electronic digital data, via a transmission channel, switching service, modem or the like, to and from EFT network 130. EFT network 130 is provided by existing credit card providers to route digital data from banks, acquirers and/or issuers. FIG. 1 further illustrates merchant site 120, acquiring bank 122, acquirer processor 124, merchant bank 126, cardholder 140, card issuing bank 142, issuer processor 144, user-destination accounts 150, and EFT settlement bank 160.
Paragraph 23 of the Publication further describes that the EFTN 130 automatically triggers the generation of a unique user ID for cardholder and establish a temporary user registration with the central system 110, but not the third payment request for a tertiary transaction and secondary transaction.
[0023] In an alternative embodiment, whenever a primary transaction is routed through an affiliated network, EFT network 130 will automatically trigger the generation of a unique user ID for cardholder 140 and establish a temporary user registration with central system 110. This step would apply for any user that has not yet registered with the system. As will be discussed below, once the temporary account is registered, the user will be contacted and prompted to confirm his or her participation in the inventive program.
The present claim recites the computer-implemented system, that integrates the central system with the EFTN, to perform all the method steps. However, this renders the present claim to be unclear and indefinite because a person of ordinary skill in the art would be uncertain whether the method steps are performed by the EFTN or the central system. The metes and bounds of the present claim cannot be understood because of the lack of definiteness in the claim. In view of the Applicant’s Specification (see at least paragraphs 14, 15, 18, and 23), the Examiner interprets the method steps are performed by the central system.
While claim 42 recites a method comprises a series of steps and claim 49 recites a computer program comprises computer-readable medium and stored instructions, these claims use the same computer-implemented system as discussed in claim 41, are mirrored from claim 41, and have the same elements and limitations. Therefore, claims 42 and 49 also are rejected for the same reasons provided in claim 41 above.
Furthermore, dependent claims 2-6, 8-11, 17-23, 25-26, 34-35, 38-39, 43-48, and 50-63 are also rejected because of their dependency on their independent claims 41, 42, and 49.
The Applicant is requested to amend the claims so that the claims are no longer indefinite in response to this Office Action.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2-6, 8-11, 17-23, 25-26, 34-35, 38-39, and 41-63 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over the claims of US Patents No. 11,829,963, 11,068,865, 8,732,082, and 8,732,080. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present application recites substantially the same limitations as the claims of the patents with minor variations that would have been obvious to one of ordinary skills in the art. Also, both the Application and the patents are directed to the same filed of invention of processing payments to a third party for the third party providing a product or service, have the same inventor, and are commonly owned.
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 2-6, 8-11, 17-23, 25-26, 34-35, 38-39, and 41-63 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Under the Step 1 analysis, the claims are reviewed to determine whether they fall within the four statutory categories of patentable subject matter (i.e., process, machine, manufacture, or combination of matter).
Claims 2-6, 8-11, 17-23, 25-26, 34-35, 38-39, and 41-63 recite a computer-implemented system, method, and program to automatically generate and transmit a third payment request for a tertiary transaction. Therefore, the claims are directed to a machine, process, and manufacture which fall within the four statutory categories of invention (Step 1-Yes, the claims are statutory).
Step 2A Prong 1:
Under the Step 2A, Prong 1 analysis, the claims are reviewed to determine whether they recite a judicial exception by identifying if the claim limitations fall in one of the enumerated abstract idea groupings (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability.
Claim 42,
(a) A method of using an Electronic Funds Transfer Network (EFTN) configured to transmit and receive electronic digital data with a central system to automatically generate and transmit a third payment request for a tertiary transaction derived from an electronic digital information of a primary transaction processed by the EFTN and an electronic digital information of a secondary transaction processed by the EFTN, wherein the tertiary transaction involves a third transfer of funds relating to a payment associated with a reward program, from a merchant/business to a third party, subject to a consumer qualifying for a reward of the reward program, where the merchant/business has a first account associated with a terminal of a point-of-sale, and the consumer has first and second accounts held at a financial institution, the method comprising the EFTN integrated with the central system performing the steps of: (preamble step to declare the computer-implemented system – also see 35 USC 112 rejection above for indefiniteness)
(b1) storing in at least one data store a merchant/business site ID of the merchant/business;
(b2) storing in the at least one data store an ID of the first account of the consumer; associating in the at least one data store the merchant/business site ID with the reward program;
(b3) associating in the at least one data store the ID of the first account of the consumer with the reward program;
(b4) storing in the at least one data store at least one business rule of the reward program;
(b5) associating in the at least one data store the at least one business rule of the reward program with the merchant/business site ID and the ID of the first account of the consumer;
(b6) associating in the at least one data store the at least one business rule of the reward program with an account of the third party; (b1-b6 steps are data gathering and for registration with the central system to associate an ID and business rule – extra solution activity – see paragraphs 21 “that enables a user to register with central system 110 and predefine business rules. The inventive system is not limited to user registration via the system website. In alternative embodiments, central system 110 enables a user to register through a local bank or the like.”, 22-23, 29-31, 34, 39, 46, 58, 62, 73, 76, 78-79, 86-87, 94)
(c1) further to the consumer executing the primary transaction at the point-of-sale using the first account of the consumer as a source of funds for a purchase of products and/or services from the merchant/business, the primary transaction represented by a first payment request transmitted by the terminal of the point-of-sale, processed through the EFTN and consisting essentially of a first transfer of funds from the first account of the consumer that exactly matches a value of the purchase of the products and/or services at the terminal to the first account of the merchant/business, analyzing the electronic digital information of the primary transaction to determine (i) that the merchant/business site ID matches the merchant/business site ID stored in the at least one data store, (ii) that the ID of the first account of the consumer matches the ID of the first account of the consumer stored in the at least one data store, and (iii) the value of the purchase of the products and/or services; (processing financial data over the internet)
(c2) subject to successful matching of each of (1) the merchant/business site ID in the electronic digital information of the primary transaction with the merchant/business site ID stored in the at least one data store, and (ii) the ID of the first account of the consumer in the electronic digital information of the primary transaction with the ID of the first account of the consumer stored in the at least one data store, applying the at least one business rule of the reward program to the electronic digital information of the primary transaction to at least partially determine eligibility of the first account of the consumer for the payment reward; and (processing financial data over the internet)
(c3) subject to the first account of the consumer being eligible for the payment reward, computing a secondary transaction value for the payment reward, based at least in part on the electronic digital information of the primary transaction and the at least one business rule; (mathematical calculation)
(c4) automatically initiating the secondary transaction from a second account of the merchant/business to the second account of the consumer for the secondary transaction value, by using a first transaction processor to:
(c5) (a) initiate the second payment request, containing an electronic digital information of the secondary transaction, and
(c6) (b) transmitting the second payment request via the EFTN to a financial institution of the second account of the merchant/business, thereby causing the second transfer of funds to be executed;
(c7) wherein the secondary transaction is accounted for in a separate transaction from the primary transaction on an account statement of the consumer; and (c4-c7 – processing and transmitting financial data over the internet)
(c8) subject to the first account of the consumer being eligible for the payment reward, computing a tertiary transaction value for the payment, based at least in part on the electronic digital information of the primary transaction, the electronic digital information of the secondary transaction and the at least one business rule; and (mathematical calculation)
(c9) automatically initiating the tertiary transaction that includes the payment from the merchant/business to the account of the third party, by using a second transaction processor to:
(c10) (a) initiate the tertiary payment request, containing an electronic digital information of the tertiary transaction, and
(c11) (b) transmitting the tertiary payment request via the EFTN to a financial institution of the merchant/business, thereby causing the third transfer of funds to be executed;
(c12) wherein the tertiary transaction is accounted for in a separate transaction from both the primary transaction and the secondary transaction, on an account statement of the merchant/business. (c9-c12 – processing and transmitting financial data over the internet)
The above limitations (underlined), as drafted, is a process that, under its broadest reasonable interpretation, covers a method of organizing human activity but for the recitation of generic computer components (e.g., an EFTN, a central system, FTN, processors and data store). More specifically, the claim recites a method of computing a secondary and tertiary transaction values and initiating a secondary and tertiary transactions that include the payment from the merchant/business accounts to the accounts of the consumer and third party
The claim recites a method comprising essentially three main steps (a, b1-b6, and c1-c12):
First, step (a), the claim recites a preamble step reciting that the central system is integrated into the FTN. However, this step is broad and does not provide any details on how the integration is performed. Applicant’s claims and Specification do not provide any details to support the integration. Although the Applicant eventually added program claims 49-63 to the claim set, the program claims are not recited in the original claim set and are not added until the recent Applicant’s 07/10/2026 Response. The Examiner notes that the program claims do not provide any details to support the integration of the central system into the EFT network or how the central system is adapted into the EFT network in order to establish the FTN. The Examiner also notes that the system claim 41, the method claim 42, and the program claim 49 are mirrored from each other and none of them identify how the integration is done or how the central system 110 is adapted into the EFT network.
Second, steps (b1-b6), the claim recites the steps for a consumer to store and associate data (such as first data associating the ID and second data associating the business rule for a merchant/business, consumer, and third party) with the payment program of the central system and designating the accounts of the consumer/third party to receive payments. These steps are basically for the merchant/business, consumer, and third party to store and associate the data with the system (i.e., ID, business rule), establish the business rule, and designate the accounts so that the consumer and third party can have the access to request and receive the payments via a secondary and tertiary transactions. The steps are data gathering for registration (see paragraphs 21-23, 29-31, 34, 39, 46, 58, 62, 73, 76, 78-79, 86-87, 94) and extra-solution activities.
Third, steps (c1-c12), the claim recites the steps to analyze and apply the business rules to ensure the eligibility of the consumer and third party for the payments, compute the secondary and tertiary transaction values for the payments, initiate and transmit the secondary and tertiary transactions to accounts of the consumer and the third party based on the primary transactions and business rule.
The claim recites a process corresponds to the concept of a certain method of organizing human activity, specially to a fundamental economic practice to mitigate risk before initiating a secondary transaction and tertiary transaction (i.e., hedging, insurance, mitigating risk – see steps of “… (i) … matches the merchant/business site ID … (ii) … matches the ID of the first account of the consumer … and (iii) the value of the purchase of the products and/or services”) and commercial interaction (i.e., agreements in the form of contracts; legal obligation; advertising, marketing or sales activities or behaviors; business relations – see steps of “storing …, storing …, associating …, associating …, storing …, associating …, associating …”). See MPEP 2106.04(a)(2)III.C.2.
The process being performed on a “computing device” (a central system) via the EFTN limits the idea to a particular technical environment. The claim process, such as storing data, storing data, associating data, associating data, storing data, associating data, associating data, analyzing data, applying data, computing data, initiating data, computing data, and initiating data based on the consumer is qualified for the reward, narrows the abstract idea to a particular type of relationship, but do not make the idea less abstract. The mere nominal recitation of computer components does not take the claim out of the methods of organizing human activity grouping.
If the claim limitations, under their broadest reasonable interpretation, cover performance of a fundamental economic practice and commercial interaction, then they fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, claim 42 recites an abstract idea.
While claim 42 is addressed above, the analysis above can be applied to system claim 41 where processors and memories also serve as mere instructions to apply an exception using generic computer components. Similarly, the non-transitory computer-readable medium of claim 49 is an additional element that serves as mere instructions to apply an exception using a generic computer component and does not provide a practical application or significantly more than the judicial exception. Therefore, claims 41 and 49 also recite an abstract idea (Step 2A Prong 1-Yes, the claims recite an abstract idea).
Step 2A Prong 2:
Under the Step 2A, Prong 2 analysis, the claims are reviewed to determine whether the judicial exception (i.e., abstract idea) is integrated into a practical application. In order to make this determination, the additional element(s), or combination of elements, are analyzed to determine if the claim as a whole integrates the recited judicial exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.
Claims 41, 42, and 49 recite the additional elements, such as a FTN, a central system, an EFTN, merchant/business IDs, consumer IDs, third party IDs, to perform the storing, storing, associating, associating, storing, associating, associating, analyzing, applying, computing, initiating, transmitting, computing, initiating, and transmitting steps. The recited additional elements in all steps are recited at a high level of generality and the limitations are done by the generically recited computer system, and this is substantiated by the Applicant’s Specification (see at least paragraphs 15-38 and Figure 1 of Publication No. 2024/0112161-A1). Mere nominal recitation of computer components do not take the claim out of the methods of organizing human activity grouping.
In addition, the business rules are basically the “administrative criteria” for determining eligibility of the consumer for the reward (see claim step “subject to the matching … applying the business rule of the reward program to determine eligibility of … the consumer for the payment reward), a secondary transaction value (see claim step “determining a secondary transaction value that indicates the rewards … in part on the primary transaction data and the at least one business rule), and controlling the process of the financial transactions and can be set or modified by a user, a merchant, or a government agency, and/or another third party entity (see Specification, paragraphs 6-7). The business rules are no more than to control the electronic payments (secondary and tertiary transactions) to a customer and third party such as a government entity or non-government third party entity (see Specification, paragraph 6). These business rules are customizable by individual, human rules, and are the administration rules or criteria and thus are given very little patentable weight. Thus, while the business rules further narrow the scope of the process, they do not make the claim less abstract.
The judicial exception is not integrated into a practical application. In particular, the claims recites the additional elements of a computer and database (i.e., a FTN, a central system, an EFTN). The computer is recited at a high-level of generality (i.e., as a generic processor performing generic computer functions of receiving/transmitting communications, processing information, querying the database) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The business rules are basically the “administrative criteria” for initiating and controlling the electronic payments to customer(s) and third party. While the Applicant has added the program claims to the claim set, they are not added until the recent Applicant’s 07/10/2026 Response and they appear to be added just in an attempt to overcome the 101 rejection. It is also noted that the system claim 41, the method claim 42, and the program claim 49 are mirrored from each other, and none of them identify how the integration is done or how the central system 110 is adapted into the EFT network. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, claims 41, 42, and 49 are directed to an abstract idea (Step 2A Prong 2-No, the claims do not integrate the abstract idea into a practical application).
Step 2B:
Under the Step 2A, Prong 2 analysis, the claims are reviewed to determine whether the claims provide an inventive concept (i.e., whether the claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea).
Independent claims 41, 42, and 49 do not include additional elements, considered both individually and as an ordered combination, that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer to perform the storing, storing, associating, associating, storing, associating, associating, analyzing, applying, computing, initiating, transmitting, computing, initiating, and transmitting functions as claimed 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. Therefore, the independent claims are not patent eligible.
Dependent claims 2-6, 8-11, 17-23, 25-26, 34-35, 38-39, 43-48, and 50-63 depend on independent claims 41-42 and 49 and include all the limitations of claims 41, 42, and 49. Therefore, dependent claims 2-6, 8-11, 17-23, 25-26, 34-35, 38-39, 43-48, and 50-63 recite the same abstract idea of independent claims 41, 42, and 49.
Claims 2, 17, and 50 recite additional limitations “wherein the payment comprises at least first and second commissions or first and second fees”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the commissions or fess (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 3, 18, and 51 recite additional limitations “wherein the electronic digital information of the primary transaction includes at least one of: (i) a primary transaction value, (ii) information from the point-of- sale of the merchant/business, (iii) a location associated with providing the products or services; and (iv) at least one of a date and a time of the primary transaction”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the primary transaction (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 4, 19, and 52 recite additional limitations “wherein the tertiary transaction value is based upon the products or services”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the payment value (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 5, 20, and 53 recite additional limitations “wherein the ID of the first account of the consumer comprises a representation of at least one of an account number of a credit or debit card”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the ID of the consumer’s account (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 6, 21, and 55 recite additional limitations “wherein the ID of the first account of the consumer comprises a bank account”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the ID of the consumer account (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 8 and 22 recite additional limitations “wherein the third party controls a timing of the payment associated with the reward program”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the third party (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 9, 23, and 57 recite additional limitations “further comprising the EFTN providing a portal to manage a relationship between the merchant/business and the third party, by at least one of (a) registering the merchant/business, (b) establishing business rules, and (c) designating source and destination accounts”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the central system (MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 10, 25, and 58 recite additional limitations “further comprising the EFTN providing a spending history of the consumer to the merchant/business”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the central system (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 11, 26, and 59 recite additional limitations “further comprising the EFTN providing the merchant/business with a complete consumer view of value, rather than a single card view”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the central system (MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 12 and 27 recite additional limitations “further comprising the EFTN providing the merchant/business with a complete customer view of value, based on an identity of the consumer.”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the central system (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 13 and 29 recite additional limitations “wherein the reward comprises a financial incentive”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the reward (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 14 and 30 recite additional limitations “wherein the reward comprises a non-financial incentive”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the reward (MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 34, 38, and 60 recite additional limitations “wherein the first account of the merchant/business is the same as the second account of the merchant/business”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the first/second accounts of the merchant/business (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 35, 39, and 61 recite additional limitations “wherein the first account of the consumer is the same as the second account of the consumer”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the first/second accounts of the consumer (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 43, 44, and 54 recite additional limitations “wherein the account number comprises a primary account number of the credit or debit card”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the POS (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 45, 46, and 62 recite additional limitations “wherein the EFTN is a separate entity from a card issuing bank”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the POS (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 47, 48, and 63 recite additional limitations “wherein the first transaction processor is the same as the second transaction processor”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the POS (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
The dependent claims further describe the business relations of the certain method of organizing human activity (abstract idea) and do not include additional elements other than those of claims 41, 42, and 49 to provide a practical application or significantly more than the judicial exception. The dependent claims do no more than providing additional detailed instructions and administrative requirements for the functional steps already recited in the independent claims. Every recited combination between the recited computing hardware and the recited computing functions has been considered. No inventive concept is found in the claims. Therefore, the dependent claims also are not patent eligible.
The focus of the claims is on a method of automatically initiating and transmitting a secondary transaction and tertiary transaction associated with a reward program in response to a qualifying primary financial transaction. The claims are directed to automating a manual process which is “a business solution” and supported by Applicant’s Specification (see at least paragraphs 2 “automated processing of electronic payments to third parties upon execution of electronic financial transactions”, 4-5, 23-24, 26, 28 of the Publication). The claims are not directed to a new type of processor, a computer network, or a system memory, nor do they provide a method for processing data that improves existing technological processes. The focus of the claims is not on improving computer-related technology, but on an independent abstract idea that uses computers as tools. The claims do not add a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field. Accordingly, when viewed as a whole, the claims do no more than generally linking the use of the judicial exception to a particular technological environment or field of use. No inventive concept is found in the claims. Therefore, the claims do not add significantly more (i.e., an inventive concept) to the abstract idea (Step 2B-No, the claims are not significantly more than the abstract idea).
Claim Rejections - 35 USC § 102/103
An updated prior art search did not identify any art, individually or in combination with others, that teaches each and every element of the claims at this time.
Response to Arguments
Examiner’s Interview
During the interview, Applicant briefly talked about the recent Desjardins decision and the 12-05-2025 Office Memo, the Examiner has review the Memo and concluded that the Desjardins case is not analogous to the present claims.
Desjardins is directed to improvements as to how the machine learning model itself operates, including training a machine learning model to learn new tasks while protecting knowledge about previous tasks to overcome the problem of “catastrophic forgetting” encountered in continual learning systems. The claims when evaluated as a whole in discerning at least the limitation “adjust the first values of the plurality of parameters to optimize performance of the machine learning model on the second machine learning task while protecting performance of the machine learning model on the first machine learning task” reflected the improvement disclosed in the Specification. Accordingly, the claims as a whole integrated the abstract into a practical application.
This is different from the present claims. The present claims are directed to a method of computing secondary and tertiary transaction values and initiating the secondary and tertiary transactions that the payment from the merchants/business to the accounts of the consumers and third party. The focus of the claimed invention is on automating a manual process and this is substantiated by Applicant's Specification (see at least paragraphs 2, 4-6, 26, and 36 of the Publication). This is "a business solution" to "a business problem".
Paragraph 36 clearly describes that the claimed computer system can be implemented by any computer processing device for performing computations in accordance with a computer program may be used. The focus of the claimed invention is on utilizing a computing device over a network (in the present case, the FTN 100 that links the Central system 110 with the EFTN 130) to automate a manual process - initiating and triggering secondary and tertiary transactions (see paragraphs 2, 4-6, 23-24). The claims are basically using a computer as a tool to perform or automate a process and using it in a conventional way. The claims do no more than generally linking the use of the judicial exception to a particular technological environment or field of use. The claims do not include additional elements to integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, the claims are directed to an abstract idea.
35 USC § 112(a) or 35 USC § 112, 1st Paragraph
In view of Applicant’s 07/10/2026 Amendment, the previous 35 USC 112, first paragraph rejection is withdrawn. However, upon a further review and a discussion with the supervisor, the present claims are identified to have an indefiniteness issue and therefore are rejected under 35 USC 112, second paragraph (see above).
Also, the Examiner would like to clarify the typographical error in the 35 USC 112 rejection of the last 02-26-2026 Non-Final Office Action (NOA) in the Examiner stated that “… Per the Specification, the FTN 100 and the EFTN 130 are separate and distinct elements …”, the Examiner apologizes for the typo error and clarifies it means “Per the Specification, the Central system 110 and the EFTN 130 are separate computer elements …”.
Per paragraphs 18 of the Publication, the Central system 110 is configured to transmit and receive electronic digital data to and from the EFTN 130, and the EFTN 130 is provided by the existing credit card providers to route the digital data from the banks or issuers. There is no change to the EFTN 130 because it is provided by the existing credit card providers and is not in the scope of the claimed invention.
[0018] Central system 110 of FIG. 1 is configured to transmit and receive electronic digital data, via a transmission channel, switching service, modem or the like, to and from EFT network 130. EFT network 130 is provided by existing credit card providers to route digital data from banks, acquirers and/or issuers. FIG. 1 further illustrates merchant site 120, acquiring bank 122, acquirer processor 124, merchant bank 126, cardholder 140, card issuing bank 142, issuer processor 144, user-destination accounts 150, and EFT settlement bank 160.
Per paragraph 14 of the Publication, Applicant’s Financial Transfer Network (FTN 100), that links the central system 110 to the Electronic Funds transfer Network 130 (EFTN 130), is the system that triggers the secondary and tertiary transactions from the EFTN to the Central system 110. The Central computer (Central system 110) and database is the system that manages the distribution of funds according to customizable business rules:
[0014] The following detailed description outlines possible embodiments of the proposed invention for exemplary purposes. The invention is in no way intended to be limited to any specific combinations of hardware and software. As will be described below, the inventive system and method triggers secondary and tertiary transactions by means of a series of payment instructions from an electronic funds transfer (“EFT”) network to a central computer and database. The central computer and database collectively manage the distribution of funds according to customizable business rules defined by cardholders and merchants.
Paragraph 15 of the Publication describes that the Central system 110 and EFTN 130 are separated computer elements and that the FTN 100 links the Central system 110 to the EFTN 130 in order to establish the FTN 100 system.
[0015] FIG. 1 illustrates a block diagram of the financial transaction network 100 in accordance with an exemplary embodiment of the present invention. Financial transaction network 100 is a system that links one or more EFT networks, users, merchants and financial institutions towards a common purpose of facilitating an optimal model of consumption, savings and investment. In essence, the inventive system and method establishes a symbiotic relationship among all entities by providing a methodology for habitual savings to the user while integrating merchant loyalty rewards. For avoidance of doubt, it is noted that the term “user” is used interchangeably with the term “cardholder” and/or “consumer” throughout this application.
35 USC § 112(a) or 35 USC § 112, 2nd Paragraph
In view of Applicant’s 07/10/2026 Amendment, the previous 35 USC 112, second paragraph rejection is withdrawn. However, upon a further review and a discussion with the supervisor, the present claims are identified to have an indefiniteness issue and therefore are rejected under 35 USC 112, second paragraph (see above).
35 USC § 101
1) A Prima Facie Rejection Under 35 USC 101 Was Not Made Because A proper BRI of The Claims Was Not Established
Per pages 7-8 of the Remarks, the Applicant argues that in paragraphs 25-26 of the last 02-26-2026 Non-Final Office Action (NOA) the Examiner has not made a prima facie rejection under 35 USC 101 because the Examiner failed to properly establish and apply the broadest reasonable interpretation (“BRI”) before proceeding with the subject-matter eligibility analysis.
Response:
The Examiner respectfully disagrees. The Examiner has provided a detailed two steps analysis in according the guidance in the 2019 Revised Subject Matter Eligibility Guidance (“2019 Revised PEG”). However, in view of Appellant’s arguments, the Examiner decides to provide additional analysis for the 101 rejection in Step 2A, Prong 1 of the present Office Action (OA). The Examiner considers that the additional detailed analysis provided in the last NOA and in the present OA have made a prima facie rejection under 35 USC 101.
Per page 8 of the Remarks, the Applicant argues that in paragraph 27 of the last NOA, the Examiner reduces the claims to the concept of “mitigating risk” is wrong since none of the claims refer to mitigating risk and none of the claim terms are addressed in the specification with respect to mitigation risk. The Examiner’s BRI with respect to “mitigating risk” falls outside of the BRI of the claim terms in light of the specification.
Response:
The Examiner respectfully disagrees. The Examiner has provided a detailed two steps analysis in according to the guidance in the 2019 Revised PEG. In view of Applicant’s arguments, the Examiner provides additional detailed analysis for the 101 rejection (see at least in Step 2A, Prong 1 analysis in the present OA). The Examiner considers that the additional detailed analysis provided in the last NOA and in the present OA have made a clear explanation what the “mitigating risk” is.
Per page 8 of the Remarks, the Applicant cites paragraph 10-11 from the Declaration filed by Steve Smith on 03-13-2025 and argues that the Examiner has not responded to the Declaration.
Response:
The Examiner respectfully disagrees. The cited paragraphs 10-11 of the Declaration to support Applicant’s arguments are quoted below for clarification:
10. The technology utilized by members of the network organizations (both as of that priority date and now) must adhere to strict security regulations to protect the high volume/value of transactions processed each day from sophisticated fraud attempts. The integrity of the networks has continued to be maintained by regular technical updates and compliance validation. The routing of transactions is controlled to ensure security and speed is maintained and the content of the data in each transaction message is strictly limited.
11. Access points for any primary transaction data are the payment network (Visa etc.), card issuer (generally a bank) and the processors (on behalf of merchants). There remains no provision in the regulations to allow any deviation/re-routing from the mandated transaction flow of the primary transaction.
The Examiner has reviewed the cited paragraphs 10-11 and the whole Smith Declaration and found that the Declaration (including the cited paragraphs) only provides a general discussion arguing that the FTNs are networks having millions of computing devices that have special security requirements, and the Applicant’s FTN as a whole cannot be properly interpreted as a generic “computing device” under BRI.
The Declaration does not discuss the technical details on how the central system is integrated into the FTN. The Declaration mainly discussed the career experience that Mr. Steve Smith has and how he met Mr. Aly Karim (The Applicant of the pending Application). The Declaration does not provide any technical details explaining why and how the integration of the FTN is different or unique from the other FTNs. Per page 3, paragraph 9, the Smith Declaration argues that “Prior the Mr. Karim’s reward processing technology, the raw data from payment card transactions was not available to other parties or for any use outside of the normal processing of a payment card transaction by member organizations.” However, making data available to other parties (linking the central system to the EFT network to receive and transmit transaction information) is not a technical improvement. Also, the Declaration does not discuss which one of the integration methods is used for the integration of the FTN, for example, is the FTN integration used the method of direct integration, application programming interface, middleware, manual processing, or what else?
As explained in above and substantiated by the Applicant’s Specification (see paragraph 15 of the Publication), Applicant’s FTN is merely linking the central system to the EFT network to receive and transmit the primary transaction information (making the data available from the EFT network to the central system) so it can trigger the secondary/tertiary transactions to consumers (calculating the secondary/tertiary transaction values and transmitting the secondary/tertiary transactions when requested). Linking the central system into the FTN is not a technical improvement (making data available to others), and automatic triggering secondary/tertiary transactions is an abstract idea (transferring financial payments over the network).
The Declaration merely provides a general allegation that the Applicant’s FTN is a patentable invention without specifically pointing out how the integration of the FTN is different from other FTNs or the language of the claims patentably distinguishes them from other general FTNs. Therefore, Applicant’s arguments are not persuasive.
Per page 8 of the Remarks, the Applicant argues that during the 01-07-2025 Examiner Interview for co-pending application 18/544,188, Supervisor Behncke confirmed that the prior art networks are pipeline for data and were unable to achieve Applicant’s correctly construed secondary transaction.
Response:
The Examiner respectfully disagrees. The summary of the interview is quoted for clarification:
“Attorney and Inventor discussed the claimed invention and the proposed amendment with Examiner and Supervisor. Examiner and Supervisor agreed that the proposed amended claims are more reflected to the claimed invention, but they are still not patent eligible. No agreement with any claim was reached. This concluded the interview.”
It is noted that although the Supervisor and Examiner agreed that the proposed amended claims are more reflected to the claimed invention, they are still nor patent eligible. Therefore, Applicant’s arguments are not persuasive.
Per pages 9-10 of the Remarks, the Applicant cites the Smith Declaration, the Karim Declaration, and argues that the integration of an EFTN with a central system results in a highly specific network of computing devices that work together as a “...single, unified system” to perform their non-conventional functions under strict requirements.
Response:
The Examiner respectfully disagrees. Paragraph 15 of the Applicant’s Specification clearly describes that Applicant’s FTN is merely linking the central system to the EFTN to receive and transmit the primary transaction information (making the data available from the EFTN to the central system) so it can trigger the secondary/tertiary transactions to consumers (calculating the secondary/tertiary transaction values and transmitting the secondary/tertiary transactions when requested). Linking the central system into the EFTN is not a technical improvement (making data available to others), and automatic triggering secondary transactions is an abstract idea (transferring financial payments over the network). Therefore, Applicant’s arguments are not persuasive.
2) Eligibility Analysis, Step 2A, Prong 1
Per pages 10-17 of the Remarks, the Applicant cites the court cases (i.e., Data Engine, Enfish, and Alice cases) and argues that the integration of EFTN/central system is not directed to an abstract idea.
The Applicant further argues that the present claim 42 is not a Mental Process, and that the EFTNs have specific requirements for security as discussed in paragraph 10-11 of the Smith Declaration.
Response:
The Examiner respectfully disagrees. As explained in the present OA, Applicant’s claimed invention of the FTN (integration of the central system to the EFTN) is merely linking the central system to the EFTN to receive and transmit the primary transaction information (making the data available from the EFTN to the central system) so it can trigger the secondary/tertiary transactions to consumers (calculating the secondary/tertiary transaction values and transmitting the secondary/tertiary transactions when requested). Linking the central system into the EFTN is not a technical improvement (making data available to others), and automatic triggering secondary/tertiary transactions is an abstract idea (transferring financial payments over the network). See at least paragraphs 2, 4-6, 14-15, 18, 23-24 of the Publication.
With respect to the arguments about Claim 42 that is not directed to a Mental Process, the Examiner has withdrawn the rejection related to Mental Process in view of the Applicant’s amendments and arguments.
With respect to the arguments about the Smith Declaration, the Examiner respectfully disagree. As explained in above, the Examiner has reviewed the cited paragraphs, the Smith and Karim Declarations, and found that the Declarations do not provide any technical details explaining why and how the integration of the FTN is different or unique from the other FTNs. Therefore, Applicant’s arguments are not persuasive.
With respect to the arguments of the Data Engine, Enfish, and Alice cases, the Examiner has reviewed the cases and determined that there is no analogy between the cases and the present claims. The only similarity between the cases and the present claims is that they all utilize computer technology.
Also, the Examiner has provided a revised 101 analysis in response to the present amended claims via the 07/10/2026 Amendment. Thus, Applicant’s other arguments related to the material added via the 07/10/2026 Amendment, the Applicant is referred to view the detailed citations and explanations provided in the present 101 rejection above. It should be noted that the independent claims are indefinite and rejected under the 35 USC 112 rejection. Therefore, the Applicant’s arguments are not persuasive.
3) Eligibility Analysis, Step 2A, Prong 2
Per pages 17-27 of the Remarks, the Applicant cites the Parte Desjardins case and argues that the present claims provide an improvement in a technical field like the claims in the Desjardins case.
Response:
The Examiner respectfully disagrees. In the Desjardins case, the claims are directed to improvements as to how the machine learning model itself operates, including training a machine learning model to learn new tasks while protecting knowledge about previous tasks to overcome the problem of “catastrophic forgetting” encountered in continual learning systems. The claims when evaluated as a whole in discerning at least the limitation “adjust the first values of the plurality of parameters to optimize performance of the machine learning model on the second machine learning task while protecting performance of the machine learning model on the first machine learning task” reflected the improvement disclosed in the Specification. Accordingly, the claims integrated the abstract into a practical application.
This is different from the present claims. The present claims do not recite a machine learning (ML) model (or an artificial intelligence (AI) model) as described in the Desjardins case, the present claims recite a FTN. The FTN does not “adjust the first values of the plurality of parameters to optimize performance of the machine learning model on the second machine learning task while protecting performance of the machine learning model on the first machine learning task”, and the present claims are directed to a method of automatically initiating and processing a secondary financial transaction and a tertiary financial transaction associated with a reward program to a consumer and a government in response to a qualifying primary financial transaction. The focus of the present claims is on a method of automating a manual process and this is substantiated by the Applicant's Specification (see at least paragraphs 2, 4-6, 23-24, 26, and 34 of the Publication). This is "a business solution" to "a business problem", and is an abstract idea and not patent eligible. The present claims are focused on utilizing a computing device (i.e., the FTN 100 that links the central system 110 with the EFTN 130) over a network to automate a manual process - initiating and triggering secondary/tertiary transactions (see paragraphs 2, 4-6, 23-24). The claims used a generic computer component as a tool to automate a manual process and used it in a conventional way. There is no similar analogy between the present claims and the claims in the Desjardins case. The only similarity between the present claims and the Desjardins case is that they all utilize computer technology. Therefore, Applicant’s arguments are not persuasive.
With respect to the arguments that the additional elements integrate the abstract idea into a practical application, the claim elements must be considered “both individually and in combination” to ensure that they amount to significantly more than the judicial exception itself, the analysis performed in Step 2A, Prong 2 of the last Office Action is overly simplified. The Applicant argues that because the claims provide an improvement to a technology and also are implemented using a particular “machine” (the FTN), they integrate the judicial exception into a practical application. The Applicant also argues that even if the claimed subject matter could be implemented by a generic computer, the claims would still integrate the judicial exception into a practical application because they recite a technological improvement. The Applicant also argues that the judicial exception is implemented with particular network of computer system (the FTN) that is integral to the claim. Therefore, claims 41, 42, and 49 are patent eligible.
Response:
The Examiner respectfully disagrees. The Examiner has provided a revised detailed analysis in Step 2A, Prong 2 above in accordance with the guidance. However, in view of the Applicant’s arguments, the Examiner provides a supplemental analysis below and this supplemental analysis does not replace the analysis in the 101 rejection above.
The independent claims include additional elements and related limitations do not integrate the judicial exception into a practical application. More particularly, the claims do not recite (i) an improvement to the functionality of a computer or other technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular machine” to apply or use the judicial exception (see MPEP § 2106.05(b)); (iii) a particular transformation of an article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any other meaningful limitation (see MPEP § 2106.05(e)).
The additional elements beyond the judicial exception are (i) storing data (i.e., limitations b1-b7); (ii) a Financial Transaction Network (FTN) (i.e., limitations a); (iii) a data store (e.g., limitations b1-b7); (iv) a point-of-sale terminal (i.e., limitation c1); (v) a transaction processor (i.e., limitation c4); (vi) identifying the secondary financial transaction separately from the primary financial transaction (i.e., limitation c3-c7), and identifying the tertiary financial transaction (i.e., limitation c8-c12).
The storing data and accounting for the secondary/tertiary financial transactions separately in an account statement are extra-solution activities that fail to confer patent eligibility. See, e.g., Elec. Power, 830 F.3d at 1355 (explaining that "selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes"); Bancorp Servs., L.L.C. V. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012), aff'g 771 F. Supp. 2d 1054, 1065 (E.D. Mo. 2011) (explaining that "storing, retrieving, and providing data are inconsequential data gathering and insignificant post solution activity").
In addition, whether a judicial exception is performed by a particular machine may be a clue of patent eligibility (for method claims), but it is not a stand-alone test. Bilski V. Kappos, 561 U.S. 593, 604 (2010); see also MPEP § 2106.05(b). Using generic computing components (e.g., a data store, a point-of-sale terminal, a transaction processor, and FTN) for the concept of automatically initiating and processing a secondary financial transaction associated with a reward program in response to a qualifying primary financial transaction is merely using generic computing components to perform the judicial exception. See Mayo Collaborative Servs. V. Prometheus Lab., Inc., 566 U.S. 66, 72 (2012) (explaining that "to transform an unpatentable [judicial exception] into a patent-eligible application of [the judicial exception], one must do more than simply state the [judicial exception] while adding the words ‘apply it’"); see also Alice, 573 U.S. at 221; Versata Dev. Grp., Inc. V. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (explaining that in order for a machine to add significantly more, it must "play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly"); MPEP § 2106.05(b); Spec. paragraphs 20 (describing components of the network such as the central system, server, database (i.e., data store), and transaction processor as being implemented in one or more computers), 36 (describing the central system and/or transaction processor may be implemented as a generic computing device), 40 (generically describing the point-of-sale terminal).
According to the Specification, "the inventive system and method triggers secondary and tertiary transactions by means of a series of payment instructions from an electronic funds transfer ('EFT') network to a central computer and database." Spec. paragraph 14. As illustrated in Figure 1, the financial transaction network (FTN) comprises a conventional EFT network (130) and a central system (110). See Spec. paragraphs 18 (describing the EFT network is provided by existing credit card providers), 40 (describing the primary transaction as a conventional transaction using the EFT network), 58 (explaining that all transactions-primary, secondary and tertiary-are mediated by the EFT network; further explaining that the payments are transferred over EFT network "using existing authorization and settlement processes"). That is, the central system and EFT network (i.e., together, the FTN) are generic computing components performing the judicial exception.
The Examiner further determines that the claim is not directed to an improvement to computer functionality or a technical field. "To be a patent-eligible improvement to computer functionality, we have required the claims to be directed to an improvement in the functionality of the computer or network platform itself." Customedia Techs., LLC V. Dish Network Corp., 951 F.3d 1359, 1363-64 (Fed. Cir. 2020). As discussed above, claim 33 is directed to the concept of automatically initiating and processing a secondary financial transaction associated with a reward program in response to a qualifying primary financial transaction. The claim does not recite an improvement to the functioning of a computer or technical field. Any purported improvement, e.g., the automate initiation and processing of a secondary transaction in response to, but separate from a primary transaction, generally relates to the abstract idea, and does not improve a computer, technology, or a technical field. See McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (We look to whether the claims in these patents focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.") (citing Enfish, LLC V. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)); MPEP § 2106.05(a) ("the judicial exception alone cannot provide the improvement").
For at least the foregoing reasons, the Examiner finds the claims do not integrate the judicial exception into a practical application. Rather, as discussed above, the claims are directed to the concept of automatically initiating and processing a secondary financial transaction associated with a reward program in response to a qualifying primary financial transaction, which is a certain method of organizing human activity - i.e., an abstract idea.
With respect to the arguments for the Smith Declaration and the FTN is a particular network of computer system. The Smith Declaration (including the cited paragraphs 5, 6, & 9-12) only provides a general discussion arguing that the FTNs are networks having millions of computing devices that have special security requirements, and the Applicant’s FTN as a whole cannot be properly interpreted as a generic “computing device” under BRI.
The Examiner respectfully disagrees. The Examiner has reviewed the whole Smith Declaration including the cited paragraphs and found that the Smith Declaration does not discuss the technical details on how the central system is integrated into the FTN. The Smith declaration mainly discussed the career experience that Mr. Steve Smith has and how he met Mr. Aly Karim (The Applicant of the pending Application). The Smith Declaration does not provide the technical details explaining why and how the integration of the FTN is different or unique from the other FTNs. Per page 3, paragraph 9, the Smith Declaration argues that “Prior the Mr. Karim’s reward processing technology, the raw data from payment card transactions was not available to other parties or for any use outside of the normal processing of a payment card transaction by member organizations.” However, making data available to other parties is not a technical improvement. Also, the Smith Declaration does not discuss how the integration method is used for the integration of the FTN, for example, is the FTN integration used the method of direct integration, application programming interface, middleware, manual processing, or what else?
As explained in above and substantiated by the Applicant’s Specification (see paragraph 15 of the Publication), Applicant’s FTN is merely linking the central system to the EFT network in order to receive and transmit the primary transaction information (making the data available from the EFT network to the central system) so it can trigger the secondary transactions to consumers (calculating the secondary transaction values and transmitting the secondary transactions when requested). Linking the central system into the FTN is not a technical improvement (making data available to others), and automatic triggering secondary transactions is an abstract idea (transferring financial payments over the network).
The Smith Declaration merely provides a general allegation that the Appellant’s FTN is a patentable invention without specifically pointing out how the integration of the FTN is different from other FTNs or the language of the claims patentably distinguishes them from other general FTNs. Therefore, the Applicant’s arguments and the Smith Declaration are not persuasive.
4) Eligibility Analysis, Step 2B
Per pages 27-30 of the Remarks, the Applicant cites the Enfish, Berkheimer, the Karim and Smith Declarations, and argues that the Examiner has overly simplified claims because they provide the specific technological steps that enable an FTN itself to automatically initiate secondary transactions. The Applicant argues that the claims (1) provide an improvement to technology and (2) do not recite well-understood, routine, and conventional activity. The claims are patent-eligible.
Response:
The Examiner respectfully disagrees. Applicant's claims do not recite specific limitations (alone or when considered as an ordered combination) that were not well understood, routine, and conventional. More particularly, the claims recite generic computer components (e.g., a data store, a point-of-sale terminal, a transaction processor, and FTN) performing generic computing functions that were well understood, routine, and conventional (e.g., receiving and transmitting data, providing a user interface, storing data). See Mortg. Grader, Inc. V. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324-25 (Fed. Cir. 2016) (generic computer components, such as an "interface," "network," and "database," fail to satisfy the inventive concept requirement); see also Alice, 573 U.S. at 226 (“Nearly every computer will include a ‘communications controller’ and [a] ‘data storage unit' capable of performing the basic calculation, storage, and transmission functions required by the method claims."); In re TLI Commc 'ns LLC Pat. Litig., 823 F.3d 607, 614 (Fed. Cir. 2016) (holding generic computer components insufficient to add an inventive concept to an otherwise abstract idea); Spec. paragraphs 11 20, 36, 40. With respect to the arguments for the Karim and Smith Declarations, the Examiner has addressed the Declarations in above and not repeat them here. Therefore, the Applicant’s arguments are not persuasive.
5) Declarations Submitted by Appellant
Per pages 31-32 of the Remarks, the Applicant argues that the Office did not consider the Smith and Karim Declarations in the 02/26/2026 Office Action.
Response:
The Examiner respectfully disagrees. The Examiner has reviewed the Karim and Smith Declarations and did not identify any description that describes how the FTN is integrated or which integration method is used to integrate the central system into the FTN. None of the Declarations discuss the specificity or uniqueness of the FTN.
The Karim Declaration discussed that his invention provides automatically initiate secondary transactions based upon reward or other programs, thus, the invention improves the capability and functionality of the FTN. The Karim Declaration also discussed that the invention cannot be practiced manually as it requires the new equipment or corresponding functionality that connects merchant/business IDs and account IDs with a program(s) at a FTN level.
The Examiner respectfully disagrees. As explained in the analysis above, “automatic triggering secondary transactions over the network” is not a technical improvement and is “a business solution”. The Karim Declaration discussed that the invention cannot be practiced manually because it requires equipment to connect merchant/business IDs and account IDs with a program. However, as discussed in paragraph 15 of Publication, Applicant’s FTN “is a system that links the EFT networks, users, merchants and financial institutions towards a common purpose of facilitating an optimal model of consumption, savings and investment.” It should be noted that a computer to one of ordinary skill in the art is capable of printing, displaying, receiving, sending, storing data, analyzing data, and linking to other computers. Linking a computer to other computer components is not a technical improvement. The Karim Declaration does not discuss what the integration method is used to integrate the central system into the FTN so that the FTN is unique and different from other FTNs. Thus, the FTN is a generic FTN. Therefore, the arguments provided in the Karim Declaration are not persuasive.
The Smith Declaration discussed the regulation for the high volume/value of the transactions is processed from fraud attempts and the routing of transactions is controlled to ensure security is maintained. The Smith Declaration does not discuss what the integration method is used to integrate the central system into the FTN or what makes the FTN unique and different from other FTNs. Therefore, the FTN is a generic FTN. Therefore, the arguments provided in the Smith Declaration are not persuasive.
Double Patenting
In view of Applicant’s comments as stated in the 07-10-2026 Remarks, the rejection of the claims is MAINTAINED.
Conclusion
Claims 2-6, 8-11, 17-23, 25-26, 34-35, 38-39, and 41-63 are rejected.
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.
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HAI TRAN
Primary Examiner
Art Unit 3695
/HAI TRAN/Primary Examiner, Art Unit 3695
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