DETAILED ACTION
Status of Claims
1. This office action is in response amendment filed 4/24/2026.
2. Claims 65, 70, 72-76, 81-86 are pending.
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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 65, 70, 72-76, 81-86
Claims 65, 70, 72-76, 81-86 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The following new amendment(s) in claims 65 and 76 is not supported by the original disclosure and is hence treated as new matter:
“wherein the new electronic transaction replaces the constructed account number with the determined routing transit number and the determined account number;”
Applicant is required to provide adequate support for the above limitation or else cancel the new matter.
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 65, 70, 72-76, 81-86
Claims 65, 70, 72-76, 81-86 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1: Claims 65-75, 85 are directed to a system, claims 76-84, 86 are directed to a method – each of which is one of the statutory categories of inventions.
Step 2A: A claim is eligible at revised Step 2A unless it recites a judicial exception and the exception is not integrated into a practical application of the application.
Prong 1: Prong One of Step 2A evaluates whether the claim recites a judicial exception (an abstract idea enumerated in the 2019 PEG, a law of nature, or a natural phenomenon).
Groupings of Abstract Ideas:
I. MATHEMATICAL CONCEPTS
A. Mathematical Relationships
B. Mathematical Formulas or Equations
C. Mathematical Calculations
II. CERTAIN METHODS OF ORGANIZING HUMAN ACTIVITY
A. Fundamental Economic Practices or Principles (including hedging, insurance, mitigating risk)
B. Commercial or Legal Interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)
C. Managing Personal Behavior or Relationships or Interactions between People (including social activities, teaching, and following rules or instructions)
III. MENTAL PROCESSES.
Concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
See MPEP 2106.04 (a) (2) Abstract Idea Groupings [R-10.2019]
The limitations recited in independent claim 65 and 76 –
receiving [an electronic] transaction request from a user over an electronic payment network;
determining whether the [electronic] transaction request was generated using a cross-reference mode or a native mode, wherein:
the [electronic] transaction request in the cross-reference mode includes an account access token associated with an account; and the [electronic] transaction request in the native mode includes a constructed account number;
on a condition that the [electronic] transaction request was generated using the cross-reference mode:
accessing a translation file to determine a routing transit number and an account number associated with the [electronic] transaction request; and
generating a new electronic transaction, including information from the [electronic] transaction request, wherein the new [electronic] transaction replaces the account access token with the determined routing transit number and the determined account number;
on a condition that the [electronic] transaction request was generated using the native mode:
determining whether the [electronic] transaction request includes the constructed account number formatted according to an [electronic] transaction standard with a particular indicator value stored at a beginning of the constructed account number a primary account number field in the [electronic] transaction request;
on a condition that the [electronic] transaction request includes the constructed account number with the particular indicator value:
determining the routing transit number and the account number based on the constructed account number in the [electronic] transaction request; and
generating a new [electronic] transaction, including information from the electronic transaction request, wherein the new [electronic] transaction replaces the constructed account number with the determined routing transit number and the determined account number;
routing the new electronic transaction to a receiver associated with the determined routing transit number to process the new [electronic] transaction; and
receiving a response from the receiver, the response including an indication concerning the new [electronic] transaction
– that constitute Mental Process and/or Certain Methods of Organizing Human Activity (Commercial/Legal Interactions).
The dependent claims further limit the abstract idea to – determining whether constructed account number includes account access token or substitute account number or routing transit number or card-like number; account access token enables identification without account information; on a condition that the transaction request does not include the constructed account number routing the transction through a standard payment network; determining the financial institution based on a particular indicator value – that also constitute Mental Process and/or Certain Methods of Organizing Human Activity.
Hence under Prong One of Step 2A, claims 65, 70, 72-76, 81-86 recite judicial exception(s).
Prong 2: Prong Two of Step 2A evaluates whether the claim recites additional elements that integrate the judicial exception into a practical application of the exception.
Limitations that are indicative of integration into a practical application include:
Improvements to the functioning of a computer or to any other technology or technical field – see MPEP 2106.05(a)
Applying the judicial exception with, or by use of, a particular machine – see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing – see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception – see MPEP 2106.05(e)
Limitations that are not indicative of integration into a practical application include:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea – see MPEP 2106.05(f)
Adding insignificant extra-solution activity to the judicial exception – see MPEP 2106.05(g)
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
Additional elements recited by the claims, beyond the abstract idea, include: computer system comprising processor and memory; electronic transaction(s). Examiner thus finds that any additional element(s), beyond the judicial exception, has been recited at a high level of generality such that the claim limitations amount to no more than mere instructions to apply the exception using generic components (see MPEP 2106.05(f)) or insignificant data gathering activities (see MPEP 2106.05(g)).
The combination of additional elements – receiving, determining, accessing, generating, routing – does not purport to improve the functioning of a computer or effect an improvement in any other technology or technical field. Instead, the additional elements do no more than “use the computer as a tool” and/or “link the use of the judicial exception to a particular technological environment or field of use.” The focus of the claims is not on improvement in computers, but on certain independently abstract ideas – receiving a transaction request; determining whether the transaction request was generated using cross-reference mode including an account access token or generated in native mode; if cross-refence mode then generating a new transaction by replacing the account access token with routing number and determined account number; if native mode then generating a new transaction by replacing constructed account number with routing number and account number; routing the new transaction to receiver; and receiving a response from the receiver – that merely uses generic computers as tools. Steps that do no more than spell out what it means to “apply it on a computer” cannot confer patent eligibility. Indeed, nothing in claim 1 improves the functioning of the computer, makes it operate more efficiently, or solves any technological problem. See Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384-85 (Fed. Cir. 2019).
See Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1056 (Fed. Cir. 2017) (“But merely ‘configur[ing]’ generic computers in order to ‘supplant and enhance’ an otherwise abstract manual process is precisely the sort of invention that the Alice Court deemed ineligible for patenting.”) (“Our prior cases have made clear that mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology.”)
Hence, the additional elements, when considered individually or as an ordered combination, do not integrate the judicial exception into a practical application.
Hence, the claims are ineligible under Step 2A.
Step 2B: In Step 2B, the evaluation consists of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception.
As discussed in Prong Two, the additional elements in the claims amount to no more than mere instructions to apply the exception using generic components, which is insufficient to provide an inventive concept.
When considered individually or as an ordered combination, the additional elements fail to transform the abstract idea of – receiving a transaction request; determining whether the transaction request was generated using cross-reference mode including an account access token or generated in native mode; if cross-refence mode then generating a new transaction by replacing the account access token with routing number and determined account number; if native mode then generating a new transaction by replacing constructed account number with routing number and account number; routing the new transaction to receiver; and receiving a response from the receiver – into significantly more.
See MPEP 2106.05(f) Mere Instructions To Apply An Exception [R-10.2019].
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.
Hence, the claims are ineligible under Step 2B.
Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to a judicial exception without significantly more.
Terminal Disclaimer
The terminal disclaimer filed on 5/23/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 1/30/2040 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant's arguments filed 4/24/2026 have been fully considered but they are not persuasive.
112
The applicant asserts that the support for the limitation “wherein the new electronic transaction replaces the constructed account number with the determined routing transit number and the determined account number” can be found in Fig. 3 and para 0081, 0083.
However, the examiner was unable to find adequate support for the above limitations in the identified sections.
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As shown above, boxes 307 and 308 merely show determining routing transaction number RTN and account based on request but does not show “replacing account access token (AAT) with RTN and account number.” Para 0081 states the account number contained in the request may include a non-existent account number and/or a substitute for the actual account number. Para 0083 states that this request includes information from the received financial services transaction request and any determined substitute RTN, account numbers, or account identifiers. However, neither 0081 or 0083 mention AAT or any indication that AAT is replaced by RTN or account number. On the contrary, as per para 0084, identifying information may be in the form of an AAT (Account Access Token) that enables identification of a user's account at a financial institution without the account number associated by the financial institution. In other words, AAT can be used to identify transaction request.
For the above reasons, the applicant has failed to show that the original disclosure supports the limitation “wherein the new electronic transaction replaces the constructed account number with the determined routing transit number and the determined account number” as recited in claims 65 and 76.
101
Applicant argues that similar to Ex parte Hannun and SRI International, the claimed steps cannot practically be performed mentally because a human cannot process an electronic transaction.
Examiner finds this unpersuasive because merely designating an abstract financial transaction as an “electronic transaction” is not a ticket to patent eligibility. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson[409 U.S. 63, 67 (1972) “mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”)].
MPEP 2106.04(a)(2) Abstract Idea Groupings [R-07.2022] III. MENTAL PROCESSES
C. A Claim That Requires a Computer May Still Recite a Mental Process
Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures “can be carried out in existing computers long in use, no new machinery being necessary.” 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of “anonymous loan shopping” recited in a computer system claim is an abstract idea because it could be “performed by humans without a computer”).
In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification. For instance, examiners should review the specification to determine if the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite a mental process.
1. Performing a mental process on a generic computer. An example of a case identifying a mental process performed on a generic computer as an abstract idea is Voter Verified, Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 1385, 126 USPQ2d 1498, 1504 (Fed. Cir. 2018). In this case, the Federal Circuit relied upon the specification in explaining that the claimed steps of voting, verifying the vote, and submitting the vote for tabulation are “human cognitive actions” that humans have performed for hundreds of years. The claims therefore recited an abstract idea, despite the fact that the claimed voting steps were performed on a computer. 887 F.3d at 1385, 126 USPQ2d at 1504. Another example is Versata, in which the patentee claimed a system and method for determining a price of a product offered to a purchasing organization that was implemented using general purpose computer hardware. 793 F.3d at 1312-13, 1331, 115 USPQ2d at 1685, 1699. The Federal Circuit acknowledged that the claims were performed on a generic computer, but still described the claims as “directed to the abstract idea of determining a price, using organizational and product group hierarchies, in the same way that the claims in Alice were directed to the abstract idea of intermediated settlement, and the claims in Bilski were directed to the abstract idea of risk hedging.” 793 F.3d at 1333; 115 USPQ2d at 1700-01.
2. Performing a mental process in a computer environment. An example of a case identifying a mental process performed in a computer environment as an abstract idea is Symantec Corp., 838 F.3d at 1316-18, 120 USPQ2d at 1360. In this case, the Federal Circuit relied upon the specification when explaining that the claimed electronic post office, which recited limitations describing how the system would receive, screen and distribute email on a computer network, was analogous to how a person decides whether to read or dispose of a particular piece of mail and that “with the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper”. 838 F.3d at 1318, 120 USPQ2d at 1360. Another example is FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 120 USPQ2d 1293 (Fed. Cir. 2016). The patentee in FairWarning claimed a system and method of detecting fraud and/or misuse in a computer environment, in which information regarding accesses of a patient’s personal health information was analyzed according to one of several rules (i.e., related to accesses in excess of a specific volume, accesses during a pre-determined time interval, or accesses by a specific user) to determine if the activity indicates improper access. 839 F.3d. at 1092, 120 USPQ2d at 1294. The court determined that these claims were directed to a mental process of detecting misuse, and that the claimed rules here were “the same questions (though perhaps phrased with different words) that humans in analogous situations detecting fraud have asked for decades, if not centuries.” 839 F.3d. at 1094-95, 120 USPQ2d at 1296.
3. Using a computer as a tool to perform a mental process. An example of a case in which a computer was used as a tool to perform a mental process is Mortgage Grader, 811 F.3d. at 1324, 117 USPQ2d at 1699. The patentee in Mortgage Grader claimed a computer-implemented system for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders, comprising a database that stores loan package data from the lenders, and a computer system providing an interface and a grading module. The interface prompts a borrower to enter personal information, which the grading module uses to calculate the borrower’s credit grading, and allows the borrower to identify and compare loan packages in the database using the credit grading. 811 F.3d. at 1318, 117 USPQ2d at 1695. The Federal Circuit determined that these claims were directed to the concept of “anonymous loan shopping”, which was a concept that could be “performed by humans without a computer.” 811 F.3d. at 1324, 117 USPQ2d at 1699. Another example is Berkheimer v. HP, Inc., 881 F.3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018), in which the patentee claimed methods for parsing and evaluating data using a computer processing system. The Federal Circuit determined that these claims were directed to mental processes of parsing and comparing data, because the steps were recited at a high level of generality and merely used computers as a tool to perform the processes. 881 F.3d at 1366, 125 USPQ2d at 1652-53.
But for the additional element “electronic transaction,” each of the steps of the independent claims – receiving [an electronic] transaction request from a user over an electronic payment network; determining whether the [electronic] transaction request was generated using a cross-reference mode or a native mode, wherein: the [electronic] transaction request in the cross-reference mode includes an account access token associated with an account; and the [electronic] transaction request in the native mode includes a constructed account number; on a condition that the [electronic] transaction request was generated using the cross-reference mode: accessing a translation file to determine a routing transit number and an account number associated with the [electronic] transaction request; and generating a new electronic transaction, including information from the [electronic] transaction request, wherein the new [electronic] transaction replaces the account access token with the determined routing transit number and the determined account number; on a condition that the [electronic] transaction request was generated using the native mode: determining whether the [electronic] transaction request includes the constructed account number formatted according to an [electronic] transaction standard with a particular indicator value stored at a beginning of the constructed account number a primary account number field in the [electronic] transaction request; on a condition that the [electronic] transaction request includes the constructed account number with the particular indicator value: determining the routing transit number and the account number based on the constructed account number in the [electronic] transaction request; and generating a new [electronic] transaction, including information from the electronic transaction request, wherein the new [electronic] transaction replaces the constructed account number with the determined routing transit number and the determined account number; routing the new electronic transaction to a receiver associated with the determined routing transit number to process the new [electronic] transaction; and receiving a response from the receiver, the response including an indication concerning the new [electronic] transaction – involves observation, evaluation, judgement or opinion and can be carried out by a human analyst visually using printed transaction records as in CyberSource Corp. v. Retail Decisions.
In CyberSource, the Federal Circuit explained that a step of “constructing a map of credit card numbers based upon the other transactions” could be met by a person “writing down a list of credit card transactions made from a particular IP [Internet Protocol] address,” and, thus, is an unpatentable mental process. CyberSource, 654 F.3d at 1370, 1372. The Federal Circuit found that an exemplary “map of credit card numbers” consisted of “four listed credit card transactions denoted by their dates, times, cardholder names, card numbers, IP addresses, transaction amounts, and shipping addresses.” Id. at 1373. Similarly, in the current invention, a human analyst can receive printed transaction data or view transaction data on a terminal and determine whether the transaction was generated using cross-reference mode or native mode; if cross-reference mode, then generate a new transaction by replacing account token with transit number and account number by using pen and paper or by manually typing on a screen; if native mode, then generate a new transaction by replacing the constructed account number with the routing number and account number by using pen and paper or by manually typing on a screen; route the transaction to a receiver and receive response by sending instructions on a computer (or by paper in person)
The applicant’s assertions – that a human cannot receive an electronic transaction request, create new electronic transaction, or route the new electronic transaction to a payment network – are completely unpersuasive because, the steps of creating an electronic transaction and routing the electronic transaction amount to nothing more than an instruction to apply the abstract idea of creating a Commercial/Legal Interaction on a computer environment. Similarly, to assert that a human using printed transaction record cannot receive and process an electronic transaction is equally unpersuasive because a human can visually observe an electronic transaction on a computer screen or a printout of a transaction and start processing the transaction. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (“All of claim 3’s method steps can be performed in the human mind, or by a human using a pen and paper …. Such a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101.”).
As per para [0042], in native mode, the financial services transaction request includes alternate information in the PAN field. This information is referred to as the “RTA” (“Routing Transit and Account number;” also known as the “Account Routing Number” (ARN) or “constructed PAN”). The RTA comprises a value (for example, ‘59’) that indicates that the digits following the value should be interpreted as account information rather than a card number. The RTA also comprises account information identifying at least one accountholder's account. The RTA may be stored in the financial services transaction request as: 5 9 x x x x x x x x x y y y y y y y y.
As per para [0045], in a second mode, “cross-reference” or “X-REF,” originator 102 generates a financial services transaction request that includes identifying information that is associated with a financial institution account. However, neither the RTN nor the account number is included in the financial services transaction request. Rather, identifying information may be included in the form of an Account Access Token (AAT). AATs enable unique identification of a user's account at a financial institution but do not directly include the account information for that account. Rather, AATs include identifying information such as a username, personally-identifying information (e.g., a social security number, a name, an address, an email address, a phone number, a login ID), a substitute account number (e.g., a number that resembles a valid account number but is not the actual account number for the account), or the like. AATs may be generated on behalf of initiating user 101 by a variety of entities.
Applicant offers no persuasive reason why an analyst would be unable to discern the RTA from a native mode or AAT from the cross-reference mode using a simple mental process. See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.”).
The present invention is completely distinct from SRI which deals with network packets that cannot be seen with human eyes, and unlike (non-precedential) Hannun which involved normalizing input audio, generating a jitter set, generating spectrogram frames, etc., that cannot be performed mentally, the claimed steps in the current invention – determining whether transaction request was generated using cross-reference mode or native mode, accessing transaction file to determine account information – involves no more than observation, evaluation, judgement or opinion and hence fall under Mental Process category of abstract ideas. Unlike in SRI Int’l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1304 (Fed. Cir. 2019) (declining to identify the claimed collection and analysis of network data as abstract because “the human mind is not equipped to detect suspicious activity by using network monitors and analyzing network packets as recited by the claims”), the present claims do not involve activities that cannot be carried out in the human mind by reading transaction information on a screen or using printed transction data. Furthermore, the steps – generating a new transaction and routing the transaction to a receiver to process the new transaction, receiving a response from the receiver including an indication concerning the new transaction – constitute Commercia/Legal Interactions and hence falls under the abstract grouping of Certain Methods of Organizing Human Activity.
Applicant argues that “generating a new transaction” and “routing the new transaction to the receiver to process the new transaction” improve the security of the transaction.
Examiner finds it unpersuasive as to how generating and routing a new transaction could improve the security of a transaction. A transaction is not a computer that can be technically improved. A transaction is a commercial/legal interaction. See Trading Techs. Int'l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019) (“The claims of the ‘999 patent do not improve the functioning of the computer, make it operate more efficiently, or solve any technological problem. Instead, they recite a purportedly new arrangement of generic information that assists traders in processing information more quickly”). Similarly, at most the pending claims may create a new transaction by providing an alternate arrangement for identifying a transaction request without revealing the PAN. But such a new payment processing scheme does not improve the functioning of a computer, make it operate more efficiently or solve any technological problem.
In response to the applicant’s assertion – that generating a new electronic transaction in the manner of claim 65 improves the security of the transaction by not transmitting the user’s account number over a potentially unsecure communication line – the examiner points out that this represents, at most, an improvement in the abstract idea of preventing fraud by not revealing user account number but does not result in any improvement to computer or technology.
See MPEP 2106.05(a) Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field [R-07.2022] II. IMPROVEMENTS TO ANY OTHER TECHNOLOGY OR TECHNICAL FIELD (“To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology.”). Here, the claimed steps merely use a generic computer system comprising a process and memory to carry out the abstract ideas as set forth in Prong Two which is not sufficient to show any improvement to any technology or technical field. Processing a financial transaction based on whether the transaction request was generated in cross-reference mode or native mode is not technical improvement but instead constitutes Certain Methods of Organizing Human Activity. To the extent this approach amounts to an improvement at all, that improvement is not in the functioning of a computer or an improvement to another technology or technical field; instead, it constitutes, at best, an improvement to the abstract idea of payment processing based on the mode of transaction request. See Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1056 (Fed. Cir. 2017) (“But merely ‘configur[ing]’ generic computers in order to ‘supplant and enhance’ an otherwise abstract manual process is precisely the sort of invention that the Alice Court deemed ineligible for patenting.”) (“Our prior cases have made clear that mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology.”). The improvement touted by the invention is an improvement to the way a transaction request is processed and, as such, is an improvement in the realm of the abstract idea of transaction processing. The improvement is not to the computer elements used to perform the method. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018) (“[P]atent law does not protect such claims[, i.e., claims to an asserted advance in the realm of abstract ideas], without more, no matter how groundbreaking the advance.”). But “[n]o matter how much of an advance in the … field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm.” SAP Am., Inc. v. Investpic, LLC 898 F.3d 1161, 1163 (Fed. Cir. 2018).
Indeed, nothing in claims 1, 8 and 15 improves the functioning of the computer, makes it operate more efficiently, or solves any technological problem. See Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384-85 (Fed. Cir. 2019). See Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (“To be a patent-eligible improvement to computer functionality, we have required the claims to be directed to an improvement in the functionality of the computer or network platform itself.”).
The claimed limitations do not recite (i) an improvement to the functionality of a computer or other technology or technical field; (ii) a “particular machine” to apply or use the judicial exception; (iii) a particular transformation of an article to a different thing or state; or (iv) any other meaningful limitation. See MPEP 2106.05 (a)-(c), (e)-(h). Hence, when considered individually or as an ordered combination, the additional elements do not integrate the abstract idea into a practical application or provide significantly more. See MPEP 2106.05(f).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ARUNAVA CHAKRAVARTI/Primary Examiner, Art Unit 3692
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