DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
In view of the Appeal Brief filed on June 20, 2026, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then Appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/CHRISTINE M Tran/Supervisory Patent Examiner, Art Unit 3695
Declarations submitted by Appellant
The Smith and Karim Declarations under 37 CFR 1.132 filed on 10/01/2025 are insufficient to overcome the rejection of claims 3-10, 12, 14, 16-17, 19-27, and 29-37 based upon the 35 USC 101 rejection as set forth in the last Office action because:
In view of the Applicant’s comments presented in the 06/20/2026 Appeal Brief (AB), the Examiner provides an analysis of the Smith and Karim Declarations.
Per paragraphs 1-8, the Smith declaration mainly discussed Mr. Smith’s career experience, and how he has met Mr. Aly Karim (the Applicant of the pending Application). Per paragraphs 9-13, the Smith Declaration does not discuss the technical details on how the central system is integrated into the FTN, and does not provide any technical details explaining why and how the integration of the FTN is different or unique from the other FTNs.
In 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.”; in paragraph 10, the Smith Declaration only discusses that 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 and speed is maintained and the content of the data in each transaction message is strictly limited; in paragraph 11, the Smith Declaration discusses “Access points for any primary transaction data are the payment network (Visa etc.), and issuer(generally a bank) and the processors (on behalf of merchants) …”; and in paragraph 12 the Declaration says “The industry challenge therefore, was to facilitate merchant-funded consumer rewards …” are make the primary financial transaction information available to a merchant. However, making data available to other parties is not a technical improvement. The Smith 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 the 101 rejection below 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 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 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 treated as a generic FTN.
The Smith 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, the arguments presented in the Smith Declaration are not persuasive.
Furthermore, the Karim Declaration discusses 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 discusses 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 101 rejection in this Office Action, “automatic triggering secondary transactions over the network” is not a technical improvement and is “a business solution”. The Karim Declaration discusses 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. Neither the Applicant’s claims nor the Specification identify an improvement to the functioning of the FTN. Therefore, the FTN is treated as a generic FTN. The present 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. Therefore, the arguments provided in the Karim Declaration are not persuasive.
In conclusion, the Smith and Karim Declarations are not persuasive and the rejection of the claims is MAINTAINED.
This is the Non-Final Office Action in response to the Appeal Brief filed on June 20, 2026, for Application No. 18/531,414 (filed on December 06, 2023), title: “Systems and Methods For Automatically Initiating Secondary Transactions From A Consumer To A Pre-selected Account”.
Status of the Claims
Claims 3-10, 12, 14, 16-17, 19-27, and 29-37 were pending. By the 06/20/2026 Appeal Brief, no claim has been amended, cancelled, or added. Claims 1-2, 11, 13, 15, 18, and 28 were 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.
Note: the provisional non-statutory double patent rejection for the Application is withdrawn because of the Application No. 18/128,856 has been abandoned (see 04/02/2025 Final Rejection).
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 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.
(a) 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: (preamble step)
(b1) integrating the central system into the FTN;
(b2) storing in at least one data store:
(b3) an ID of a first account of a consumer, the first account of the consumer held at a first financial institution;
(b4) at least one business rule of the payment program;
(b5) first data associating the ID of the first account of the consumer with the payment program; and
(b6) second data associating the at least one business rule of the payment program with the ID of the first account of the consumer; (b1-b6 are data gathering steps - pre-solution activities)
(c1) 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; (processing data over the internet)
(c2) 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; (processing data over the internet)
(c3) 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 (mathematical calculation)
(c4) 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:
(c5) (a) generate the second payment request, containing an EDI of the secondary transaction, and
(c6) (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; (c3-c6 are processing and transmitting data over the internet)
(c7) wherein the secondary transaction is accounted for in a separate transaction from the primary transaction on an account statement of the consumer; and
(c8) wherein the central system is operated by a third party other than the first financial institution of the first account of the consumer. (c7-c8 additional instructions for steps a-c6)
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 a method comprising the following main steps (a, b1-b6, and c1-c8):
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. 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 adapted into the EFT network 130 in order to establish the FTN 100.
Second, steps (b1-b6), the claim recites the steps for a consumer to store and associate first and second data (such as first data associating the ID and second data associating the business rule) with the payment program of the central system and designating the accounts of the consumer to receive payments. These steps are general and basically for a consumer 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 can have the access to request and receive the payments via a secondary transaction. These steps are data gathering - extra-solution activities.
Third, steps (c1-c6), the claim recites the steps to analyze and apply the business rules to ensure the eligibility of the consumer for the payment, compute a secondary transaction value for the payment, initiate and transmit a secondary transaction to a third account of the consumer based on the primary transaction and business rule:
(c1) 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; (processing data over the internet)
(c2) 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; (processing data over the internet)
(c3) 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 (mathematical calculation)
(c4) 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: (processing and transmitting data over the internet)
(c5) (a) generate the second payment request, containing an EDI of the secondary transaction, and
(c6) (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 the concept of a certain 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 the 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 between a merchant and consumer (i.e., agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations - see the registration and business rules). MPEP 2106.04(a)(2)III.C.2.
The claimed process being performed on a “computing device” (the FTN - a central system interfaced with the EFTN system to establish the 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 the secondary transaction value, automatically 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 claim recites a method of automatically initiating, processing, and transmitting a secondary financial transaction to a consumer associated with a reward program in response to a qualifying primary financial transaction. This is a fundamental economic practice (reward program to reward a consumer) and a commercial interaction (business relations between a merchant and consumer) and is a method of organizing human activity, and therefore, is an abstract idea. 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.
While method claim 33 is addressed above, the analysis above can be applied to system claim 32 where the processors and memories also serve as mere instructions to apply an exception using generic computer components. Therefore, claim 32 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 in steps c1-c3 and c7-c8). 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:
(a) 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:
(b1) integrating the central system into the FTN;
(b2) storing in at least one data store:
(b3) an ID of a first account of a consumer, the first account of the consumer held at a first financial institution;
(b4) at least one business rule of the payment program;
(b5) first data associating the ID of the first account of the consumer with the payment program; and
(b6) second data associating the at least one business rule of the payment program with the ID of the first account of the consumer;
(c1) 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;
(c2) 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;
(c3) 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
(c4) 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:
(c5) (a) generate the second payment request, containing an EDI of the secondary transaction, and
(c6) (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;
(c7) wherein the secondary transaction is accounted for in a separate transaction from the primary transaction on an account statement of the consumer; and
(c8) 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 integrating, 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 (see at least paragraphs 16-38 and Figure 1 of the Publication).
Per the Applicant’s Specification (see paragraphs 15-16 and 59 of the Publication), 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. Further, paragraphs 18-20 and 36 of the Publication 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. The claimed invention is a method of automating a manual process using generic computer components and used in a conventional way. 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 integrating, 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 automatically initiating and processing a secondary financial transaction to a consumer associated with a reward program in response to a qualifying primary financial transaction. The claimed invention is a method of automating a manual process using a general computer component and using it in a conventional way. 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
Claim Rejections - 35 USC § 101
The Applicant's Appeal Brief filed on 06/20/2026 has been fully considered but they are not persuasive.
IV. ARGUMENT
V. Overview
Per page 6 of the 06/20/2026 AB, Applicant argues that the Smith Declaration filed on 10/01/2025, pages 3-4, paragraphs 9 & 10 are not addressed.
Response:
The Examiner respectfully disagrees. The Applicant argues that the Smith Declaration explained that the FTN cannot be interpreted as a generic “computing device”, Appellant cited paragraphs 9 & 10 to support his arguments are quoted below for clarification:
9. Access to the payment networks is restricted and controlled by the network organizations (e.g. Visa, Mastercard) through membership application, and agreement to extensive regulations and standards. Membership is restricted to organizations issuing payment cards or processing the payments on behalf of merchants. Prior to 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. I specifically remember confirming that point to the then- president of Worldpay in a conversation on or about August 2015, which was then six years after the priority date of Mr. Karim's 61/157097 application.
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.
The Smith 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 Appellant’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 cited paragraphs 9 & 10 and the whole Smith Declaration 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 any technical details explaining why and how the integration of the FTN is different or unique from the other FTNs.
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 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 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 only discusses that 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. Thus, the Examiner treats the FTN as a generic FTN.
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 arguments presented in the Smith Declaration are not persuasive.
Per pages 6-8 of the 06/20/2026 AB, Applicant argues that during the 01/07/2025 Examiner Interview the Examiner and Supervisor acknowledged that prior art EFTNs were not simply pipelines initiating the claimed secondary transaction in an interview summary:
"During the January 7, 2025, Examiner Interview, Supervisor Behncke confirmed that prior art networks were unable to achieve Applicant's correctly construed secondary transactions (Supervisor Behncke had agreed in the November 12, 2024, Examiner Interview that prior art networks are simply pipelines for data) and further agreed that the sending and receiving of information over a network cannot be done in manual way."
The Applicant also cites the Karim Declaration and argues that the Declaration supports that “… prior art networks are simply pipelines for data and further agreed that the sending and receiving of information over a network cannot be done in manual way.” (see filed on 10/01/2025 in paragraph 18 of page 9).
Response:
The Examiner respectfully disagrees. The 01/07/2025 Examiner Interview was conducted and recorded under Application No. 18/544,188 on 01/13/2025 and the interview summary is quoted below 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.”
The 11/12/2024 Examiner Interview was conducted and recorded under Application No. 18/529,259 on 11/18/2024 and the interview 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.”
As can be seen in the interview summaries, the Examiner and Supervisor only agreed that the proposed amendments are more reflected to the claimed invention in the 01/07/2025 Examiner Interview and the functionality of the central system and the FTN are not improved in the 11/18/2024 Examiner Interview. Therefore, Applicant’s arguments are not persuasive.
With respect to the arguments of the Karim Declaration, the Examiner respectfully disagrees and points it that “… prior art networks are simply pipelines for data” is “making data available to others” is not a technical improvement, and that “sending and receiving of information over a network cannot be done in manual way” is automating a manual process, a business solution to a business problem, and an abstract idea. 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 Examiner has reviewed the Karim Declaration (especially paragraphs 14-15 and 17-18, filed on 09-13-2024) and Smith Declaration (especially paragraphs 10-11, filed on 05-14-2025) and did not identify anything that discusses 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 basically 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 Step 2A analysis above, “automatic triggering secondary transactions over the network” is not a technical improvement, but it 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, Appellant’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 or what makes the FTN unique and different from other FTNs. Thus, the Examiner treats the FTN as a generic FTN. The arguments provided in the Karim Declaration are not persuasive. Therefore, Applicant’s arguments are not persuasive.
A. Recent History of Application
Per pages 8-9 of the 06/20/2026 AB, Applicant argues:
“… In particular, the claimed systems and methods enable a Financial Transaction Network (FTN) to perform the requisite steps to automatically initiate a secondary transaction by considering data that prior EFTNs were not able to access or consider, without sacrificing or reducing data security, by introducing at least one new technical effect not found in the prior art, that depends upon data sets and business rules not previously available to FTNs.”
Response:
The Examiner respectfully disagrees. As explained in the 101 analysis above, Applicant’s FTN is merely linking the central system to the EFT network (or EFTN) 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). Therefore, Applicant’s arguments are not persuasive.
B. Description of Financial Transaction Networks (FTNs) and Appellant’s Improvements Thereto
Per pages 9-18 of the 06/20/2026 AB, in this section, Applicant explained how important the FTN is and how it solves the EFTN’s inherit technical problems and how it automates a secondary transaction using the qualifying primary transaction information and how the Smith and Karim Declaration support the claimed invention.
Response:
The Examiner respectfully disagrees. The Examiner appreciated that Applicant spent a lot of effort explaining how the FTN and the claimed method work, but the Examiner has provided detailed explanation in the 101 above explaining why the FTN is not a technical improvement and that automatically initiating and sending a secondary transaction is an abstract idea. Applicant’s FTN is merely linking the central system to the EFT network (or EFTN) to receive and transmit the primary transaction information (making the data available from the EFT network to the central system is not a technical improvement) so that the central system can initiate and sending a secondary transaction to a consumer (calculating the secondary transaction values and transmitting the secondary transactions when requested – transferring financial payments over the network is an abstract). 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).
Moreover, if Applicant is still not persuaded with the Examiner’s explanation, Applicant is suggested to review the PTAB’s Decision issued on 08/06/2026 for Application No. 18/544,188. Since Application’s 188 is a co-pending application and very similar to the present Application, the analysis from the PTAB Decision can be applied to this Application. A copy of the PTAB Decision is attached to this Office Action for the Applicant’s convenience. Therefore, Applicant’s arguments are not persuasive.
C. The Appeal Brief does not appear to have a section C?
D. Rejection of claims 3-10, 1, 14, 16-17, 19-27 and 29-37 under 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 page 19, second paragraph of the 06/20/2026 AB, the Applicant argues that 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”). In view of Appellant’s arguments, the Examiner decides to provide additional explanation for the 101 rejection, see the 101 analysis above. The Examiner considers that the explanation provided in the 10/24/2025 Office Action and the additional explanation provided above have made a prima facie rejection under 35 § USC 101.
Per page 19, last paragraph of the 06/20/2026 AB, the Applicant argues that in paragraph 12-13 on page 6-8 of the 2025 October OA, the Examiner provides no actual “interpretation” of the claim language, so it is impossible for the Appellant to ascertain how broadly or narrowly the Examiner might be interpreting the claim terms and whether the interpretation actually applies the BRI standard.
Response:
The Examiner respectfully disagrees. The Examiner has provided a detailed two steps analysis according to the guidance in the 2019 Revised PEG. In view of Appellant’s arguments, the Examiner provides additional explanation for the 101 rejection, see at least the Step 2A, Prong 1 analysis above. The Examiner considers that the explanation provided in the 10/24/2025 Office Action and the additional explanation provided above have made a clear interpretation of the Appellant’s claim languages.
Per page 20, first and second paragraphs of the 06/20/2026 AB, the Applicant argues that in paragraph 15 of the 2025 October OA, the Examiner summarizes “approximately four steps” that are 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.” However, the Examiner fails to identify which limitations correspond to these “approximately four steps” that are considered to be directed to these tasks. Moreover, the claim never actually recites “register”, so attributing this function to claim limitation(s) is an erroneous interpretation of the claim language.
Response:
The Examiner respectfully disagrees. In view of Applicant’s comments, the Examiner has rephrased the explanation to “three main steps” and “store and associated data” (see paragraph 16 in page 9 above). The Examiner considers that the present analysis above has addressed Applicant’s comments. Therefore, Applicant’s arguments are moot.
Per pages 20, third paragraph of the 06/20/2026 AB, the Applicant argues that 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 according to the guidance in the 2019 Revised PEG. In view of Applicant’s arguments, the Examiner provides the additional explanation for the 101 rejection (see at least the Step 2A, Prong 1 and Prong 2 analysis above). The Examiner considers that the explanation provided in the 10/24/2025 Office Action and the additional explanation provided in the analysis above have made a clear explanation what the “mitigating risk” is. Therefore, Applicant’s arguments are moot.
Per page 20, fourth paragraph to third paragraph of page 22 of the 06/20/2026 AB, the Applicant argues that the Examiner interpreted the claimed FTN as a generic “computing device” without considering the actual language of the limitations themselves.
Applicant argues that since the claims recite details of how to generate a secondary transaction within an FTN and reading the claims as a whole is focused on how to automatically generate secondary transactions within an FTN, the FTN is critical limitation to the claims, and it is wrong for a BRI that interprets an FTN as a mere nominal computer component.
Applicant also argues that in paragraphs 10-11 of the Smith Declaration it explained that the FTNs are networks having millions of computing devices that have special security requirements. The FTN cannot be properly interpreted as a generic “computing device” under BRI.
Response:
The Examiner respectfully disagrees. With respect to the arguments that the FTN cannot be interpreted as a generic “computing device”, the Examiner has provided additional explanation explaining why the FTN is interpreted as a generic “computing device” in the present analysis above.
As explained in the 101 analysis above, the focus of the claims is not on improving computer-related technology, but on an independent abstract idea that uses computers as tools. The focus of the claims is on using a computer (in present case, a FTN) to automate a manual process - automatically initiating and processing a secondary financial transaction associated with a reward program in response to a qualifying primary financial transaction. Automatic triggering secondary transactions does not concern an improvement to computer capabilities but instead relates to an alleged improvement in a business practice. Applicant’s FTN is no more than linking the central system to the EFTN to send and receive the primary financial transaction information, but making data available to others is not a technical improvement.
With respect to the arguments that the FTN cannot be interpreted as a generic “computing device” as explained in the Smith Declaration, Applicant cited paragraphs 10-11 from the Declaration to support his arguments, and the paragraphs are quoted below:
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 Smith 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 Examiner respectfully disagrees. The Examiner has reviewed the cited paragraphs 10-11 and the whole Smith Declaration 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 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 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).
In conclusion, 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 arguments presented in the Smith Declaration are not persuasive.
2) Eligibility Analysis, Step 2A, Prong 1
Per page 22, last paragraph to fifth paragraph of page 24 of the 06/20/2026 AB, Applicant cites the co-pending Application 18/544,188, paragraph 58 of the Specification to support his arguments, such as “… the integration between systems is the process of connecting different software, hardware, and data sources so they work together as a single, unified system”.
Applicant also argues that the last 10/24/2025 Office Action is unclear and confusing. The arguments are primarily focused on the language that Examiner used in the analysis, such as “approximately four steps for consumer to register with the central system …”, the pre-solution activities”, “business rules” are “administrative rules or criteria” that are “given very little weight”.
Response:
The Examiner respectfully disagrees. With respect to the arguments about the “integration between systems”, the Examiner disagrees. The Examiner points out and based on the Reply Brief, page 6, lines 21-24, page 7 lines 1-4 and 9-14 for the co-pending Application 18/44,188, there is no changes to the EFTN and the EFTN is a pipeline that provides the connectivity between different banks and performs the transaction, and the central system is added to interface with the EFTN to achieve and results in the FTN.
In view of Applicant’s arguments about the unclear analysis, the Examiner has rephrased and clarified the 101 analysis in the present Office Action. In conclusion, the Examiner still maintains his position and that the analysis of the rejection of the claims is proper.
Per page 24, sixth paragraph to second paragraph of page 27 of the 06/20/2026 AB, Applicant cited the Data Engine case, discussed the EFTN and the FTN, and argues that the present claims are not directed to merely solving a business problem, instead, the claims address technical problems associated with how an FTN automatically processes a secondary transaction using the additional data sets and the new functionality such that the FTN achieves the outcome of the secondary transaction.
Applicant also argues that the words “mitigating” or “risk” are nowhere present in the claims, nor the “mitigating risk” is discussed in the Specification as part of the inventive process. The Examiner has not explained how the claimed limitations have been interpreted of any financial risk in a transaction.
Response:
The Examiner respectfully disagrees. When determining whether a claim amounts to an abstract idea (Step 2A), the courts always break down the claim into the essential scope of the claim. In doing so, the courts do not recite specific details of what is recited in the claim(s) but focus on determining the overall abstract idea encompassed by the claim(s) as a whole. The courts also compare the overall abstract idea to previous court decisions. All of these court decisions do not label the abstract idea in a way that all of the claim elements are identified.
In the present case, as explained in the Step 2A analysis above, claim 33, 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., a FTN, an EFTN, a central system, processors, and data store). More specifically, the claim recites a method of computing a secondary transaction value and initiating a secondary transaction that includes the payment (secondary transaction value) from the accounts of the merchant/business to the accounts of the consumer.
Automatic triggering secondary transactions (rewards) through the FTN is not a technical improvement (transferring financial payments over the network). Also, making data available to other computers is not a technical improvement either (integrating the central system into the FTN). This is also confirmed by the PTAB Decision issued on 08/06/2026 for the co-pending Application No. 18/544,188.
The Applicant argues that although the claims involve business rules and business terminology, the claimed invention is not intended to solve a business problem. The Examiner disagrees. As described in Applicant’s Specification, the invention is intended to solve a business problem and this is substantiated by Appellant’s Specification, see at least paragraphs 4-7:
[0004] While many systems exists that generally automate the process of calculating the required payment and recovery of taxes, business entities, merchants as well as government entities would value a system that automates the timing in a manner in which taxes are paid, but at the same time, maintaining some personalized control over how such taxes are paid.
[0005] Furthermore, in today's ever-growing e-commerce community, there are many circumstances where a merchant or business will contract with a third party entity such as Google®. For example, internet search engines currently derive the vast majority of their revenues from an advertising based business model. However, given the recent downturn in economic conditions, such business models may be at risk since businesses and/or merchants continue to reduce their advertising expenditures. Accordingly, an alternative business model is needed whereby search engines can derive a commission which may be based upon an actual financial transaction between a merchant/business and its customer(s). Merchants and businesses would therefore further value a system that enables them to automatically schedule payments to a third party entity such as Google®.
[0006] Accordingly, the present invention relates to a computer-implemented system and method for processing an electronic payment to a third party, such as a tax payment or a commission. The system and method provide for storage of customizable business rules, which are set by a user, a merchant, a business, a government agency and/or another third party entity. Upon receipt of electronic digital information relating to a financial transaction between a merchant and/or business and one of its customers, the system and method initiate execution of a payment to a third party, such as a government entity or non-government third party entity, in which the automatic electronic payment is controlled by the customizable business rules.
[0007] By controlling the electronic payments through customizable business rules, the user, merchant, business, government agency and/or other third party entity, can specify, among other things, the timing of the payment, the amount of the payment, and the destination of funds of the payment. Such a system has global implications. For example, the government entity may desire to speed up or slow down the payments in the system. Customizable business rule enable the applicable government entity to either inject liquidity into the market by delaying receipts or withdraw liquidity by speeding up receipts. As a result, the present invention can be used effectively as a tool for macroeconomic management by enabling the authorities to set the time delay for payments and receipts on an ad hoc basis, thereby expanding or contracting money supply.
Therefore, Applicant’s arguments are not persuasive.
With respect to the arguments of the Data Engine case, the Applicant argues that the present claims are analogous to the Data Engine case:
“… precisely this technical solution and improvement in computer spreadsheet functionality. The claim recites specific steps detailing the method of navigating through spreadsheet pages within a three-dimensional spreadsheet environment using notebook tabs" and "[t]he claimed method does not recite the idea of navigating through spreadsheet pages using buttons or a generic method of labeling and organizing spreadsheets. Rather, the claims require a specific interface and implementation for navigating complex three-dimensional spreadsheets using techniques unique to computers." Data Engine at 1008-1009”
The Examiner respectfully disagrees. The present claims are not analogous to the Data Engine case because the present claims do not recite a specific interface and implementation for navigating complex three-dimensional spreadsheets using techniques unique to computers. The Applicant’s original and present claims do not recite an interface (not to mention a specific interface). Further, the Applicant’s Specification only generally describes a user interface 118a and merchant interface 118b in paragraphs 21-24, 28-29, 31-32, 34-35 for inputting and outputting data and nothing else. Therefore, there is no analogy between the present claims and the Data Engine case. The only similarity between the present claims and the Engine Data case is that they all utilize computer technology.
With respect to the arguments about the words “mitigating” or “risk” are nowhere present in the claims, the Examiner respectfully disagrees. As explained in the Step 2A analysis above, the claim recites steps a1-a6 to require users to store and associate the first data with an ID and the second data with a business rule with the payment reward program of the FTN and designate the accounts to transmit and receive payments (rewards). These steps are pre-solution activities (data gathering) for later user verification and access authorization purpose (security) – this is mitigating risk to prevent unauthorized user to gain access to the FTN and is business relation for the merchant/business and consumer to transmit and receive payments (agreement in reward program). Steps b1-b6 are to verify that the merchant/business and consumer have successfully match their IDs with the IDs stored in the data store before the computation of a secondary transaction value. These steps are related or directed to “mitigating risk” and “business relation” which is a method of organizing human activity - an abstract idea. Details of the explanation can be found in the Step 2A analysis above and not repeated here. Therefore, Applicant’s arguments are not persuasive.
Per page 27, third paragraph to third paragraph of page 28 of the 06/20/2026 AB, Applicant argues that the present claims cannot be considered to be directed to a “fundamental economic practice” or a “commercial interaction”. The Applicant argues that although the claims involve business rules and the use of financial accounts, and the claimed process may involve terminology that sounds like a commercial interaction or a business relation (“transaction”, “merchant”, “transfer of funds”), this is not the focus of the claimed invention. The claims address technological problems associated with how to automatically process a secondary transaction (reward) through a financial transaction network (FTN). The Applicant argues that a claim involves an exception does not mean the claim is directed to that exception.
Response:
The Examiner respectfully disagrees. The Examiner has re-reviewed the analysis and still concluded that the claims are directed at a fundamental economic practice and a commercial interaction, see the Step 2A analysis above.
The Examiner also suggests the Applicant to review the PTAB Decision issued on 08/06/226 for the co-pending Application 18/544,188 in that the PTAB Judge agreed with the Examiner that the claims recite 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 a commercial interaction between a merchant and consumer – i.e., a certain method of organizing human activity – and therefore, recites an abstract idea. The Examiner notes that present Application is very similar to the co-pending Application and the analysis of the co-pending Applicant can be Applied to the present Application. In conclusion, the Examiner disagrees with the Applicant and maintains the rejection.
Per page 28, fourth paragraph to first paragraph of page 30 of the 06/20/2026 AB, Applicant argues that the claims are not directed to a mathematical calculation and/or a mental process.
Response:
In view of Applicant’s arguments, the mathematical calculation and the mental process rejections are withdrawn from this present Office Action. Therefore, Applicant’s arguments are moot.
Per page 30, second paragraph of the 06/20/2026 AB, Applicant argues that the Examiner appears to parse out the claim limitations for the analysis of the claims.
Response:
The Examiner respectfully disagrees. The Examiner has provided a detailed analysis of the claims each time that the Application files a response. The Examiner has reviewed the Specification and does not identify any description that provides an improvement for the central system, EFTN and FTN. Applicant’s Specification, paragraphs 15 and 18 clearly state that the inventive system and method establish a symbiotic relationship among all entities by providing a method for habitual savings to the user while integrating merchant loyalty rewards and the EFT network (EFTN) is provided by the existing credit card providers. Thus, Applicant’s invention basically used the computer elements and the existing technology to implement the abstract idea and used them in a conventional way for “a business solution” to “a business problem”.
[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.
[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.
Also, during the 11/12/2024 interview for the co-pending Application 18/529,259, Applicants (both the Attorney and inventor) admitted that there is no change to the EFTN 130. This is substantiated by the Specification (see at least paragraphs 18 and 20). Also, the central system 110 and/or transaction processor can be implemented as a computer processing device, and in particular, any suitable device for performing computations in accordance with a computer program may be used. This is substantiated by the specification (see at least paragraphs 18 and 36):
[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.
[0020] Central system 110 includes server 112, database 114 and transaction processor 116. It should be appreciated that in one embodiment a single computer can comprise one or more of these components. In alternative embodiments, however, these components are provided separately and coupled to one another for communication purposes, either locally or remotely. Server 112 further comprises all requisite hardware and software modules (not shown) to enable communication between central system 110 and remote entities, such as EFT network 130. These communication hardware components can include conventional I/O interfaces, such as modems, network cards, and the like. Such hardware components and software applications are known to those skilled in the art and have not been described m detail so as not to unnecessarily obscure the description of the invention herein.
[0036] It should be understood that central system 110 and/or transaction processor 116 can be implemented as a computer processing device, and in particular, any suitable device for performing computations in accordance with a computer program may be used. Examples of such devices include a personal computer, a laptop computer, a microprocessor, a programmable logic device, an application specific integrated circuit, or the like.
Furthermore, as described in paragraphs 15-16 that the FTN 100 is a system that links the EFT networks (EFTN), users, merchants and financial institutions towards a common purpose of facilitating an optimal model of consumption, savings, and investment. Thus, the FTN basically provides a link between an EFTN 130 and a central system 110 and thus allowing the movement of payment information between the EFTN 130 and the central system 110. The FTN 100 is merely described in paragraph 15-16 and nowhere else and there is no description describing any improvement in the paragraphs either. Moreover, although the central system 110 manages many transaction activities, the recited central system 110 is a generic computer and this is substantiated by the specification.
[0015] FIG. 1 illustrates a block diagram of the financial transaction network TOO [100] in accordance with an exemplary embodiment of the present invention. Financial transaction network TOO [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.
[0016] As shown, FIG. 1 depicts an overall representation of the financial transaction network 100 that provides for a single or series of secondary and/or tertiary transactions, which are triggered by one or more primary transactions. Generally, a primary transaction is a conventional credit/debit card payment or the like, which is based upon standard authorization and settlement processes. The inventive system facilitates one or more secondary and/or tertiary transactions whose execution is prompted by the one or more primary transactions, but is otherwise independent of the primary transaction. It should be understood that the terms “primary”, “secondary” and “tertiary” are used in this application in terms of sequence and not importance. For example, a “primary” transaction is a first transaction that triggers a secondary (i.e., second) transaction and/or tertiary (i.e., third) transaction. Furthermore, in other embodiments, the primary transaction triggers the secondary transaction, which, in turn, triggers the tertiary transaction or, in the alternative, the primary transaction triggers the tertiary transaction, which, in turn, triggers the secondary transaction.
Neither the Specification nor the claims indicate or provide an improvement to the EFTN and/or the central system (not hardware improvement). Applicant’s claimed invention is basically using the existing technology to provide “a business solution” to “a business problem” and does not improve the functionality of the computer or any other technology and this is supported in paragraphs 5-7 of the Specification.
[0005] Furthermore, in today's ever-growing e-commerce community, there are many circumstances where a merchant or business will contract with a third party entity such as Google®. For example, internet search engines currently derive the vast majority of their revenues from an advertising based business model. However, given the recent downturn in economic conditions, such business models may be at risk since businesses and/or merchants continue to reduce their advertising expenditures. Accordingly, an alternative business model is needed whereby search engines can derive a commission which may be based upon an actual financial transaction between a merchant/business and its customer(s). Merchants and businesses would therefore further value a system that enables them to automatically schedule payments to a third party entity such as Google®.
[0006] Accordingly, the present invention relates to a computer-implemented system and method for processing an electronic payment to a third party, such as a tax payment or a commission. The system and method provides for storage of customizable business rules, which are set by a user, a merchant, a business, a government agency and/or another third party entity. Upon receipt of electronic digital information relating to a financial transaction between a merchant and/or business and one of its customers, the system and method initiate execution of a payment to a third party, such as a government entity or non-government third party entity, in which the automatic electronic payment is controlled by the customizable business rules.
[0007] By controlling the electronic payments through customizable business rules, the user, merchant, business, government agency and/or other third party entity, can specify, among other things, the timing of the payment, the amount of the payment, and the destination of funds of the payment. Such a system has global implications. For example, the government entity may desire to speed up or slow down the payments in the system. Customizable business rule enable the applicable government entity to either inject liquidity into the market by delaying receipts or withdraw liquidity by speeding up receipts. As a result, the present invention can be used effectively as a tool for macroeconomic management by enabling the authorities to set the time delay for payments and receipts on an ad hoc basis, thereby expanding or contracting money supply.
As it is analyzed in the 101 rejection above, the focus of the claims (supported by the Specification) is on a method of initiating a secondary transaction by using a processor to generate and transmit a second payment request based on a successful match of the consumer ID with the ID stored in data store and a determination of a secondary transaction value. The current pending claims and the Specification do not describe an improvement to the computer itself or any other technology, nor do they provide a method for processing data that improves existing technological processes.
Also, when determining whether a claim amounts to an abstract idea (Step 2A), the courts always break down the claim into the essential scope of the claim. In doing so, the courts do not recite specific details of what is recited in the claim(s) but focus on determining the overall abstract idea encompassed by the claim(s) as a whole. The courts also compare the overall abstract idea to previous court decisions. All of these court decisions do not label the abstract idea in a way that all of the claim elements are identified.
In the present case, as explained in the analysis above, claim 33, 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., a FTN 100, EFTN 130, central system 110, processors, and data store). More specifically, the claim recites a method of initiating a secondary transaction by using a processor to generate and transmit a second payment request based on a successful match of the consumer ID with the ID stored in data store and a determination of a secondary transaction value.
The recited 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 (i.e., hedging, insurance, mitigating risk – see steps of “further to the consumer executing …”, “subject to successful matching of the ID …”, “subject to the first account …”) and a commercial interaction between a merchant and consumer (i.e., agreements in the form of contracts; legal obligation; advertising, marketing or sales activities or behaviors; business relations – see steps of “storing …”, “associating …”, and “associating …”). See MPEP 2106.04(a)(2)III.C.2.
The claimed process being performed on a “computing device” (a central system) via the EFTN limits the idea to a particular technical environment (i.e., FTN). The claim process, such as storing data, associating data, associating data, analyzing data, applying data, applying data, computing data, initiating data, generating data, and transmitting data based on a successful matching of ID and a computation of a secondary transaction value, 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. Thus, 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 33 recites an abstract idea.
System claim 32 recites a central system integrated into a FTN with the comparable elements and limitations as discussed in method claim 33. Mere nominal recitation of computer components does not take the claim out of the methods of organizing human activity grouping. Therefore, claim 32 also recites an abstract idea. Accordingly, claims 32-33 recite an abstract idea.
Claims 32-33 include the additional elements, but they do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea as analyzed in the 101 rejection above. Therefore, claims 32-33 are directed to an abstract idea.
Additionally, dependent claims 3-10, 12, 14, 16-17, 19-27, 29-31, and 34-37 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 44-45 to provide a practical application or significantly more than the judicial exception.
The claims as a whole merely describe how to generally “apply” the concept of initiating a secondary transaction by using a processor to generate and transmit a second payment request based on a successful match of the consumer ID with the ID stored in data store and a determination of a secondary transaction value by: storing the consumer ID in the data store, establishing the business rule (pre-solution activities – registration with a computer), analyzing the primary transaction data, applying the business rule, computing the secondary transaction value, and initiating the secondary transaction by generating and transmitting the second payment request (process and transfer financial payment information over the internet). All these generic computer functions are well-understood, routine, and conventional activities previously known to the industry similar to those referenced by MPEP 2106.05(q) Il. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
The focus of the claims is on a method of initiating a secondary transaction by using a processor to generate and transmit a second payment request based on a successful match of the consumer ID with the ID stored in data store and a determination of a secondary transaction value. 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. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. 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. Therefore, the claims are not patent eligible under 35 USC § 101.
Per page 30, third paragraph to first paragraph of page 31 of the 06/20/2026 AB, Applicant argues about that the understanding by the Office of what is meant by “integration”, and also argues that the claims do not need a program claim for a method claim or system claim to be patent eligible.
Response:
The Examiner respectfully disagrees. The Applicant argues that the FTN is an improved system, but the claims, the Specification, the Smith and Karim Declarations do not provide any technical detail to show the FTN is a specific FTN, do not prove that the FTN is different and unique from other FTNs. Neither the claims nor the Specification describe which integration method is used to integrate the central system into the FTN.
With respect to the arguments of a program claim, the Examiner does not disagree with the Applicant that a program claim is required for a method or system claim to be patent eligible. However, Applicant’s present claims are primarily focused on a method (which is determined to be an abstract idea and not patent eligible) and the system claim 32 is mirrored to the method claim 33 with the same elements and limitations and further Applicant’s claims do not include a program claim to show that the “integration” of the central system into the FTN is unique and different from other generic FTNs or how the central system is integrated into the FTN. Therefore, Applicant’s arguments are not persuasive.
Per page 31, second paragraph to first paragraph of page 33 of the 06/20/2026 AB, Applicant argues the format and clarity of the 101 analysis is not clear, such as “pre-solution activities”, “approximately four steps”. Applicant argues that every element and limitation must be considered “both individually and in combination to ensure that they amount to significantly more than the judicial exception”.
Response:
The Examiner respectfully disagrees. In view of Applicant’s comments, the Examiner has reformatted the analysis in the present Office Action and the steps are better labeled in a more organized manner. It should be noted that the Examiner provides a detailed analysis of the claims each time that the Applicant files an official response. The less organized format of the analysis should not overcome the rejection.
3) Eligibility Analysis, Step 2A, Prong 2
Per page 33, second paragraph to fourth paragraph of page 33 of the 06/20/2026 AB, Applicant 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.
The Applicant’s present claims are different. The present claims do not recite a machine learning (ML) model or an artificial intelligence (AI) model as that 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 associated with a reward program to a consumer 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, 26, and 36 of the Publication). This is "a business solution" to "a business problem", 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 transaction (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.
Per page 33, fifth paragraph to last paragraph of page 38 of the 06/20/2026 AB, the Applicant argues 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 10/24/2025 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 32 and 33 are patent-eligible.
Response:
The Examiner respectfully disagrees. The Examiner has provided a 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 claims (32 and 33) 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 b2-b6); (ii) a Financial Transaction Network (FTN) (i.e., limitations b1, c6); (iii) a data store (e.g., limitations b2-b6); (iv) a point-of-sale terminal (i.e., limitation c1); (v) a transaction processor (i.e., limitation c4); and (vi) identifying the secondary financial transaction separately from the primary financial transaction (i.e., limitation c7).
The storing data and accounting for the secondary financial transaction 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 Smith Declaration are not persuasive.
4) Eligibility Analysis, Step 2B
Per page 39, first paragraph to last paragraph of page 41 of the 06/20/2026 AB, 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 page 42, lines 1 – 6 of page 43, the Applicant argues that the Office did not address the Smith and Karim Declarations filed on 10/01/2025.
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.
6) Response to Additional Examiner Arguments
Per page 43, lines 7 – 18 of page 46, in this section, the Applicant basically argues that the previous Office Actions either did not address the Applicant’s arguments and comments adequately or addressed the Applicant’s arguments and comments differently.
Response:
The Examiner respectfully disagrees. The Examiner has provided detailed analyses and responses to all Applicant’s arguments in every Response that filed by the Applicant. Therefore, Applicant’s arguments are not persuasive, and the rejection of the claims is MAINTAINED.
E. Double Patenting
In view of Applicant’s comment on page 46 of the 06/20/2026 AB, the rejection is maintained until the Applicant files a terminal disclaimer. Also, since the Applicant has abandoned the co-pending Application No. 18/128,856, the provisional non-statutory double patent rejection for the co-pending Application is withdrawn.
F. Conclusion
In conclusion, the Applicant’s arguments are not persuasive and the rejection of the claims under 35 USC 101 is MAINTAINED.
Claim Rejections - 35 USC § 102/103
An updated prior art search did not identify any art(s), individually or in combination with others, that teaches each and every element and limitation of the claims at this time.
Conclusion
Claims 3-10, 12, 14, 16-17, 19-27, and 29-37 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAI TRAN whose telephone number is (571)272-7364. The examiner can normally be reached Monday-Friday, 9-5.
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HAI TRAN
Primary Examiner
Art Unit 3695
/HAI TRAN/Primary Examiner, Art Unit 3695
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