DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on October 01, 2025 has been entered.
This is the Non-Final Office Action in response to the Amendment filed on October 01, 2025 for Application No. 18/531,414, filed on December 06, 2023, title: “Systems and Methods For Processing Payments To A Third Party Providing A Product Or Service”.
Status of the Claims
Claims 2-31 were pending in this application. By the 10/01/2025 Response, claims 2, 11, 13, 15, 18, and 28 have been cancelled, new claims 32-37 have been added. Claim 1 was previously cancelled. Accordingly, claims 3-10, 12, 14, 16-17, 19-27, and 29-37 are pending in this application and have been examined.
Priority
This Application was filed on 12/06/2023 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.
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 3-10, 12, 14, 16-17, 19-27, and 29-37 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over the claims of U.S. 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 recite substantially the same limitations as claims of the patents with minor variations that would have been obvious to one of ordinary skills in the art. The conflicting claims are not identical, but they are not patentably distinct from each other because the claims of the US Patents are narrower in scope and anticipates the claims of the instant Application. The Application and the patents are directed to the same invention of providing merchant loyalty rewards via the secondary transaction. Also, both the Application and Patents have the same inventors and are commonly owned. Therefore, this rejection is deemed necessary.
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 3-10, 12, 14, 16-17, 19-27, and 29-37 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 3-10, 12, 14, 32, and 34 recites a central system integrated into a Financial Transaction Network (FTN) to use the FTN to automatically generate and transmit a second payment request for a secondary transaction derived from an electronic digital information (EDI) of a primary transaction of the FTN comprising various computer components. Claims 16-17, 19-27, 29-31, 33, and 35-37 recite a method of using a central system integrated into a Financial Transaction Network (FTN) to automatically generate and transmit a second payment request for a secondary transaction derived from an electronic digital information (EDI) of a primary transaction of the FTN comprising a series of steps. Therefore, the claims are directed to a machine and process 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 33, A method of using a central system integrated into a Financial Transaction Network (FTN) to automatically generate and transmit a second payment request for a secondary transaction derived from an electronic digital information (EDI) of a primary transaction of the FTN, wherein the secondary transaction involves a second transfer of funds relating to a payment associated with a payment program, comprising:
integrating the central system into the FTN;
storing in at least one data store:
an ID of a first account of a consumer, the first account of the consumer held at a first financial institution;
at least one business rule of the payment program;
first data associating the ID of the first account of the consumer with the payment program; and
second data associating the at least one business rule of the payment program with the ID of the first account of the consumer;
further to the consumer executing the primary transaction at a point-of-sale of a merchant/business 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 a terminal of the point-of-sale, processed through the FTN 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 a first account of the merchant/business, analyzing the EDI of the primary transaction to determine (i) 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 (ii) the value of the purchase of the products and/or services;
subject to successful matching of the ID of the first account of the consumer in the EDI 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 payment program to the EDI of the primary transaction to at least partially determine eligibility of the first account of the consumer for the payment;
subject to the first account of the consumer being eligible for the payment, computing a secondary transaction value for the payment, based at least in part on the EDI of the primary transaction and the at least one business rule; and
automatically initiating the secondary transaction from a second account of the consumer to a third account different from the first account of the consumer for the secondary transaction value, by use of a transaction processor to:
(a) generate the second payment request, containing an EDI of the secondary transaction, and
(b) transmit the second payment request via the FTN to a second financial institution of the second account of the consumer, 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; and
wherein the central system is operated by a third party other than the first financial institution of the first account of the consumer.
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., central system, FTN, and EFT network). More specifically, the claim recites fundamental economic principles or practices and/or commercial or legal interactions including a method of using a central system integrated into a FTN to generate and transmit a second payment request for a secondary transaction derived from an EDI of a primary transaction of the FTN. The claim recites the method essentially comprising the following main steps:
First, the claim recites a step for the central system to integrate into the FTN. However, this step is broad and does not provide any details on how the integration is performed and Applicant’s Specification does not provide any details to support the integration either. It is also noted that the claims do not include a program claim to show how the integration is done or how the central system 110 is adapt into the EFT network 130 to establish the FTN 100.
Second, the claim recites approximately four steps for a consumer to register with the central system, establish a business rule with the payment program, and designate the accounts of the consumer to receive payments. These steps are general and basically for a consumer to register with the system, establish the business rule, and designate the accounts so that the consumer can have the access to request and receive the payments via a secondary transaction. These steps are pre-solution activities for data gathering. No patentable weight is given to these steps.
Third, the claim recites four steps with two additional steps (“a” and “b” - totally six) to generate and transmit a second payment request for a secondary transaction derived from an EDI of a primary transaction of the FTN based on a computed secondary transaction value based on the primary transaction and business rule:
analyzing the EDI of the primary transaction to determine (i) 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 (ii) the value of the purchase of the products and/or services;
applying the at least one business rule of the payment program to the EDI of the primary transaction to at least partially determine eligibility of the first account of the consumer for the payment;
computing a secondary transaction value for the payment, based at least in part on the EDI of the primary transaction and the at least one business rule; and
automatically initiating the secondary transaction from a second account of the consumer to a third account different from the first account of the consumer for the secondary transaction value, by use of a transaction processor to:
(a) generate the second payment request, containing an EDI of the secondary transaction, and
(b) transmit the second payment request via the FTN to a second financial institution of the second account of the consumer, thereby causing the second transfer of funds to be executed;
The claim recites a process corresponds to a method of organizing human activity and specially to a fundamental economic practice to mitigate risk (see limitation “subject to successfully matching of the ID … of the consumer with ID stored in the at least one data store,”) prior to initiate a secondary transaction to a consumer based on a computed secondary transaction value, the EDI of the primary transaction, and business rule (i.e., hedging, insurance, mitigating risk. See the steps of analyzing the EDI of the primary transaction to …; and subject to successful matching of the ID of the first account of the consumer in the EDI of the primary transaction with the ID of the first account of the consumer stored in the at least one data store, analyzing …) and a commercial interaction (i.e., agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations - See the registration steps). MPEP 2106.04(a)(2)III.C.2.
The claim process being performed on a “computing device” via the FTN (a central system integrated into a FTN) limits the idea to a particular technical environment. The claimed process, such as storing an ID, business rule, associating ID data, associating business rule, analyzing the EDI of primary transaction data to match the ID data, applying the business rule, computing secondary transaction value, initiating secondary transaction to generate and transmit the second payment request, narrows the abstract idea to a particular type of relationship, but it does not make the idea less abstract. The business rules are basically the “administrative criteria” for 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 paragraphs 6-7 of the Publication No. 2024/0104529-A1). 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 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, the claim recites an abstract idea.
Additionally, the claim is directed to a Mathematical Concept because the claim is directed to a computation of a secondary transaction value after confirming the consumer is eligible for the payment which is a mathematical calculation (i.e., mathematical relationships, mathematical formulas or equations, mathematical calculations - see claim limitation “subject to successful matching of the ID of the first account of the consumer in the EDI of the primary transaction with the ID of the first account of the consumer stored in the … data store, applying the at least one business rule of the payment program to the EDI of the primary transaction to … determine eligibility of the first account of the consumer for the payment” and this is supported in paragraph 27 of the Publication). Therefore, under the broadest reasonable interpretation, the claim also is directed to a Mathematical Calculation which is an abstract idea.
If the claim covers performance of the limitation of a mathematical calculation (computing a secondary transaction value), then it falls within the “Mathematical Concepts” grouping. Accordingly, the claim recites an abstract idea.
Moreover, although the preamble of the claim recites a method using a central system integrated into a FTN, the steps in the claim body (such as analyzing, applying, computing, initiating, generating, and transmitting) are devoid of any reference to any computer or machine. None of the method steps in the claim are clearly recited as being performed by a computer or device and per the claim scope can be performed by a person with paper and pencil. Thus, under the broadest reasonable interpretation, the claim also is directed to a Mental Process (i.e., concepts performed in the human mind including an observation, evaluation, judgement, opinion) which is an abstract idea.
If the claim covers performance of the limitation with no specific machine or computer component is being recited, then it falls within the “Mental Processes” grouping. Accordingly, the claim recites an abstract idea.
Claim 32 recites a computer system with the comparable elements and limitations as discussed in claim 33. Therefore, this claim also is directed to the abstract idea as discussed in claim 32 (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.
The judicial exception is not integrated into a practical application. In particular, the claims (32 and 33) further recite the additional elements (see underlined below). The additional elements are additional details for the existing functional steps of the claims which further narrow the scope of the claims, but do not change the analysis. Further narrowing the details of an abstract idea does not change the 101 analysis because a narrower abstract idea does not make it any less abstract:
Claim 33, A method of using a central system integrated into a Financial Transaction Network (FTN) to automatically generate and transmit a second payment request for a secondary transaction derived from an electronic digital information (EDI) of a primary transaction of the FTN, wherein the secondary transaction involves a second transfer of funds relating to a payment associated with a payment program, comprising:
integrating the central system into the FTN;
storing in at least one data store:
an ID of a first account of a consumer, the first account of the consumer held at a first financial institution;
at least one business rule of the payment program;
first data associating the ID of the first account of the consumer with the payment program; and
second data associating the at least one business rule of the payment program with the ID of the first account of the consumer;
further to the consumer executing the primary transaction at a point-of-sale of a merchant/business 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 a terminal of the point-of-sale, processed through the FTN 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 a first account of the merchant/business, analyzing the EDI of the primary transaction to determine (i) 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 (ii) the value of the purchase of the products and/or services;
subject to successful matching of the ID of the first account of the consumer in the EDI 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 payment program to the EDI of the primary transaction to at least partially determine eligibility of the first account of the consumer for the payment;
subject to the first account of the consumer being eligible for the payment, computing a secondary transaction value for the payment, based at least in part on the EDI of the primary transaction and the at least one business rule; and
automatically initiating the secondary transaction from a second account of the consumer to a third account different from the first account of the consumer for the secondary transaction value, by use of a transaction processor to:
(a) generate the second payment request, containing an EDI of the secondary transaction, and
(b) transmit the second payment request via the FTN to a second financial institution of the second account of the consumer, 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; and
wherein the central system is operated by a third party other than the first financial institution of the first account of the consumer.
Further, the claims recite the additional computer elements, such as a central system, FTN, the first/second/third accounts, and a merchant/consumer to perform the storing, associating, analyzing, applying, computing, initiating, generating, and transmitting steps. The recited additional computer elements in all steps are recited at a high level of generality and the limitations are done by the generically recited computer system, this is substantiated by the Applicant’s Specification in paragraphs 16-38 and Figure 1. The FTN is a system that links or connects the EFT networks, central system, users, merchants and financial institutions towards a common purpose of facilitating an optimal model of consumption, savings and investment (see paragraphs 15-16 and 59 of the Publication). Further, paragraphs 18-20 and 36 clearly describe that the central system and/or transaction processor can be implemented as a computer processing device or any suitable device for performing computations. Neither the claims nor the Specification describe any improvement to the central system or FTN. Applicant’s Specification does not describe how the computer elements are different from the general computer components. No non-generic or non-conventional arrangement of the computer elements is found in the claims nor in the Specification. The generic processor limitations are no more than mere instruction to apply the exception using generic computer components. The computer system 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. 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. The claims 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 2B 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)).
The claims (32 and 33) 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, associating, analyzing, applying, computing, initiating, generating, 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 3-10, 12, 14, 16-17, 19-27, 29-31, and 34-37 depend on claims 32, 33, and thus include all of the limitations and features of their independent claims. Therefore, the dependent claims also are directed to the same abstract idea as in claims 22 and 33.
Claims 16-17 recite additional elements “further comprising the central system integrated into the FTN accruing a fee or a commission further to the consumer participating in the payment program.” and “further comprising the central system integrated into the FTN accruing an assets under management fee or an assets under management commission as a function of the amount of the secondary transaction that the central system sends to the third account.” (The additional elements further define the abstract idea in independent claims that the central system accrues fee, commission, or assets under, and execute the secondary transaction through the FTN. The additional elements amount to well-understood, routine, and conventional activities. see 2106.05(d)). The 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 and 19 recite additional elements “further comprising the central system integrated into the FTN registering the ID of the first account of the consumer with the payment program.” (The additional elements further define the abstract idea in the independent claims and amount to well-understood, routine, and conventional activities. see 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 and 20 recite additional elements “further comprising the central system integrated into the FTN receiving the ID of the first account of the consumer from a portal configured to register the ID of the first account of the consumer with the payment program.” (The additional elements further define the abstract idea in the independent claims and amount to well-understood, routine, and conventional activities. see 2106.05(d)). The 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 and 21 recite additional elements “wherein the portal comprises a website portal.” (The additional elements further define the abstract idea in the independent claims and amount to well-understood, routine, and conventional activities. see 2106.05(d)). The 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 and 22 recite additional elements “further comprising the central system integrated into the FTN using as the ID of the first account of the consumer, a representation of at least one of an account number of a debit card, credit card, gift card, prepaid card, electronic payment mediation card, or a mobile phone account.” (The additional elements further define the abstract idea in the independent claims and amount to well-understood, routine, and conventional activities. see 2106.05(d)). The 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 7 and 23 recite additional elements “wherein the second account of the consumer is the same as the first account of the consumer.” (The additional elements further define the abstract idea in the independent claims and amount to well-understood, routine, and conventional activities. see 2106.05(d)). The 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 8-9 and 24-25 recite additional elements “wherein the third account comprises an investment account.” and “wherein the third account comprises a charity account.” (The additional elements further define the abstract idea in the independent claims and amount to well-understood, routine, and conventional activities. see 2106.05(d)). The 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 and 26 recite additional elements “further comprising the central system integrated into the FTN receiving data from a portal to effect at least one of (a) registering the consumer with the payment program, (b) establishing the at least one business rules, and (c) designating the second account of the consumer and the third account.” (The additional elements further define the abstract idea in the independent claims and amount to well-understood, routine, and conventional activities. see 2106.05(d)). The 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).
Claim 27 recites additional elements “further comprising the central system integrated into the FTN assigning a unique user identifier that links the ID of the first account of the consumer with an ID of the second account of the consumer.” (The additional elements further define the abstract idea in the independent claims about assigning a unique user ID that links the ID of the first account with an ID of the second account of the consumer. The additional elements amount to well-understood, routine, and conventional activities. see 2106.05(d)). The claim individually or in combination with others does not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 12 and 29 recite additional elements “further comprising the central system integrated into the FTN controlling a timing of the payment.” (The additional elements further define the abstract idea in the independent claims and amount to well-understood, routine, and conventional activities. see 2106.05(d)). The 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 30 recite additional elements “further comprising the central system integrated into the FTN transmitting to the consumer, a notification relating to an activity associated with the secondary transaction.” (The additional elements further define the abstract idea in the independent claims and amount to well-understood, routine, and conventional activities. see 2106.05(d)). The 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 31 recite additional elements “wherein the first financial institution comprises a bank.” (The additional elements further define the abstract idea in the independent claims and amount to well-understood, routine, and conventional activities. see 2106.05(d)). The 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 do no more than providing additional instructions and administrative requirements for the functional steps already recited in the independent claims. These additional recited limitations further narrow the scope of the abstract idea and are merely insignificant solution activities which only refine the abstract idea further and do not include additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea. Each and every recited combination between the recited computing hardware and the recited computing functions have been considered. No non-generic or non-conventional arrangement is found. Therefore, the dependent claims also are not patent eligible.
The focus of the claims is on a method of using a general computer (a central system integrated into a FTN) to receive and process the primary transaction information and for a consumer to register with the system, establish the business rule, generate and transmit a second payment request so that he/she can receive customer rewards. The claims are not directed to a new type of processor, computer network, or system memory, nor do that 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 independently abstract idea that uses computers as tools. 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).
Response to Arguments
Double Patenting
In view of Applicant’s response, the rejection is maintained until the Applicant files a terminal disclaimer or the rejection is no longer required.
Also, since the Applicant has abandoned Application No. 18/128,856, the provisional non-statutory double patent rejection is withdrawn.
Claim Rejections - 35 USC § 101
Applicant's arguments filed 10/01/2025 have been fully considered but they are not persuasive.
Per pages 1-7 of the Remarks, Applicant summarized the interviews that have been conducted for the co-pending Applications: 18/128,856 (abandoned), 18/529,259 (prosecution continues), and 18/544,188 (appealing), which were held on 12/07/2023, 11/12/2024, and 01/07/2025. In all interviews, the Applicant argued that the Office did not agree with the Applicant that the “secondary transaction” is a separate transaction from the primary transaction and that the interviews finally made the Examiner agreed with the Applicant that the secondary transaction is a separate transaction. Applicant further argues that the Office did not expressly confirm the Office’s agreement that the secondary transaction is not a step in a primary transaction.
Response:
(Application 18/529,259 “November 12, 2024, Examiner Interview”):
(Note: the Examiner replied to this Application first instead of Application 18/128,856).
The Examiner respectfully disagrees. The Examiner did not disagree with Applicant’s claim limitation “the secondary transaction is accounted for in a separate transaction from the primary transaction on an account statement of the consumer”. The Examiner would like to clarify that he disagreed the “arguments” that Applicant presented in his previous 07/03/2024 and 07/10/2024 Responses for Application 18/529,259 in page 9, paragraph 18 because the Applicant argued that: “The Office’s proffered BRI … In every example discussed in the Specification, the secondary transaction is processed independently of the primary transaction, such that implementing a secondary transaction has no effect at all on the processing of the primary transaction.”. The Applicant recited the limitation “secondary transaction is a separate transaction” in the claims, but argued differently (broader than what is recited in the claims) that the secondary transaction is a separate and independent transaction from the primary transaction. This was what the Examiner disagreed with the Applicant. During the 11/12/2024 interview, the Examiner and Supervisor finally resolved this issue with the Applicant and clarified that the secondary transaction is a separate transaction that is dependent on the primary transaction. This is documented and confirmed in the 11/18/2024 Interview Summary. The Summary is quoted below for clarification:
Attorneys and Examiners discussed Questions 1-3 during the interview. The Examiner agreed that the secondary transaction is a separate transaction that is dependent on the primary transaction. As written in the last Non-Final Office Action (NFOA) dated 08/07/2024, the secondary transaction has been identified as part of the abstract idea. Applicant disagrees and argued that the secondary transaction is an improvement. The Examiner pointed to the last NFOA that the additional elements identified include the "central system" and "the Financial Transaction Network”. As stated in the NFOA, these elements are merely being applied to the abstract idea. This position is supported by the original disclosure, see at least [0018] and [0036]. The functionality of the central system and Financial Transaction Network are not improved. Attorneys and Examiners were not able to discuss Questions 4-12 due to the limited amount of time authorized for this interview, although this interview was over an hour. No specific agreement with any claims was reached. This concluded the interview.
Also, the Examiner’s disagreement is supported by the Applicant’s Specification in paragraphs 24 and 28 because Applicant’s Specification clearly describes that the Applicant’s method requires the secondary transaction to be automatically triggered following the successful authorization of a primary transaction (see paragraph 24 of the Publication below). Also, the maximum and/or minimum thresholds for the primary transaction may be set in order to ensure that specified primary transactions do not trigger a secondary transaction (see paragraph 28 of the Publication below):
[0024] In any event, once cardholder 140 has registered with the system and a unique user ID has been designated to cardholder 140, user interface 118a further enables the user to define business rules directing automated secondary payment to predetermined accounts 150 via a secure online control mechanism. In general, the predefined business rules specify the amount and destination of secondary transactions that will be automatically triggered following the successful authorization of a primary transaction at a remote point-of-sale, such as merchant site 120. In this regard, the business rules generally define the amount of the secondary transaction and the one or more secondary accounts 150 designated to receive the funds of the secondary transaction.
[0028] Furthermore, maximum and/or minimum thresholds for the primary transaction may be set in order to ensure that specified primary transactions (e.g., transactions under $10) do not trigger a secondary transaction. In addition, user interface 118a enables the user to define daily, weekly, monthly, and/or annual limits. Effectively, where certain tax free savings schemes limit a user's contribution to a maximum amount within a given time period, such as a year (e.g., a personal retirement account), central system 110 is configured to enable users to contribute to such accounts without worrying that more than the permissible amount is invested for that statutory time period. In a further aspect of this feature, any amounts above the permissible tax threshold that are routed to the designated account would be automatically rerouted to temporary holding accounts or secondary destination accounts as directed by the user. Funds m a temporary account could then be transferred once the appropriate tax limits were released.
Therefore, Applicant’s arguments that the secondary transaction is separate transaction and independently processed from the primary transaction are incorrected and not supported by Applicant’s Specification even though Applicant’s claim limitation is recited differently.
In addition, the secondary transaction value (the amount that is issued via a secondary transaction) is determined based on a percentage of the primary transaction (see paragraph 27 of the Publication):
[0027] Examples of the calculation of secondary payment amounts as defined by a user's customized business rules include a percentage of the primary transaction, rounding up the primary transaction to a user specified level, a predetermined lump sum, or the like. It is reiterated that while these payments may be calculated using different methods, each of these transactions is a separate payment that is processed and reported independently of the primary transaction.
Therefore, Applicant’s arguments (not the claim limitation) that the secondary transaction is separate transaction and independently processed from the primary transaction are incorrect.
The Applicant agreed with the Examiner in his subsequent 03/27/2025 Response for Application 18/529,259 to say that the secondary transaction is triggered by a primary transaction and not independent from the primary transaction (see Applicant’s 03/27/2025 Response in paragraph 2 below). The Examiner notes that the Applicant has changed his arguments regarding the secondary transaction in the Response.
2. The parties agreed that the secondary transaction recited in the claims is a separate transaction (albeit triggered by, and therefore dependent upon, a primary transaction) and not a step in a primary transaction, which has argued in the RCE dated July 1, 2024 (“RCE”), had previously been agreed with the Office during the prosecution history of the parent application, in 2012. The August 7, 2024 Office Action did not expressly confirm the Office’s agreement that the secondary transaction is not a step in a primary transaction.
With respect to the comments that “The August 7, 2024 Office Action did not expressly confirm the Office’s agreement that the secondary transaction is not a step in a primary transaction.” is not proper because it was not the issue of the disagreement. The disagreement is that the Applicant argued for his claim limitation while the Examiner argued against Applicant’s arguments present in the Response (claim limitation recited in the claims vs. arguments presented in Response. It should be noted that the arguments presented in the Response are more than what is recited in the claims). The Examiner has already resolved and clarified the issue with the Applicant, documented, and confirmed in the 11/18/2024 Interview Summary. Therefore, the Examiner considers that this issue has been resolved.
(Application 18/128,856 “December 7, 2023, Examiner Interview”):
Applicant argues that in the third paragraph of page 2:
Applicant disagreed and argued that Applicant’s “secondary transaction” is not part of (a step of) a primary transaction, and that the Specification is clear that the correctly construed secondary transaction is a separately processed second transaction (triggered by a primary transaction), such that Applicant’s “secondary transaction” is an improvement over the prior art, which is entirely distinguished from a step of a primary transaction.
The Examiner respectfully disagrees and clarifies that the Examiner did not disagree that the secondary transaction is not a separately processed secondary transaction, the Examiner disagreed the arguments that the Applicant presented in the previous Response. The Examiner also notes that Applicant no longer argue that the “secondary transaction is separate transaction and independently processed from the primary transaction”. Since the Applicant no longer argues that the secondary transaction is independent from the primary transaction, the Examiner considers this issue has been resolved.
With respect to the arguments in paragraph 8:
8) Since the December 7, 2023, Examiner Interview was conducted, the Office has now finally accepted that Applicant’s secondary transactions are separate transactions, and not a step in a primary transaction (see Summary of November 12, 2024, Examiner Interview for Application 18/529,259 below). As noted above, Applicant notes that the § 102 rejection in light of Smith (US Publication No. 2010/0191648 A1) had been withdrawn in the (Final) Office Action dated October 16, 2023, significantly before the December 7, 2023, Examiner Interview, rendering the rejection entirely spurious.
The Examiner disagrees and notes that the 12/07/203 Interview does not mention anything related to the “secondary transaction”. The interview summary is quoted below for clarification:
Attorney, Applicant, and Examiner discussed the proposed amendment, the claimed invention, and the Smith reference (US Pub. No. 2010/0191648), and others. In the end, no agreement with respect to any claim was reached. Examiner will await the formal response, and will perform a new search and consideration. This concluded the interview.
Also, the Smith reference was used for the 102/103 rejections, it was not used for the 101 rejection because the 101 rejection does not require evidence. Withdrawing the Smith reference for the 102/103 rejections does not automatically makes the claims become patent eligible under 101. The Applicant has already abandoned the Application on 10/24/2024 due to the 101 rejection. The Examiner considers the concerns in paragraph 8 is addressed.
(Application 18/544,188 “January 7, 2025, Examiner Interview”):
The Applicant cites two Interviews (18/544,188 “01/07/2025” and 18/529,259 “11/12/2024”) and argues that the FTN is improved system and that this limitation provides an additional element for the 101 analysis. Applicant argues that the improved FTN was accomplished via the integration of a central system, incorporating a server, database and transaction processor to create the improved network (FTN) in order to achieve Applicant’s secondary transaction. Therefore, the claims are 101 patent eligible.
The Examiner respectfully disagrees and points out that the Examiner’s Supervisor were present for the two Interviews. However, the Applicant and Attorney still could not convince the Office that the FTN is improved system. Thus, this further confirms that the eligibility of the claims under 101. The interview summaries are quoted below for clarification:
(18/529,259 “11/12/2024, Examiner Interview):
Attorneys and Examiners discussed Questions 1-3 during the interview. The Examiner agreed that the secondary transaction is a separate transaction that is dependent on the primary transaction. As written in the last Non-Final Office Action (NFOA) dated 08/07/2024, the secondary transaction has been identified as part of the abstract idea. Applicant disagrees and argued that the secondary transaction is an improvement. The Examiner pointed to the last NFOA that the additional elements identified include the "central system" and "the Financial Transaction Network”. As stated in the NFOA, these elements are merely being applied to the abstract idea. This position is supported by the original disclosure, see at least [0018] and [0036]. The functionality of the central system and Financial Transaction Network are not improved. Attorneys and Examiners were not able to discuss Questions 4-12 due to the limited amount of time authorized for this interview, although this interview was over an hour. No specific agreeme