DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/23/2025 has been entered.
Claim Status
The claims filed 12/23/2025 are entered.
Claims 1-20 are pending.
Claims 1, 18, and 20 are independent.
Claims 1, 4, 18, and 20 are amended.
Claims 2-3, 5-17 and 19 are original.
Response to Arguments
Applicant's arguments filed 12/23/2025 have been considered but they are not fully persuasive.
Claim Objections
The prior objections to claims 18 and 19 are withdrawn in view of the current amendments.
35 U.S.C. 101 Rejections
Applicant’s arguments with regards to the rejection of claims 1-20 as being directed to an abstract idea without significantly more have been considered but are not persuasive.
Applicant argues that amended claim 1 does not recite an abstract idea under Step 2A Prong 1 of the subject matter eligibility framework (see Remarks, pp. 11-12).
The argument is not persuasive. The limitations delineated in the rejection cover performance of the limitation as “Certain Methods of Organizing Human Activity”. The claim limitations recite “Commercial or Legal Interactions” (business relations), as they set forth or describe storing and processing employee information, wherein the business relation is the relationship between an employer and the bank. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a “Commercial or Legal Interactions” (business relations), then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. MPEP 2106.04(a)(2)(II)(B). The claim limitations also recite “Fundamental Economic Practices or Principles”, as they set forth or describe processing a financial transaction relating to an employee. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a “Fundamental Economic Practices or Principles”, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. MPEP 2106.04(a)(2)(II)(A). With regards to Applicant’s argument that the claimed system performs concrete technical operations, the recitation of generic computer components in the claim does not preclude the claim from reciting an abstract idea.
With regards to Step 2A Prong 2 of the eligibility framework, Applicant argues that claim 1 is integrated into a practical application. Specifically, Applicant argues that the claims recites specific, technology-focused operations by particular machines in a defined sequence that meaningfully limit the abstract idea. Applicant argues that the claims require transforming a particular routed transaction within the banking system from a suspended state to a posted or canceled state, contingent on server-executed validation (see Remarks, pg. 10).
The argument is not persuasive. With regard to Applicant’s argument that the claims recite a particular machine, a general purpose computer that applies an abstract idea using generic computer functions does not qualify as a particular machine. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014). See also TLI Communications LLC v. AV Automotive LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (mere recitation of concrete or tangible components is not an inventive concept); Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623, 114 USPQ2d 1711, 1715 (Fed. Cir. 2015) (noting that Alappat’s rationale that an otherwise ineligible algorithm or software could be made patent-eligible by merely adding a generic computer to the claim was superseded by the Supreme Court’s Bilski and Alice Corp. decisions). Here, the machine is merely an object on which the method operates. The claims do not recite a specific improvement in the computer itself (server device) or network architecture itself, but instead implement an abstract idea, including transaction validation/forwarding, using these generic computer components.
With regards to Applicant’s argument that the claims recite a transformation, transforming a transaction from a suspended state to a posted or canceled state contingent on validation is not a “particular transformation”. Per MPEP 2106.05(c), a “particular transformation” is “a transformation or reduction of a particular article to a different state or thing”; an “article” includes a physical object or substance which must be particular; and transformation of a physical or tangible object or substance is more likely to provide significantly more (or integrate a judicial exception into a practical application) than the transformation of an intangible concept such as a contractual obligation or mental judgment. Here, transformation of a “transaction” is transformation of an intangible concept, which does not provide significantly more.
With regards to Step 2B, Applicant argues that claim 1 recites an inventive concept because it recites an ordered combination of elements which is a specific technical solution that is neither routine nor conventional in the field. Applicant argues “the non- conventional arrangement of automatic suspension and routing by the banking system, server-side programmatic validation using locally maintained data, and server-issued instructions that cause automatic posting or cancellation by the banking system goes beyond routine post-solution activity or mere data handling. It defines a specific machine-side validation and authorization loop that shifts validation workload away from core banking processing to a dedicated server, thereby reducing processor cycles and traffic handled by the banking system, and that prevents ineligible transactions from being posted by enforcing automatic cancellation at the banking system based on server validation. This ordered combination supplies significantly more because it is a purposeful, cooperative interaction between distinct computer components that changes the state of a transaction within the banking system and cannot be performed as a mental process” (see Remarks, pp. 10-11).
The argument is not persuasive. Applicant’s argument that the claims recite a technical improvement are unpersuasive for the reasons discussed with regards to Step 2A Prong 2 above. With regards to Applicant’s argument that the efficiency of the system is improved by reducing the number of transactions processed in an unconventional manner, this efficiency is merely a result of improvement to the abstract idea, i.e. business logic which decides where to route transactions. An improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. With regards to Applicant’s argument regarding the ordered combination of elements, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide generic computer implementation of the independently abstract idea.
For the above reasons, the rejections under 35 U.S.C. 101 are maintained herein.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claims 1-17 are directed to a method (process), claims 18-19 are directed to a system (machine), and claim 20 is directed to a non-transitory computer-readable storage medium (manufacture). Thus, claims 1-20 fall within the statutory categories of invention. (Step 1: YES).
Step 2A - Prong 1
The Examiner has identified independent system claim 18 as the claim that represents the claimed invention for analysis and is similar to independent method claim 1 and independent product claim 20 . Claim 18 recites the limitations of:
18. A system comprising:
an employer computing device;
a banking server; and
a portal server device configured to:
receive an enrollment indication from the employer computing device, wherein the enrollment indication includes personal information for each of a plurality of employees for an employer;
for each employee of the plurality of employees, assign a unique record number to the respective employee, wherein each unique record number assigned by the server device includes a same alphanumeric string at a same position as a portion of the unique record number;
store an indication of the same alphanumeric string and the same position at the banking server operated by an entity associated with the server device where an operator of the server device holds an individual account;
creating, by the server device, a routing rule specifying that, for any transaction received at the banking system with a transaction account number containing the same alphanumeric string at the same position, the banking system is to automatically suspend further processing of the transaction and route the transaction to the server device for processing; and
transmitting, by the server device, the routing rule to the banking system, wherein the banking system, upon receipt of a transaction containing the same alphanumeric string at the same position, automatically suspends processing of the transaction and routes the transaction to the server device for further processing.
wherein the banking server is configured to:
receive an indication of a first transaction containing transaction information and a transaction account number;
receiving, by the server device and in response to the routing, an indication of a transaction including transaction information and a transaction account number;
programmatically validating, by the server device using locally-maintained data, the transaction based on at least the transaction information and the transaction account number; and
in response to the validating, sending, by the server device, instructions that cause the banking system to automatically complete processing of the transaction or automatically cancel processing of the transaction.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as “Certain Methods of Organizing Human Activity”. The claim limitations delineated in bold above recite “Commercial or Legal Interactions” (business relations), as they set forth or describe storing and processing employee information, wherein the business relation is the relationship between an employer and the bank. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a “Commercial or Legal Interactions” (business relations), then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. MPEP 2106.04(a)(2)(II)(B).
The claim limitations delineated in bold above also recite “Fundamental Economic Practices or Principles”, as they set forth or describe processing a transaction relating to an employee. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a “Fundamental Economic Practices or Principles”, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. MPEP 2106.04(a)(2)(II)(A).
The employer computing device, banking server; and server device in claim 18 is just applying generic computer components to the recited abstract limitations. The recitation of generic computer components in a claim does not necessarily preclude that claim from reciting an abstract idea. Claims 1 and 20 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims recite an abstract idea)
Step 2A - Prong 2
This judicial exception is not integrated into a practical application. In particular, the independent claims recite the additional elements of:
Claim 18: employer computing device; banking server; and server device
Claim 1: server device; employer computing device; banking system
Claim 20: non-transitory computer-readable storage medium; server device; employer computing device; banking system
The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. Therefore, claims 18, 1, and 20 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware 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. See Applicant’s specification para. [0060-0061] about implementation using general purpose or special purpose computing devices and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more. Accordingly, these additional elements, do not change the outcome of the analysis, when considered separately and as an ordered combination. Thus, claims 18, 1, and 20 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent Claims
Dependent claims 19 and 2-17 further define the abstract idea that is present in their respective independent claims 18 and 1 and thus correspond to “Certain Methods of Organizing Human Activity” and hence are abstract for the reasons presented above. The dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the dependent claims are directed to an abstract idea without significantly more.
Thus, claims 1-20 are not patent-eligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Musser (US 2015/0081536 A1) discloses a method and system for processing DDA payment transactions including generating a private virtual identifier, associating the private virtual identifier with a DDA, and generating a public virtual identifier associated with the private virtual identifier. The method can also include distributing the public virtual identifier to consumers, receiving a DDA payment request from a billing entity including the public virtual identifier, retrieving the private virtual identifier in response to receipt of the public virtual identifier, and processing the DDA payment request using the private virtual identifier to facilitate payment to the billing entity on behalf of the consumer. The method and system also authenticates the identity of a user during a transaction.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC T WONG whose telephone number is (571)270-3405. The examiner can normally be reached 9am-5pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael W Anderson can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC T WONG/Primary Examiner, Art Unit 3693
ERIC WONG
Primary Examiner
Art Unit 3693