DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on October 01, 2025 has been entered.
This is the Non-Final Office Action in response to the Amendment filed on October 01, 2025 for Application No. 18/531,414, filed on December 06, 2023, title: “Systems and Methods For Processing Payments To A Third Party Providing A Product Or Service”.
Status of the Claims
Claims 2-31 were pending in this application. By the 10/01/2025 Response, claims 2, 11, 13, 15, 18, and 28 have been cancelled, new claims 32-37 have been added. Claim 1 was previously cancelled. Accordingly, claims 3-10, 12, 14, 16-17, 19-27, and 29-37 are pending in this application and have been examined.
Priority
This Application was filed on 12/06/2023 and is a CON of US Application No. 18/128,856 filed on 03/30/2023, which is a CON of US Application No. 17/351,414 filed on 06/18/2021 (Patented No. 11,829,963), which is a CON of US Application No. 14/721,414 filed on 05/26/2015 (Patented No. 11,068,865), which is a CON of US Application No. 14/243,071 filed 04/02/2014 (abandoned), which is a CON of US Application No. 12/709,810 filed 02/22/2010 (Patent No. 8,732,082), which is a CIP of 12/499,421 filed 07/08/2009 (Patent No. 8,732,080), which claims the benefit of US Provisional Application No. 61/157,097 filed 03/03/2009.
For the purpose of examination, the date 03/03/2009 is considered to be the effective filing date.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 3-10, 12, 14, 16-17, 19-27, and 29-37 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over the claims of U.S. Patents No. 11,829,963, 11,068,865, 8,732,082, and 8,732,080. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present application recite substantially the same limitations as claims of the patents with minor variations that would have been obvious to one of ordinary skills in the art. The conflicting claims are not identical, but they are not patentably distinct from each other because the claims of the US Patents are narrower in scope and anticipates the claims of the instant Application. The Application and the patents are directed to the same invention of providing merchant loyalty rewards via the secondary transaction. Also, both the Application and Patents have the same inventors and are commonly owned. Therefore, this rejection is deemed necessary.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 3-10, 12, 14, 16-17, 19-27, and 29-37 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Under the Step 1 analysis, the claims are reviewed to determine whether they fall within the four statutory categories of patentable subject matter (i.e., process, machine, manufacture, or combination of matter).
Claims 3-10, 12, 14, 32, and 34 recites a central system integrated into a Financial Transaction Network (FTN) to use the FTN to automatically generate and transmit a second payment request for a secondary transaction derived from an electronic digital information (EDI) of a primary transaction of the FTN comprising various computer components. Claims 16-17, 19-27, 29-31, 33, and 35-37 recite a method of using a central system integrated into a Financial Transaction Network (FTN) to automatically generate and transmit a second payment request for a secondary transaction derived from an electronic digital information (EDI) of a primary transaction of the FTN comprising a series of steps. Therefore, the claims are directed to a machine and process which fall within the four statutory categories of invention (Step 1-Yes, the claims are statutory).
Step 2A Prong 1:
Under the Step 2A, Prong 1 analysis, the claims are reviewed to determine whether they recite a judicial exception by identifying if the claim limitations fall in one of the enumerated abstract idea groupings (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability.
Claim 33, A method of using a central system integrated into a Financial Transaction Network (FTN) to automatically generate and transmit a second payment request for a secondary transaction derived from an electronic digital information (EDI) of a primary transaction of the FTN, wherein the secondary transaction involves a second transfer of funds relating to a payment associated with a payment program, comprising:
integrating the central system into the FTN;
storing in at least one data store:
an ID of a first account of a consumer, the first account of the consumer held at a first financial institution;
at least one business rule of the payment program;
first data associating the ID of the first account of the consumer with the payment program; and
second data associating the at least one business rule of the payment program with the ID of the first account of the consumer;
further to the consumer executing the primary transaction at a point-of-sale of a merchant/business using the first account of the consumer as a source of funds for a purchase of products and/or services from the merchant/business, the primary transaction represented by a first payment request transmitted by a terminal of the point-of-sale, processed through the FTN and consisting essentially of a first transfer of funds from the first account of the consumer that exactly matches a value of the purchase of the products and/or services at the terminal, to a first account of the merchant/business, analyzing the EDI of the primary transaction to determine (i) that the ID of the first account of the consumer matches the ID of the first account of the consumer stored in the at least one data store, and (ii) the value of the purchase of the products and/or services;
subject to successful matching of the ID of the first account of the consumer in the EDI of the primary transaction with the ID of the first account of the consumer stored in the at least one data store, applying the at least one business rule of the payment program to the EDI of the primary transaction to at least partially determine eligibility of the first account of the consumer for the payment;
subject to the first account of the consumer being eligible for the payment, computing a secondary transaction value for the payment, based at least in part on the EDI of the primary transaction and the at least one business rule; and
automatically initiating the secondary transaction from a second account of the consumer to a third account different from the first account of the consumer for the secondary transaction value, by use of a transaction processor to:
(a) generate the second payment request, containing an EDI of the secondary transaction, and
(b) transmit the second payment request via the FTN to a second financial institution of the second account of the consumer, thereby causing the second transfer of funds to be executed;
wherein the secondary transaction is accounted for in a separate transaction from the primary transaction on an account statement of the consumer; and
wherein the central system is operated by a third party other than the first financial institution of the first account of the consumer.
The above limitations (underlined), as drafted, is a process that, under its broadest reasonable interpretation, covers a method of organizing human activity but for the recitation of generic computer components (e.g., central system, FTN, and EFT network). More specifically, the claim recites fundamental economic principles or practices and/or commercial or legal interactions including a method of using a central system integrated into a FTN to generate and transmit a second payment request for a secondary transaction derived from an EDI of a primary transaction of the FTN. The claim recites the method essentially comprising the following main steps:
First, the claim recites a step for the central system to integrate into the FTN. However, this step is broad and does not provide any details on how the integration is performed and Applicant’s Specification does not provide any details to support the integration either. It is also noted that the claims do not include a program claim to show how the integration is done or how the central system 110 is adapt into the EFT network 130 to establish the FTN 100.
Second, the claim recites approximately four steps for a consumer to register with the central system, establish a business rule with the payment program, and designate the accounts of the consumer to receive payments. These steps are general and basically for a consumer to register with the system, establish the business rule, and designate the accounts so that the consumer can have the access to request and receive the payments via a secondary transaction. These steps are pre-solution activities for data gathering. No patentable weight is given to these steps.
Third, the claim recites four steps with two additional steps (“a” and “b” - totally six) to generate and transmit a second payment request for a secondary transaction derived from an EDI of a primary transaction of the FTN based on a computed secondary transaction value based on the primary transaction and business rule:
analyzing the EDI of the primary transaction to determine (i) that the ID of the first account of the consumer matches the ID of the first account of the consumer stored in the at least one data store, and (ii) the value of the purchase of the products and/or services;
applying the at least one business rule of the payment program to the EDI of the primary transaction to at least partially determine eligibility of the first account of the consumer for the payment;
computing a secondary transaction value for the payment, based at least in part on the EDI of the primary transaction and the at least one business rule; and
automatically initiating the secondary transaction from a second account of the consumer to a third account different from the first account of the consumer for the secondary transaction value, by use of a transaction processor to:
(a) generate the second payment request, containing an EDI of the secondary transaction, and
(b) transmit the second payment request via the FTN to a second financial institution of the second account of the consumer, thereby causing the second transfer of funds to be executed;
The claim recites a process corresponds to a method of organizing human activity and specially to a fundamental economic practice to mitigate risk (see limitation “subject to successfully matching of the ID … of the consumer with ID stored in the at least one data store,”) prior to initiate a secondary transaction to a consumer based on a computed secondary transaction value, the EDI of the primary transaction, and business rule (i.e., hedging, insurance, mitigating risk. See the steps of analyzing the EDI of the primary transaction to …; and subject to successful matching of the ID of the first account of the consumer in the EDI of the primary transaction with the ID of the first account of the consumer stored in the at least one data store, analyzing …) and a commercial interaction (i.e., agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations - See the registration steps). MPEP 2106.04(a)(2)III.C.2.
The claim process being performed on a “computing device” via the FTN (a central system integrated into a FTN) limits the idea to a particular technical environment. The claimed process, such as storing an ID, business rule, associating ID data, associating business rule, analyzing the EDI of primary transaction data to match the ID data, applying the business rule, computing secondary transaction value, initiating secondary transaction to generate and transmit the second payment request, narrows the abstract idea to a particular type of relationship, but it does not make the idea less abstract. The business rules are basically the “administrative criteria” for controlling the process of the financial transactions and can be set or modified by a user, a merchant, or a government agency, and/or another third party entity (see paragraphs 6-7 of the Publication No. 2024/0104529-A1). These business rules are customizable by individual, human rules, and are the administration rules or criteria and thus are given very little patentable weight. Thus, while the business rules further narrow the scope of the process, they do not make the claim less abstract. The mere nominal recitation of computer components does not take the claim out of the methods of organizing human activity grouping.
If the claim limitations, under their broadest reasonable interpretation, cover performance of a fundamental economic practice and commercial interaction, then they fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Additionally, the claim is directed to a Mathematical Concept because the claim is directed to a computation of a secondary transaction value after confirming the consumer is eligible for the payment which is a mathematical calculation (i.e., mathematical relationships, mathematical formulas or equations, mathematical calculations - see claim limitation “subject to successful matching of the ID of the first account of the consumer in the EDI of the primary transaction with the ID of the first account of the consumer stored in the … data store, applying the at least one business rule of the payment program to the EDI of the primary transaction to … determine eligibility of the first account of the consumer for the payment” and this is supported in paragraph 27 of the Publication). Therefore, under the broadest reasonable interpretation, the claim also is directed to a Mathematical Calculation which is an abstract idea.
If the claim covers performance of the limitation of a mathematical calculation (computing a secondary transaction value), then it falls within the “Mathematical Concepts” grouping. Accordingly, the claim recites an abstract idea.
Moreover, although the preamble of the claim recites a method using a central system integrated into a FTN, the steps in the claim body (such as analyzing, applying, computing, initiating, generating, and transmitting) are devoid of any reference to any computer or machine. None of the method steps in the claim are clearly recited as being performed by a computer or device and per the claim scope can be performed by a person with paper and pencil. Thus, under the broadest reasonable interpretation, the claim also is directed to a Mental Process (i.e., concepts performed in the human mind including an observation, evaluation, judgement, opinion) which is an abstract idea.
If the claim covers performance of the limitation with no specific machine or computer component is being recited, then it falls within the “Mental Processes” grouping. Accordingly, the claim recites an abstract idea.
Claim 32 recites a computer system with the comparable elements and limitations as discussed in claim 33. Therefore, this claim also is directed to the abstract idea as discussed in claim 32 (Step 2A Prong 1-Yes, the claims recite an abstract idea).
Step 2A Prong 2:
Under the Step 2A, Prong 2 analysis, the claims are reviewed to determine whether the judicial exception (i.e., abstract idea) is integrated into a practical application. In order to make this determination, the additional element(s), or combination of elements, are analyzed to determine if the claim as a whole integrates the recited judicial exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.
The judicial exception is not integrated into a practical application. In particular, the claims (32 and 33) further recite the additional elements (see underlined below). The additional elements are additional details for the existing functional steps of the claims which further narrow the scope of the claims, but do not change the analysis. Further narrowing the details of an abstract idea does not change the 101 analysis because a narrower abstract idea does not make it any less abstract:
Claim 33, A method of using a central system integrated into a Financial Transaction Network (FTN) to automatically generate and transmit a second payment request for a secondary transaction derived from an electronic digital information (EDI) of a primary transaction of the FTN, wherein the secondary transaction involves a second transfer of funds relating to a payment associated with a payment program, comprising:
integrating the central system into the FTN;
storing in at least one data store:
an ID of a first account of a consumer, the first account of the consumer held at a first financial institution;
at least one business rule of the payment program;
first data associating the ID of the first account of the consumer with the payment program; and
second data associating the at least one business rule of the payment program with the ID of the first account of the consumer;
further to the consumer executing the primary transaction at a point-of-sale of a merchant/business using the first account of the consumer as a source of funds for a purchase of products and/or services from the merchant/business, the primary transaction represented by a first payment request transmitted by a terminal of the point-of-sale, processed through the FTN and consisting essentially of a first transfer of funds from the first account of the consumer that exactly matches a value of the purchase of the products and/or services at the terminal, to a first account of the merchant/business, analyzing the EDI of the primary transaction to determine (i) that the ID of the first account of the consumer matches the ID of the first account of the consumer stored in the at least one data store, and (ii) the value of the purchase of the products and/or services;
subject to successful matching of the ID of the first account of the consumer in the EDI of the primary transaction with the ID of the first account of the consumer stored in the at least one data store, applying the at least one business rule of the payment program to the EDI of the primary transaction to at least partially determine eligibility of the first account of the consumer for the payment;
subject to the first account of the consumer being eligible for the payment, computing a secondary transaction value for the payment, based at least in part on the EDI of the primary transaction and the at least one business rule; and
automatically initiating the secondary transaction from a second account of the consumer to a third account different from the first account of the consumer for the secondary transaction value, by use of a transaction processor to:
(a) generate the second payment request, containing an EDI of the secondary transaction, and
(b) transmit the second payment request via the FTN to a second financial institution of the second account of the consumer, thereby causing the second transfer of funds to be executed;
wherein the secondary transaction is accounted for in a separate transaction from the primary transaction on an account statement of the consumer; and
wherein the central system is operated by a third party other than the first financial institution of the first account of the consumer.
Further, the claims recite the additional computer elements, such as a central system, FTN, the first/second/third accounts, and a merchant/consumer to perform the storing, associating, analyzing, applying, computing, initiating, generating, and transmitting steps. The recited additional computer elements in all steps are recited at a high level of generality and the limitations are done by the generically recited computer system, this is substantiated by the Applicant’s Specification in paragraphs 16-38 and Figure 1. The FTN is a system that links or connects the EFT networks, central system, users, merchants and financial institutions towards a common purpose of facilitating an optimal model of consumption, savings and investment (see paragraphs 15-16 and 59 of the Publication). Further, paragraphs 18-20 and 36 clearly describe that the central system and/or transaction processor can be implemented as a computer processing device or any suitable device for performing computations. Neither the claims nor the Specification describe any improvement to the central system or FTN. Applicant’s Specification does not describe how the computer elements are different from the general computer components. No non-generic or non-conventional arrangement of the computer elements is found in the claims nor in the Specification. The generic processor limitations are no more than mere instruction to apply the exception using generic computer components. The computer system is recited at a high-level of generality (i.e., as a generic processor performing generic computer functions of receiving/transmitting communications, processing information, querying the database) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea (Step 2A Prong 2-No, the claims do not integrate the abstract idea into a practical application).
Step 2B:
Under the Step 2B analysis, the claims are reviewed to determine whether the claims provide an inventive concept (i.e., whether the claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
The claims (32 and 33) do not include additional elements, considered both individually and as an ordered combination, that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer to perform the storing, associating, analyzing, applying, computing, initiating, generating, and transmitting functions as claimed amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Therefore, the independent claims are not patent eligible.
Dependent claims 3-10, 12, 14, 16-17, 19-27, 29-31, and 34-37 depend on claims 32, 33, and thus include all of the limitations and features of their independent claims. Therefore, the dependent claims also are directed to the same abstract idea as in claims 22 and 33.
Claims 16-17 recite additional elements “further comprising the central system integrated into the FTN accruing a fee or a commission further to the consumer participating in the payment program.” and “further comprising the central system integrated into the FTN accruing an assets under management fee or an assets under management commission as a function of the amount of the secondary transaction that the central system sends to the third account.” (The additional elements further define the abstract idea in independent claims that the central system accrues fee, commission, or assets under, and execute the secondary transaction through the FTN. The additional elements amount to well-understood, routine, and conventional activities. see 2106.05(d)). The claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 3 and 19 recite additional elements “further comprising the central system integrated into the FTN registering the ID of the first account of the consumer with the payment program.” (The additional elements further define the abstract idea in the independent claims and amount to well-understood, routine, and conventional activities. see 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 4 and 20 recite additional elements “further comprising the central system integrated into the FTN receiving the ID of the first account of the consumer from a portal configured to register the ID of the first account of the consumer with the payment program.” (The additional elements further define the abstract idea in the independent claims and amount to well-understood, routine, and conventional activities. see 2106.05(d)). The claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 5 and 21 recite additional elements “wherein the portal comprises a website portal.” (The additional elements further define the abstract idea in the independent claims and amount to well-understood, routine, and conventional activities. see 2106.05(d)). The claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 6 and 22 recite additional elements “further comprising the central system integrated into the FTN using as the ID of the first account of the consumer, a representation of at least one of an account number of a debit card, credit card, gift card, prepaid card, electronic payment mediation card, or a mobile phone account.” (The additional elements further define the abstract idea in the independent claims and amount to well-understood, routine, and conventional activities. see 2106.05(d)). The claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 7 and 23 recite additional elements “wherein the second account of the consumer is the same as the first account of the consumer.” (The additional elements further define the abstract idea in the independent claims and amount to well-understood, routine, and conventional activities. see 2106.05(d)). The claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 8-9 and 24-25 recite additional elements “wherein the third account comprises an investment account.” and “wherein the third account comprises a charity account.” (The additional elements further define the abstract idea in the independent claims and amount to well-understood, routine, and conventional activities. see 2106.05(d)). The claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 10 and 26 recite additional elements “further comprising the central system integrated into the FTN receiving data from a portal to effect at least one of (a) registering the consumer with the payment program, (b) establishing the at least one business rules, and (c) designating the second account of the consumer and the third account.” (The additional elements further define the abstract idea in the independent claims and amount to well-understood, routine, and conventional activities. see 2106.05(d)). The claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 27 recites additional elements “further comprising the central system integrated into the FTN assigning a unique user identifier that links the ID of the first account of the consumer with an ID of the second account of the consumer.” (The additional elements further define the abstract idea in the independent claims about assigning a unique user ID that links the ID of the first account with an ID of the second account of the consumer. The additional elements amount to well-understood, routine, and conventional activities. see 2106.05(d)). The claim individually or in combination with others does not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 12 and 29 recite additional elements “further comprising the central system integrated into the FTN controlling a timing of the payment.” (The additional elements further define the abstract idea in the independent claims and amount to well-understood, routine, and conventional activities. see 2106.05(d)). The claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 13 and 30 recite additional elements “further comprising the central system integrated into the FTN transmitting to the consumer, a notification relating to an activity associated with the secondary transaction.” (The additional elements further define the abstract idea in the independent claims and amount to well-understood, routine, and conventional activities. see 2106.05(d)). The claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 14 and 31 recite additional elements “wherein the first financial institution comprises a bank.” (The additional elements further define the abstract idea in the independent claims and amount to well-understood, routine, and conventional activities. see 2106.05(d)). The claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
The dependent claims do no more than providing additional instructions and administrative requirements for the functional steps already recited in the independent claims. These additional recited limitations further narrow the scope of the abstract idea and are merely insignificant solution activities which only refine the abstract idea further and do not include additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea. Each and every recited combination between the recited computing hardware and the recited computing functions have been considered. No non-generic or non-conventional arrangement is found. Therefore, the dependent claims also are not patent eligible.
The focus of the claims is on a method of using a general computer (a central system integrated into a FTN) to receive and process the primary transaction information and for a consumer to register with the system, establish the business rule, generate and transmit a second payment request so that he/she can receive customer rewards. The claims are not directed to a new type of processor, computer network, or system memory, nor do that provide a method for processing data that improves existing technological processes. The focus of the claims is not on improving computer-related technology, but on an independently abstract idea that uses computers as tools. Accordingly, when viewed as a whole, the claims do no more than generally linking the use of the judicial exception to a particular technological environment or field of use. No inventive concept is found in the claims. Therefore, the claims do not add significantly more (i.e., an inventive concept) to the abstract idea (Step 2B-No, the claims are not significantly more than the abstract idea).
Response to Arguments
Double Patenting
In view of Applicant’s response, the rejection is maintained until the Applicant files a terminal disclaimer or the rejection is no longer required.
Also, since the Applicant has abandoned Application No. 18/128,856, the provisional non-statutory double patent rejection is withdrawn.
Claim Rejections - 35 USC § 101
Applicant's arguments filed 10/01/2025 have been fully considered but they are not persuasive.
Per pages 1-7 of the Remarks, Applicant summarized the interviews that have been conducted for the co-pending Applications: 18/128,856 (abandoned), 18/529,259 (prosecution continues), and 18/544,188 (appealing), which were held on 12/07/2023, 11/12/2024, and 01/07/2025. In all interviews, the Applicant argued that the Office did not agree with the Applicant that the “secondary transaction” is a separate transaction from the primary transaction and that the interviews finally made the Examiner agreed with the Applicant that the secondary transaction is a separate transaction. Applicant further argues that the Office did not expressly confirm the Office’s agreement that the secondary transaction is not a step in a primary transaction.
Response:
(Application 18/529,259 “November 12, 2024, Examiner Interview”):
(Note: the Examiner replied to this Application first instead of Application 18/128,856).
The Examiner respectfully disagrees. The Examiner did not disagree with Applicant’s claim limitation “the secondary transaction is accounted for in a separate transaction from the primary transaction on an account statement of the consumer”. The Examiner would like to clarify that he disagreed the “arguments” that Applicant presented in his previous 07/03/2024 and 07/10/2024 Responses for Application 18/529,259 in page 9, paragraph 18 because the Applicant argued that: “The Office’s proffered BRI … In every example discussed in the Specification, the secondary transaction is processed independently of the primary transaction, such that implementing a secondary transaction has no effect at all on the processing of the primary transaction.”. The Applicant recited the limitation “secondary transaction is a separate transaction” in the claims, but argued differently (broader than what is recited in the claims) that the secondary transaction is a separate and independent transaction from the primary transaction. This was what the Examiner disagreed with the Applicant. During the 11/12/2024 interview, the Examiner and Supervisor finally resolved this issue with the Applicant and clarified that the secondary transaction is a separate transaction that is dependent on the primary transaction. This is documented and confirmed in the 11/18/2024 Interview Summary. The Summary is quoted below for clarification:
Attorneys and Examiners discussed Questions 1-3 during the interview. The Examiner agreed that the secondary transaction is a separate transaction that is dependent on the primary transaction. As written in the last Non-Final Office Action (NFOA) dated 08/07/2024, the secondary transaction has been identified as part of the abstract idea. Applicant disagrees and argued that the secondary transaction is an improvement. The Examiner pointed to the last NFOA that the additional elements identified include the "central system" and "the Financial Transaction Network”. As stated in the NFOA, these elements are merely being applied to the abstract idea. This position is supported by the original disclosure, see at least [0018] and [0036]. The functionality of the central system and Financial Transaction Network are not improved. Attorneys and Examiners were not able to discuss Questions 4-12 due to the limited amount of time authorized for this interview, although this interview was over an hour. No specific agreement with any claims was reached. This concluded the interview.
Also, the Examiner’s disagreement is supported by the Applicant’s Specification in paragraphs 24 and 28 because Applicant’s Specification clearly describes that the Applicant’s method requires the secondary transaction to be automatically triggered following the successful authorization of a primary transaction (see paragraph 24 of the Publication below). Also, the maximum and/or minimum thresholds for the primary transaction may be set in order to ensure that specified primary transactions do not trigger a secondary transaction (see paragraph 28 of the Publication below):
[0024] In any event, once cardholder 140 has registered with the system and a unique user ID has been designated to cardholder 140, user interface 118a further enables the user to define business rules directing automated secondary payment to predetermined accounts 150 via a secure online control mechanism. In general, the predefined business rules specify the amount and destination of secondary transactions that will be automatically triggered following the successful authorization of a primary transaction at a remote point-of-sale, such as merchant site 120. In this regard, the business rules generally define the amount of the secondary transaction and the one or more secondary accounts 150 designated to receive the funds of the secondary transaction.
[0028] Furthermore, maximum and/or minimum thresholds for the primary transaction may be set in order to ensure that specified primary transactions (e.g., transactions under $10) do not trigger a secondary transaction. In addition, user interface 118a enables the user to define daily, weekly, monthly, and/or annual limits. Effectively, where certain tax free savings schemes limit a user's contribution to a maximum amount within a given time period, such as a year (e.g., a personal retirement account), central system 110 is configured to enable users to contribute to such accounts without worrying that more than the permissible amount is invested for that statutory time period. In a further aspect of this feature, any amounts above the permissible tax threshold that are routed to the designated account would be automatically rerouted to temporary holding accounts or secondary destination accounts as directed by the user. Funds m a temporary account could then be transferred once the appropriate tax limits were released.
Therefore, Applicant’s arguments that the secondary transaction is separate transaction and independently processed from the primary transaction are incorrected and not supported by Applicant’s Specification even though Applicant’s claim limitation is recited differently.
In addition, the secondary transaction value (the amount that is issued via a secondary transaction) is determined based on a percentage of the primary transaction (see paragraph 27 of the Publication):
[0027] Examples of the calculation of secondary payment amounts as defined by a user's customized business rules include a percentage of the primary transaction, rounding up the primary transaction to a user specified level, a predetermined lump sum, or the like. It is reiterated that while these payments may be calculated using different methods, each of these transactions is a separate payment that is processed and reported independently of the primary transaction.
Therefore, Applicant’s arguments (not the claim limitation) that the secondary transaction is separate transaction and independently processed from the primary transaction are incorrect.
The Applicant agreed with the Examiner in his subsequent 03/27/2025 Response for Application 18/529,259 to say that the secondary transaction is triggered by a primary transaction and not independent from the primary transaction (see Applicant’s 03/27/2025 Response in paragraph 2 below). The Examiner notes that the Applicant has changed his arguments regarding the secondary transaction in the Response.
2. The parties agreed that the secondary transaction recited in the claims is a separate transaction (albeit triggered by, and therefore dependent upon, a primary transaction) and not a step in a primary transaction, which has argued in the RCE dated July 1, 2024 (“RCE”), had previously been agreed with the Office during the prosecution history of the parent application, in 2012. The August 7, 2024 Office Action did not expressly confirm the Office’s agreement that the secondary transaction is not a step in a primary transaction.
With respect to the comments that “The August 7, 2024 Office Action did not expressly confirm the Office’s agreement that the secondary transaction is not a step in a primary transaction.” is not proper because it was not the issue of the disagreement. The disagreement is that the Applicant argued for his claim limitation while the Examiner argued against Applicant’s arguments present in the Response (claim limitation recited in the claims vs. arguments presented in Response. It should be noted that the arguments presented in the Response are more than what is recited in the claims). The Examiner has already resolved and clarified the issue with the Applicant, documented, and confirmed in the 11/18/2024 Interview Summary. Therefore, the Examiner considers that this issue has been resolved.
(Application 18/128,856 “December 7, 2023, Examiner Interview”):
Applicant argues that in the third paragraph of page 2:
Applicant disagreed and argued that Applicant’s “secondary transaction” is not part of (a step of) a primary transaction, and that the Specification is clear that the correctly construed secondary transaction is a separately processed second transaction (triggered by a primary transaction), such that Applicant’s “secondary transaction” is an improvement over the prior art, which is entirely distinguished from a step of a primary transaction.
The Examiner respectfully disagrees and clarifies that the Examiner did not disagree that the secondary transaction is not a separately processed secondary transaction, the Examiner disagreed the arguments that the Applicant presented in the previous Response. The Examiner also notes that Applicant no longer argue that the “secondary transaction is separate transaction and independently processed from the primary transaction”. Since the Applicant no longer argues that the secondary transaction is independent from the primary transaction, the Examiner considers this issue has been resolved.
With respect to the arguments in paragraph 8:
8) Since the December 7, 2023, Examiner Interview was conducted, the Office has now finally accepted that Applicant’s secondary transactions are separate transactions, and not a step in a primary transaction (see Summary of November 12, 2024, Examiner Interview for Application 18/529,259 below). As noted above, Applicant notes that the § 102 rejection in light of Smith (US Publication No. 2010/0191648 A1) had been withdrawn in the (Final) Office Action dated October 16, 2023, significantly before the December 7, 2023, Examiner Interview, rendering the rejection entirely spurious.
The Examiner disagrees and notes that the 12/07/203 Interview does not mention anything related to the “secondary transaction”. The interview summary is quoted below for clarification:
Attorney, Applicant, and Examiner discussed the proposed amendment, the claimed invention, and the Smith reference (US Pub. No. 2010/0191648), and others. In the end, no agreement with respect to any claim was reached. Examiner will await the formal response, and will perform a new search and consideration. This concluded the interview.
Also, the Smith reference was used for the 102/103 rejections, it was not used for the 101 rejection because the 101 rejection does not require evidence. Withdrawing the Smith reference for the 102/103 rejections does not automatically makes the claims become patent eligible under 101. The Applicant has already abandoned the Application on 10/24/2024 due to the 101 rejection. The Examiner considers the concerns in paragraph 8 is addressed.
(Application 18/544,188 “January 7, 2025, Examiner Interview”):
The Applicant cites two Interviews (18/544,188 “01/07/2025” and 18/529,259 “11/12/2024”) and argues that the FTN is improved system and that this limitation provides an additional element for the 101 analysis. Applicant argues that the improved FTN was accomplished via the integration of a central system, incorporating a server, database and transaction processor to create the improved network (FTN) in order to achieve Applicant’s secondary transaction. Therefore, the claims are 101 patent eligible.
The Examiner respectfully disagrees and points out that the Examiner’s Supervisor were present for the two Interviews. However, the Applicant and Attorney still could not convince the Office that the FTN is improved system. Thus, this further confirms that the eligibility of the claims under 101. The interview summaries are quoted below for clarification:
(18/529,259 “11/12/2024, Examiner Interview):
Attorneys and Examiners discussed Questions 1-3 during the interview. The Examiner agreed that the secondary transaction is a separate transaction that is dependent on the primary transaction. As written in the last Non-Final Office Action (NFOA) dated 08/07/2024, the secondary transaction has been identified as part of the abstract idea. Applicant disagrees and argued that the secondary transaction is an improvement. The Examiner pointed to the last NFOA that the additional elements identified include the "central system" and "the Financial Transaction Network”. As stated in the NFOA, these elements are merely being applied to the abstract idea. This position is supported by the original disclosure, see at least [0018] and [0036]. The functionality of the central system and Financial Transaction Network are not improved. Attorneys and Examiners were not able to discuss Questions 4-12 due to the limited amount of time authorized for this interview, although this interview was over an hour. No specific agreement with any claims was reached. This concluded the interview.
(18/544,188 “01/07/2025, Examiner Interview”):
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 Applicant argues there is improvement to the FTN, but Applicant’s Specification paragraphs 15-16 merely describe that the FTN 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 (see paragraph 15 of the Publication). Thus, the FTN is basically provides a link between an EFTN and a central system and thus allowing the movement of payment information between the EFTN and the central system. The FTN is merely described in paragraphs 15-16, 74-75, 82-83, 85, 87, 89-92 in general and there is no description describing any improvement in the paragraphs. Moreover, although the central system manages many transaction activities, the recited central system is a generic computer and this is substantiated by the specification (see at least paragraphs 18 and 36).
[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.
[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.
[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.
There is no improvement to the FTN, and the additional elements such as the central system and EFTN are merely being applied to the abstract idea (see at least paragraphs 18 and 36 of the specification, and the 11/12/2024 Interview Summary for the co-pending application 18/529,259). Applicant argues that the amended claims specifically recite the sending/receiving of messages across the newly improved, non-generic network (FTN) so they are no longer be interpreted as “merely applied to the abstract idea”. The Examiner respectfully disagrees. As analyzed in the 101 rejection above, the amended claims are still directed to an abstract idea without significantly more. Therefore, Applicant’s arguments are not persuasive.
SUMMARY OF ARGUMENTS
i. Applicant’s “Secondary Transaction” Is Entirely Non-Conventional As Disclosed In the Specification, Ad Supported By The Office’s Own Admission That Prior Art Networks Were Unable To Achieve Applicant’s “Secondary Transactions”, And As Evidenced By The Lack Of A Valid §§ 102/103 Rejection Which, According To The Courts Is A Consideration That Is Of Relevance To The § 101 Analysis
Per pages 8-10 (item i), Applicant argues that the secondary transactions are non-conventional as by the absence of a valid 102/103 rejection. Applicant cites the prosecution of Application No. 12/499,421 and argues that the Office had previously agreed in the prosecution history of parent patent 8,732,080 itself.
Response:
The Examiner respectfully disagrees. Unlike rejections under 102 and 103 which are evidence base, 101 is not evidence based but rather is a matter of law and such that no evidence is required. When a claim does not have a 102 and 103 rejection, this simply means no prior art is found to reject the claim, but it does not automatically make the claim become patent-eligible under the Mayo/Alice test. A claim must be significantly more to transform the abstract idea into patent eligible subject matter in order to make the claim patent-eligible as discussed by the Supreme Court in Alice. There is no requirement that examiners must provide evidentiary support in every case before a conclusion can be made that a claim is directed to an abstract idea. See, e.g., para. IV “July 2015 Update: Subject Matter Eligibility’ to 2014 Interim Guidance on Subject Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014).
The courts consider the determination of whether a claim is eligible (which involves identifying whether an exception such as an abstract idea is being claimed) to be a question of law. Accordingly, courts do not rely on evidence that a claimed concept is a judicial exception, and in most cases resolve the ultimate legal conclusion on eligibility without making any factual findings.
Further, it should be noted that the parent Application 12/499,421 was examined before the 101 Alice issue appeared. There was no 101 analysis or rejection presented in the Office Actions for the parent Application. Thus, while the claims in the parent application are patent eligible, the present claims are not based on a further review. It should be noted that when performing the patent eligibility analysis, the Examiner uses the 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 Revised PEG”) and the MPEP. As more guidance and example cases are issued, the analysis changes in light of that. Therefore, Applicant’s arguments are not persuasive.
ii. The Office Proffered that Applicant’s Claims Are Abstract At Least On Account Of Solutran, Inc. v. Elavon, Inc., But Federal Circuit And PTAB Decisions Illustrate That Financial Transactions That Meet The Requirements Under MPEP Considerations 2106.05(a)-(h) Are, In Fact, Still § 101 Eligible. Applicant’s Previously Pending And Currently Pending Claims Are Entirely Distinguished From Those Determined As Abstract In Solutran, Inc. v. Elavon, Inc., And Furthermore Are, In Fact, § 101 Eligible In Light Of MPEP Considerations 2106.05(a)-(h). In the Absence of a Prima Facie Argument From The Office Supporting The Case For Ineligibility, Applicant’s Currently Pending Claims Are In Condition For Allowance
Per pages 10-12 (item ii), Applicant cites the Solutran, Inc. v. Elavon. Inc. case argues that Applicant’s claims (1) are not implemented using a generic purpose computer (as detailed in at least section I.iv. and I.v.), (2) do not perform merely conventional activities (as detailed in at least section I.1.), (3) are performed in an entirely new way (not a long-standing commercial process) (as detailed at least in section I.ii.) as evidenced by the absence of a valid §§ 102/103 rejection from the Office (as detailed at least in section 1.i.), (4) recite an inventive concept (as detailed in at least in section I.vi.) as supported by the Office’s admission that prior art networks could not accomplish Applicant’s secondary transactions, and (5) are therefore recited at a high level of granularity rather than a high level of generality (as detailed in section IV. Step 2A Prong 2). Accordingly, Applicant maintains that the previously presented and currently pending claims recite patent-eligible subject matter.
Response:
The Examiner respectfully disagrees. The Applicant argues that the claimed invention is distinguished from the Solutran, Inc. v. Elavon, Inc. case because the claimed invention is not solving a long-standing commercial process. However, distinguishing the claimed invention from the Solutran case does not make the pending claims become patent-eligible. Since Applicant states that the details for arguments 1-4 will be provided in the following sections, the Examiner will provided response when comes to reviewing the sections.
With respect the arguments of (5), the Examiner respectfully disagrees. The Examiner has carefully reviewed the Specification and do not identify any description that provide an improvement for the central system, EFTN, and FTN. Applicant’s Specification, paragraphs 15 and 18 clearly state that the inventive system and method establishes 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 is provided by the existing credit card providers. Thus, Applicant’s invention basically uses these computer elements and the existing technology to implement the abstract idea – using the existing technology 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, the Applicants (both the Attorney and inventor) admitted that there is no changes to the EFTN 130 and this is further substantiated by the Specification (see at least paragraphs 18 and 20). 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, and this is substantiated by the Specification (see at least paragraphs 15-16). Thus, the FTN is 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 (no 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 and supported by the specification is on a method of initiating a secondary transaction to the account of the consumer based on a successful match and determination of the secondary transaction value. The previous/present claims or the Specification do not provide an improvement to the computer itself or any other technology, nor do they provide a method for processing data that improves existing technological processes. Therefore, Applicant’s arguments are not persuasive.
iii. Office Action Dated June 18, 2025 For Co-Pending Application 18/544,188 Highlights That The Office Now Accepts That “Secondary Transaction” Inherently Includes The Movement Of Messages Across A Network, And Therefore Does Not Merely Describe The Abstract Idea Of An Accounting Aspect, An Argument Initially Proffered By The Office In The November 12, 2024 Examiner Interview And Maintained In The January 7, 2025 Examiner Interview As A Reason for The § 101 Rejection
Per pages 12-16 (item iii), the Applicant continues to argue that since the Office has incorrectly construed the term “secondary transaction” in light of the Specification, thus, the Office has failed to correctly establish the BRI of the claim as a whole.
The Applicant also argues that he has specifically recited the limitations “automatically initiating the secondary transaction from a second account of the consumer to a third account different from the first account of the consumer for the secondary transaction value, by use of a transaction processor to: (a) generate the second payment request, containing an EDI of the secondary transaction, and (b) transmit the second payment request via the FTN to a second financial institution of the second account of the consumer, thereby causing the second transfer of funds to be executed” in the claim language of the current pending claims to ensure that this limitations would be included as an additional element for the § 101 analysis, and the recitation of movement of messages over the network would overcome the § 101 rejection.
Response:
The Examiner respectfully disagrees. The Examiner interprets the “secondary transaction” in view of Applicant’s specification and has explained the disagreement between the Examiner and the Applicant in above (see the response to the three interviews for Application 18/529,129, 18/128,856, and 18/544,188 above). The Examiner disagrees the “arguments” that the Applicant present in previous responses because the Applicant argued more than what was recited in the claims, not the claim limitation. The Examiner considers this issue has been resolved during the interviews between the Examiner, his Supervisor, the Applicant, and the Attorney.
With respect that the arguments that the additional limitations such as “automatically initiating the secondary transaction … thereby causing the second transfer of funds to be executed” would change the analysis because the claims now recite “movement of messages over the network” instead of “transferring financial payments”, the Examiner disagrees. The Examiner has carefully evaluated the current pending claims and still concluded that the claims are directed to an abstract idea without significantly more. The Applicant can view the details of the current analysis for the current pending claims in the 101 rejection above. Therefore, Applicant’s arguments are not persuasive.
iv. The Previously Pending And Currently Pending Claims Recite More Than A Generic Computer System Simply Passing Information To A Financial Transaction Network And Recite More Than Both Systems Operating In Their Normal Capacity, Inter Alia Because The Invention Can Only Be Achieved As Part Of A Network
Per pages 16-27 (item iv), the Applicant cites various paragraphs from the Specification and argued that the FTN is not a generic computer system interacting with the EFTN and the central system, it is an integrated system for “movement of messages across a network.
Response:
The Examiner respectfully disagrees. The Examiner has provided an explanation explaining why Applicant’s FTN is not an improved system in paragraphs 54-58 above with reference to paragraphs 15-16, 18, 20, and 36 from the Specification. The Examiner also explained that why the claimed invention is basically “a business solution” to “a business problem” in paragraphs 57-58 above with reference to paragraphs 5-7 and 15 (quoted again below for clarification) from the Specification.
[0015] Figure I illustrates a block diagram of the financial transaction network I00 in accordance with an exemplary embodiment of the present invention. Financial transaction network I00 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.
As explained in the 101 rejection above, the claims recite the additional computer elements, such as a central system, FTN, the first/second/third accounts, and a merchant/consumer to perform the storing, associating, analyzing, applying, computing, initiating, generating, and transmitting steps. The recited additional computer elements in all steps are recited at a high level of generality and the limitations are done by the generically recited computer system, this is substantiated by the Applicant’s Specification in paragraphs 16-38 and Figure 1. The FTN is a system that links or connects the EFT networks, central system, users, merchants and financial institutions towards a common purpose of facilitating an optimal model of consumption, savings and investment (see paragraphs 15-16 and 59 of the Publication). Further, paragraphs 18-20 and 36 clearly describe that the central system and/or transaction processor can be implemented as a computer processing device or any suitable device for performing computations. Neither the claims nor the Specification describe any improvement to the central system or FTN. Applicant’s Specification does not describe how the computer elements are different from the general computer components. No non-generic or non-conventional arrangement of the computer elements is found in the claims nor in the Specification. The generic processor limitations are no more than mere instruction to apply the exception using generic computer components. The computer system is recited at a high-level of generality (i.e., as a generic processor performing generic computer functions of receiving/transmitting communications, processing information, querying the database) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Moreover, in view of Applicant’s comments, the Examiner provides additional explanation for Applicant’s comments. It should be noted that a computer to one of ordinary skill in the art is capable of printing, displaying, receiving, sending, storing data, linking to other computers, and analyzing data, etc. Therefore, Applicant’s claim limitations only require a generic computer with a memory holding instructions that when executed by a processor cause the processor to perform the claim limitations would amount to simply generic steps carried out by a generic computer. The alleged improvement in Applicant’s claimed process for linking the EFT network with the central system to form an FTN, then processing and allowing transferring financial payment information does not concern an improvement to computer capabilities but instead relates to an alleged improvement in a business practice – a process in which a computer is used as a tool in its ordinary capacity. Applicant’s claimed invention is an automation of a manual activity (transferring financial payment information - a business activity). Automating manual processes speeds efficiency and increases accuracy over manual methods. Automating a manual activity which accomplished the same result is not sufficient to be patent eligible. A claim must be significant more than transform the abstract idea into patent eligible subject matter in order to make the claim patent-eligible per the Supreme Court in Alice.
Thus, the claimed invention is basically using a generic computer (a central system integrated into a FTN) to automat a manual process (generate and transmit a second payment request for a secondary transaction). The claims do no more than generally linking the use of the judicial exception to a particular technological environment or field of use. The claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
In addition, in paragraph 42 of the Remark, the Applicant argues that “they need to be integrated with the network/FTN. Once a computer is adapted to achieve the specific purpose of integrating into an FTN (i.e., satisfying multiple security protocols), it cannot be seen as a general purpose computer.” However, Applicant’s claims do not recite anything that is related to a security protocol, the Specification does not describe anything related to a security protocol either. Also, Applicant does not recite or have any program claim to describe the multiple security protocols either. Per paragraph 18 of the Specification, the central is basically linked to the ETF network to receive and transmit financial payment information.
Also, the independent system and method claims simply recite the limitations “integrating the central system into the FTN; storing in at least one data store” and nothing else. The system claim nor the method claim provide any details how the integration is performed, and the claims do not identify an improvement of the integration either. Therefore, it is simply a connection of the central system into the FTN as described in paragraph 48 of the Specification. Also, the dependent claims do not cure the deficiency either.
With respect to the arguments that the current pending claims are similar to the claims in the parent applications (which have been allowed), the current pending claims should also be patent eligible under § 101 for the same reasons as articulated in the parent applications. The Examiner respectfully disagrees. The current pending claims are not the same as the claims in the parent applications. Even if the current pending claims were the same as the claims in the parent applications, the Examiner can still reject the current pending claims with a different rationale. Also, it should be noted that when performing the patent eligibility analysis, the Examiner uses the 2019 Revised PEG. As more guidance and examples cases are issued, the analysis changes in view of that. Therefore, Applicant’s arguments are not persuasive.
v. Irrespective Of How The Applicant’s Recited Improvement Is Integrated Into The Network, The Network (whether FTN or EFTN) Itself Is Not Merely A Generic Computer Performing Generic Computer Functions And Operating In Its Normal Capacity, As Asserted In The Office Actions For Co-Pending Application 18/529,259 Dated June 10, 2025, And Co-Pending Application 18/544,188 Dated June 18, 2025
Per pages 27-29 (item v), the Applicant argues that the EFTNs and FTNs are not generic computers because when “the “something more” of additional functionality recited in the claims that is clearly not present in prior art networks, howsoever implemented, has to result in a finding for a technological improvement and a determination that the claims are § 101 eligible.”
Response:
The Examiner respectfully disagrees. As per paragraph 14 of the Specification, the EFT network is an Electronic Funds Transfer Network (or EFTN) and managing the distribution of funds is its normal function and activity. During the 11/12/2024 Interview for Application 18/529,259, the Applicant admitted that there is no changes to the EFTN. The central system and the FTN are elements being merely applied to the abstract idea and this position is supported by the original disclosure (see at least paragraphs 18 and 36). The functionality of the central system and FTN are not improved.
In paragraph 61 of the Remarks, the Applicant argues that because the integration of the central system into the FTN, causing the EFTN to operate above its normal capacity, and thus improved the FTN because “something more”, the Examiner disagrees. Adding more normal activities to the EFTN by integrating the central system into the FTN does not make the FTN become patentable because more normal activities does not improve the functionality of the FTN. Also, Applicant argues that the Office does not have a valid 102/103 rejection for the “secondary transaction” and this improved the FTN, the Examiner disagrees. A limitation “secondary transaction” in the absence of a 102/103 rejection does not make it significantly more because the 101 analysis does not require evidence, and this does not improve the functionality of a computer. The normal activities among the central system, the EFTN, and FTN are basically receiving and transmitting financial payment information, thus, more normal activities among the system increases the capacity but does not improve the functionality of the system (i.e., the central system, EFTN, or the FTN). Therefore, Applicant’s arguments are not persuasive.
vi. Applicant’s Claimed Subject Matter Is A “Technological Solution” To A “Technological Problem”, Reciting Rules With Specific Characteristics To Create A Technical Effect Not Found In The Prior Art, Thereby Ensuring That The Claims Are Not Directed To An Abstract Idea And Recite Significantly More, Specifically Because They Solve The Technical Problem Borne Of The Intrinsic Limited Functionality Of Prior Art FTNs
Per pages 29-33 (item vi), the Applicant argues that the Office ignores the fact that the one or more second transactions are triggered by the network itself by approval of a first transaction, this is not well-understood, routine or conventional because it did not exist in the prior arts because prior art networks could not automatically generate and transmit the secondary transaction.
The Applicant cites the DDR Holdings case and argues that the pending claims, like DDR Holdings, constitute a technological solution to a technical problem because the claims (i) recite an improvement to the field of electronic financial transactions and FTNs and (ii) use the FTN in an unconventional way and eliminate unnecessary steps for consumers.
Response:
With respect to the arguments for “sending more secondary transactions are triggered by the network itself by approval of a first transaction …”, the Examiner respectfully disagrees. Sending more secondary transactions to destination accounts as specified by the user-customized business rules (see paragraph 49 of the Specification) increases the capacity of the system, but does not improve the functionality of the system because the system performs the same process for sending each secondary transaction (same process to different destination accounts). Also, when a claim does not have a prior art rejection (102/103 rejection), it simply means that no prior art is found to reject the claim and this does not automatically make the claim become patent-eligible under the § 101. A claim must be significantly more to transform the abstract idea into patent eligible subject matter in order to make the claim patent-eligible as discussed by the Supreme court in Alice.
Also, the DDR Holdings case addresses a business challenge of retaining website visitors and is directed to a technical solution to a problem rooted in computer technology. The DDR Holdings case is directed to improvement of user-interface whereas the pending claims do not even recite an user interface and do not retain website visitors. The pending claims do not even have a computer software program claim. Applicant's present claims are not directed to hardware or software improvement, but are directed to a method of no more than using the existing technology to implement the abstract idea. This is substantiated in paragraphs 5-7, 15, 18, and 36 of the Specification. Applicant’s claimed invention is directed to a method of computing a secondary transaction value and initiating a secondary transaction to generate and transmit a second payment request, which is financial payment transfer over the network and is abstract idea in nature. This is substantiated by the Applicant’s Specification in paragraphs 5-7. 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. There is no analogy between the DDR Holdings case and the pending claims. The only similarity between the DDR Holdings case and the pending claims is that they utilize computer technology. Therefore, Applicant's arguments are not persuasive.
vii. Despite The Supervisor Indicating Otherwise In The November 12, 2024 Examiner Interview, The Office Has Nevertheless Ignored The Automatic Generation And Transmission Of A Second Payment Request For A Secondary Transaction (Movement Of Messages Across A Network) By The Network Itself From The Additional Elements, Incorrectly Concluding In The Office’s Analysis That The Recitation Of Steps Adding This New, Improved Functionality To Prior Art Networks Which Gives Rise To Applicant’s Secondary Transactions Still Does Not Confer § 101 Eligibility, Thereby Ensuring That The Characterization Of The Claims Is Entirely Untethered From The Claim Language
Per pages 33-36 (item vii), the Applicant argues that during the 11/12/2024 Interview for Application 18/529,250, the Office suggested that to the Applicant changing the claim language to include the “movement of messages across the network” for the secondary transaction(s) would likely change the § 101 analysis. The Applicant argues that the claimed secondary transaction, involving the generation and transmission of the second payment request for a secondary transaction (movement of messages across a network) by the network itself that relies on the additional sets and new functionality (technical steps), is the improvement to the field of electronic financial transactions and FTNs.
Response:
The Examiner respectfully disagrees. The suggestion to include the “movement of messages across a network” in the claims during the interview was provided in an attempt to move the prosecution of the Application forward. However, upon a further review of the current pending claims, it is determined that the pending claims still are directed to an abstract idea without significantly more. The limitations “automatically initiating the secondary transaction from a second account to generate and transmit the secondary payment request for a secondary transaction” is part of the abstract idea, the claims do not integrate the abstract idea into a practical application, or add an inventive concept to the abstract idea. Therefore, Applicant’s arguments are not persuasive.
viii. Even If The Office Continues To Err In Concluding That The Improved Network Is A Generic Computer In Spite Of Specific MPEP Guidance To The Contrary, A Generic Computer That Introduces A New Technical Effect Producing A Result Not Previously Found, Or Indeed Even Possible, In The Prior Art, Results In An Invention That Is Nevertheless Patent Eligible Subject Matter Under § 101 According To Case Law
Per pages 36-38 (item viii), the Applicant argues that the pending claims are distinguished from the Solutran, Inc. v. Elavon, Inc. case because the claimed invention is not solving a long-standing commercial process. The Applicant also argues that the pending claims recite an improvement to technology even if they were implemented on a generic computer, as supported by the DDR Holdings and BASCOM cases.
Response:
The Examiner respectfully disagrees. Distinguishing the claims from the Solutran case does not automatically make the pending claims become patent-eligible.
As analyzed in Step 2A, Prong 1 of the 101 rejection, the pending claims are analyzed whether they recite an abstract idea and determined that they recite an abstract idea (without considering the additional computer elements such as the central system, FTN, and EFT network). So whether the pending claims are implemented on a generic computer or on an improved FTN does not make any difference because the computer elements are not analyzed together at this stage. In the Step 2A, Prong 2 analysis, the additional computer elements are analyzed together with the limitations and the pending claims are still determined that they do not integrate the abstract idea into a practical application. In step 2B analysis, the claims are analyzed as a whole and determined that they do not add an inventive concept to the abstract idea. The details of the analysis can be found in the 101 rejection above, and not repeated in here. Therefore, Applicant’s arguments are not persuasive.
ix. By Ignoring Applicant’s Disclosure, Including The Karim Declaration, And In the Absence Of A Prima Facie Argument To The Contrary Supported By Appropriate Evidence, The Office Is Seemingly Ignoring MPEP 2106.05(a) Guidance That The Office is “...Not Expected To Make A Qualitative Judgement On The Merits Of The Asserted Improvement” In Arriving At Its Determination That The Claims Are Merely a Business Solution To A Business Problem Such That The Claims Are Directed To An Abstract Idea Without Significantly More
Per pages 38-41 (item ix), the Applicant argues that the Office ignores the Karim Declaration. The Applicant also needs to consider that in the absence of evidence for the 102/103 rejection, the pending claim elements are not well-understood, routine and conventional when analyzing the pending claims, especially in Step 2B analysis.
Response:
The Examiner respectfully disagrees and notes that the Office did not ignore the Karim Declaration. The Karim Declaration was filed on 04/11/2012 and 06/26/2012 during the prosecution of Application 12/499,421 claiming that the Applicant (Aly Karim) worked with the inventor of the Bodington reference (US Publication No. 2010/021145), therefore, the Bodington reference cannot be used for rejecting the claims as in the 07/09/2013 Final Action and previous Office Actions. The Applicant (Aly Karim) and previous Attorney (William Cassin) held an interview with the Examiner and his Primary Examiner (Ella Colbert) on 08/20/2013 (see 09/11/2013 Interview Summary). In conclusion, the Office agreed with the Applicant and withdrew the Bodington reference in the subsequent 12/04/2013 Final Action. Therefore, Applicant’s arguments that the Office ignores the Karim Declaration is WRONG.
With respect to that the arguments that since the Office does not have a 102/103 rejection and in the absence of evidence for the 102/103 rejection, the pending elements are not well-understood, routine and convention, the Examiner disagrees. Unlike the 102/103 rejections which are evidence based, the 101 rejection is a matter of law requirement and does not and does not require evidence. It should be noted that when analyzing the claims for the 101 rejection, the Examiner uses the 2019 Revised PEG and does not use any of the prior arts. Therefore, Applicant’s arguments are not persuasive.
x. Whilst The Office Has Continued To Err In The Office Action, Applicant Has Nevertheless Amended The Currently Pending Claims In A Continuing Effort To Overcome Any Continuing § 101 Rejection,
Per pages 41-42 (item x), the Applicant argues that he maintains that the previous claims are patent eligible, but nevertheless amended the claims to overcome the continuing 101 rejection. The Applicant has amended the claims as stated in the items i-iv.
Response:
The Examiner respectfully disagrees. With respect to i), the claim limitation “a central system integrated into the FTN” is very broad, it does not have any details on how the integration is done. Both the method and system claims do not have any details on how the integrations is done or how the central system is adapted into the FTN or the EFT network. In fact, the pending claims do not even have a program claim describing how the security protocol is set up so that the central system can adapt into the FTN. The Examiner has provided a response to this argument in section iv above and the Applicant view it (see at least paragraphs 63-70 in section iv).
With respect to ii), the Examiner has provided a detailed response in section vi (see at least paragraph 74-77) and not repeat it here.
With respect to iii), the Examiner has provided a detailed response in sections iii and vii (see at least paragraphs 59-62 and 78-79) and not repeat it here.
With respect to iv), the Examiner has provided a detailed response in sections iii and vii (see at least paragraphs 59-62 and 78-79) and not repeat it here.
Therefore, Applicant’s arguments are not persuasive.
xi. In Direct Contrast To The Office’s Allegations That The Claims Are Directed To An Abstract Idea And Do Not Recite Significantly More, Applicant Maintains That The Claims Recite Patent Eligible Subject Matter At Least Because The Claims Are Directed To A Technological Improvement
Per pages 42-47 (item xi), the Applicant continues to argue that the Office oversimplified the analysis of the pending claims and the pending claims are directed to a technological improvement, the claims are patent eligible because no 102/103 prior art rejection, and cites the DDR Holdings and BASCOM cases to support the arguments.
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 do not identify any description provide an improvement for the central system, EFTN and FTN. Applicant’s Specification, paragraphs 15 and 18 clearly state that the inventive system and method establishes 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 is provided by the existing credit card providers. Thus, Applicant’s invention basically uses these computer elements and the existing technology to implement the abstract idea – using the existing technology 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 changes 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 is 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 (no 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 described 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 breakdown 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 concepts of a certain method of organizing human activity, specially to a fundamental economic practice to mitigate risk before initiating a secondary transaction and a tertiary 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 commercial interaction (i.e., agreements in the form of contracts; legal obligation; advertising, marketing or sales activities or behaviors; business relations – see steps of “storing …”, “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.
Claim 32 recites a central system integrated into a FTN with the comparable elements and limitations as discussed in 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.
With respect to the arguments that the current pending claims are analogous to the DDR Holdings case, the Examiner respectfully disagrees. The pending claims are different from the DDR Holdings case. DDR Holdings addresses a business challenge of retaining website visitors and is directed to a technical solution to a problem rooted in computer technology. The pending claims are focused on a method of initiating a secondary transaction based on a successful match of the consumer ID and a computation of a secondary transaction value. The pending claims or the claimed invention do not recite an user interface and do not retain website visitors. Thus, there is no analogy between the present claims and the DDR Holdings case. The only similarity between the present claims and the DDR Holdings case is that they all utilize computer technology.
With respect to the arguments that current amended claims are similar to the BASCOM case, the Examiner respectfully disagree. The pending claims are different from the BASCOM case, which is directed to a method of filtering content retrieved from an internet computer network. The BASCOM court agreed that the individual elements were generic computer, network, and internet components, but a combination of the elements as a whole amount to significantly more than a judicial exception. The pending claims are directed to a computer-based method of initiating a secondary transaction based on a successful match of the consumer ID and a computation of a secondary transaction value. Thus, there is no analogy between the present claims and the BASCOM case. The only similarity between the present claims and the BASCOM case is that they all utilize computer technology. Therefore, Applicant’s arguments are not persuasive.
IMPROVEMENT TO TECHNOLOGY OR TECHNICAL FIELD
Per pages 47-52, the Applicant cites the various paragraphs from the Specification, the Karim Declaration, continues to disagree with the Office’s Step 2B analysis, and argues that the pending claims provide improvement to the technology.
Response:
The Examiner respectfully disagrees. The Examiner has provided a detailed analysis explaining why the pending claims are not patent eligible in the 101 rejection above (see at least paragraphs 8-28) and in section xi above (see at least paragraphs 92-108), and not repeat them here. Therefore, Applicant’s arguments are not persuasive.
NON-CONVENTIONAL, NON-ROUTINE, NOT WELL-UNDERSTOOD
Per pages 52-53, the Applicant argues that the pending claims are not well-understood, routine, conventional and cites MPEP 2106.05(a) – Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field to support the arguments.
Response:
The Examiner respectfully disagrees. The Examiner has provided a detailed analysis explaining why the pending claims are not patent eligible in the 101 rejection above (see at least paragraphs 8-28) and in section xi above (see at least paragraphs 92-108), and not repeat them here. Therefore, Applicant’s arguments are not persuasive.
CLAIM REJECTIONS – 35 USC § 101
Per pages 53-99 of the Remarks, here, the Applicant’s arguments are primarily focused on the previous Office Actions and the responses between the Applicant and the Office. It should be noted that in the current Applicant’s 10/01/2025 Response, Applicant has amended the claims extensively, cancelled the independent claims 2 and 15 and replaced them with new claims 32-33 and added four new claims. Since Applicant has amended the claims extensively and added new claims 32-37 which included two new independent claims 32-33, the arguments with respect the previous Office Action are moot because the previous response does not necessary apply to the pending claims and a new response for the pending claims is provided in this Office Action.
Support for Claim Amendments
Per pages 100-111 of the Remarks, the Applicant provides the support information from the Specification for the new pending claims 32-37 and do not have any arguments.
In conclusion, 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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