DETAILED ACTION
Status of Claims
1. This office action is in response RCE filed 9/25/2025.
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 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]
Independent claim 65 and 76 are is directed to –
receiving a transaction request;
determining whether the transaction request was generated using cross-reference mode including an account access token or whether the transaction was generated in native mode including a constructed account number;
on a condition that the transaction request was generated using the cross-reference mode, determine a routing transit number and an account number associated with the transaction request; generating a new transction replacing the account access token with determined routing transit number and determined account number;
on a condition that the transaction request was generated using the native mode, determining whether the transaction request includes the constructed account number with a particular indicator value stored at a beginning of the constructed account number;
determining the routing transit number and the account number based on the constructed account number in the transaction request;
generating a new transaction that replaces the constructed account number with the determined routing transit number and the determined account number;
routing the new transaction to a receiver associated with the determined routing transit number to process the new transaction;
receiving a response from the receiver including an indication concerning the new 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; translation file. 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 9/25/2025 have been fully considered but they are not persuasive.
101
Applicant argues that similar to Ex parte Hannun and SRI International, the claimed steps cannot practically be performed mentally.
Examiner finds this unpersuasive because each of the steps – receiving a transaction, determining whether the transaction request was generated using cross-reference or native mode, determining whether transaction request includes constructed account number, determining routing transit number and account number based on the constructed account number, replacing either the account token or the constructed account number with routing and account number – involves observation, evaluation, judgement or opinion and can be carried out by a human analyst visually using printed transaction records.
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 2106.04(a)(2) Abstract Idea Groupings [R-07.2022] III. MENTAL PROCESSES (“As the Federal Circuit has explained, “[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.” Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (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 – involve no more than observation, evaluation, judgement or opinion and hence fall under Mental Process category of abstract ideas.
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.
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).
103
The previous obviousness rejection has been withdrawn in view of the amendment and arguments filed 9/25/2025.
Conclusion
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/ARUNAVA CHAKRAVARTI/Primary Examiner, Art Unit 3692