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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 5, 2026 has been entered.
Status of Claims
• This action is in reply to the RCE filed on January 5, 2026.
• Claims 1, 8, and 14 have been amended and are hereby entered.
• Claims 5, 11, and 18-19 have been canceled.
• Claims 1-4, 6-10, and 12-17 are currently pending and have been examined.
• This action is made Non-FINAL.
Response to Arguments
Applicant’s arguments filed December 16, 2025 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to 35 USC § 101 have been fully considered and are not persuasive.
Regarding Applicant’s argument on pages 8-10, that the claims recite a technical solution to a technical problem, the Examiner respectfully disagrees. The pending claims do not describe a technical solution to a technical problem. The pending claims are directed to an improvement to the process of mitigating fraud for transactions including transactions for an entity located domestically (see at least [0026] of the Specification). The claims of the instant application describe an improvement to a business process i.e., an improvement to the process of mitigating fraud for transactions including transactions for an entity located domestically, not improvement in the functioning of the computer itself or an improvement to any other technology or technological field.
Applicant further argues, on pages 9-10, that the claims provide for efficient integration of out-of-region value added services to domestic, in-region transactions, while conforming and complying with domestic rules/regulations. The argument is not persuasive. In response to this argument, it is noted, “‘claiming the improved speed or efficiency inherent with applying the abstract idea on a computer’ [is] insufficient to render the claims patent eligible as an improvement to computer functionality.” Customedia, 951 F.3d at 1364 (quoting Intell. Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 1370 (Fed. Cir. 2015)); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1288 (Fed. Cir. 2018) (“These benefits, however, are not improvements to database functionality. Instead, they are benefits that flow from performing an abstract idea in conjunction with a well-known database structure.”). The specification offers no explanation of how or why the claimed invention gains “resource efficiencies”, only an unexplained and unsupported conclusion on the subject.
Regarding Applicant’s arguments on page 10, that the claims recite a specific interconnection of computing devices, and that the claims recite a technical solution, and that the implementation provides integration into a practical application, the Examiner respectfully disagrees. Under the Patent Subject Matter Eligibility analysis, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to 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 exception. Limitations that are not indicative of integration into a practical application are those that generally link the use of the judicial exception into a particular technological environment or field of use-see MPEP 2106.05(h). Here the claims recite a non-transitory computer-readable storage medium including executable instructions; an external payment processing network comprising a computing device; network messaging; a domestic payment processing network; a computing device of an external processing network; a local switch of the domestic processing network such that they amount to no more than generally linking the use of the judicial exception to a particular technological environment or field of use (e.g., a computer network) (see MPEP 2106.05(h)).
Furthermore, in determining whether a claim integrates a judicial exception into a practical application, a determination is made of whether the claimed invention pertains to an improvement in the functioning of the computer itself or any other technology or technical field (i.e., a technological solution to a technological problem). Here, the claims recite generic computer components, i.e., a generic processor, a memory storing a computer program executable by the processor to perform the claimed method steps and system functions. The processor, memory and system are recited at a high level of generality and are recited as performing generic computer functions customarily used in computer applications.
Furthermore, the Specification describes a problem and improvement to a business or commercial process at least at [0026], stating: “the external processing network 102 includes value added services 112, which may be applied to transactions processed through the external processing network 102. The value added services 112 may include, without limitation, fraud scoring, catastrophic fraud prevention/rules, loyalty services, authentication services, analytics services, dispute management services, exposure monitoring, etc.”
Regarding Applicant’s arguments on pages 10-11, that the claimed computing devices and specifics in their connections are not generic, the Examiner respectfully disagrees. The limitations are directed to an abstract idea and when determining if the claims are directed to significantly more, the additional limitations of the claims in addition to the abstract idea are analyzed. In the instant application, the additional elements of the claim include a non-transitory computer-readable storage medium including executable instructions; an external payment processing network comprising a computing device; network messaging; a domestic payment processing network; a computing device of an external processing network; a local switch of the domestic processing network. The additional limitations, when considered both individually and in combination, do not affect an improvement to another technology or technological field; the claims do not amount to an improvement to the functioning of the computer itself; and the claims do not move beyond a general link of use of an abstract idea to a particular technological environment. Therefore, the claims merely amount to merely generally linking the use of the abstract idea to a particular technological environment or field of use (e.g., a computer network), and is considered to amount to nothing more than requiring a generic computer network to carry out the abstract idea itself. The specifics about the abstract idea do not overcome the rejection.
Applicant’s reliance upon DDR, on page 11, is misplaced. The claims here are not like those the Court found patent eligible in DDR, in which the inventive concept was in the modification of conventional mechanics behind website display to produce a dual-source integrated hybrid display because Applicant’s claims here in the instant application do not address problems unique to the Internet or require an arguably inventive device or technique for displaying information. Rather, the pending claims are directed to an improvement to the process of mitigating fraud for transactions including transactions for an entity located domestically (see at least [0026] of the Specification). The claims of the instant application describe an improvement to a business process i.e., an improvement to the process of mitigating fraud for transactions including transactions for an entity located domestically, not improvement in the functioning of the computer itself or an improvement to any other technology or technological field.
Applicant’s reliance upon McRO, on pages 11-12, is misplaced. The claims in McRO were held patent eligible because the claims were directed at specific rules that resulted in an improvement to the technology of computer generated lip synchronization. The McRO court indicated that it was the incorporation of the particular claimed rules in computer animation that "improved [the] existing technological process." The claims at issue in McRO described a specific way (use of particular rules to set morph weights and transitions through phonemes) to solve the problem of producing accurate and realistic lip synchronization and facial expressions in animated characters, allowing the computer to perform a function not previously performable by a computer. In the instant application, the Applicant has failed to show or demonstrate where the technological improvement is. Rather, the pending claims are directed to improving to the process of mitigating fraud for transactions including transactions for an entity located domestically (see at least [0026] of the Specification). The claims of the instant application describe an improvement to a business process i.e improving to the process of mitigating fraud for transactions including transactions for an entity located domestically, not improvement in the functioning of the computer itself or an improvement to any other technology or technological field. The claims of the instant application are not directed to an improvement to a technological problem, and therefore McRO is not persuasive.
The claims are not patent eligible.
For the reasons above, Applicant’s arguments are not persuasive.
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 1-4, 6-10, and 12-17 are rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea without significantly more. Independent claims 1, 8, and 14 are directed to a method (claim 1), an apparatus (claim 8), and a system (claim 14). Therefore, on its face, each independent claim 1, 8, and 14 are directed to a statutory category of invention under Step 1 of the Patent Subject Matter Eligibility analysis (see MPEP 2106.03).
Under Step 2A, Prong One of the Patent Subject Matter Eligibility analysis (see MPEP 2106.04), claims 1, 8, and 14 recite, in part, a system, a method, and an apparatus of organizing human activity. Using the limitations in claim 1 to illustrate, the claim recites integrating one or more value added service(s) associated with messaging, the method comprising: receiving an authorization message for a transaction to an account having an account number, the authorization message including a first identifier associated with a first institution, a second identifier associated with a second institution, and a switch identifier specific to the local switch, the second identifier being a segment of the account number; located in a first region, located outside of the first region; identifying the transaction as a domestic transaction in the first region, based on the first identifier, the second identifier and the switch identifier included in the authorization message; based on the transaction being identified as the domestic transaction in the first region and at least one regulation, which restricts switching of the transaction outside of the first region: performing at least one value added service for the transaction, without seeking authorization of the transaction; and returning a result of the at least one value added service, in response to the authorization message, whereby authorization for the transaction is switched through the domestic processing network based, in part, on the result of the at least one value added service. The Specification at [0026] states the following regarding value added services: “The value added services 112 may include, without limitation, fraud scoring, catastrophic fraud prevention/rules, loyalty services, authentication services, analytics services, dispute management services, exposure monitoring, etc.”
The limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers commercial and legal interactions (certain methods of organizing human activity), but for the recitation of generic computer components. The claims as a whole recite a method of organizing human activity. The claimed inventions allows for performing added value services to transaction processing including for example fraud detection for an entity located domestically, which is a fundamental economic principle or practice of mitigating risk and a commercial and legal interaction, specifically a commercial interaction of sales activities or behaviors. The mere nominal recitation of a computing device and a domestic processing network do not take the claim out of the methods of organizing human activity grouping. Thus, the claims recite an abstract idea.
Under Step 2A, Prong Two of the Patent Subject Matter Eligibility analysis (see MPEP 2106.04), the judicial exception is not integrated into a practical application. In particular, the additional elements of a non-transitory computer-readable storage medium including executable instructions; an external payment processing network comprising a computing device; network messaging; a domestic payment processing network; a computing device of an external processing network; a local switch of the domestic processing network are recited at a high-level of generality (i.e., as a generic computer components performing generic computer functions of receiving an authorization message; identifying a transaction in a first region; performing a service; and returning a result) such that it amounts to no more than generally linking the use of the judicial exception to a particular technological environment or field of use (e.g., a computer network).-see MPEP 2106.05(h).
Accordingly, the combination of the 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.
Under Step 2B of the Patent Subject Matter Eligibility analysis (see MPEP 2106.05), the claim(s) does/do not include additional elements 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 elements in the claims amount to no more than generally linking the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)). Generally linking the use of the judicial exception to a particular technological environment or field of use using generic computer components cannot provide an inventive concept.
The claims are not patent eligible.
The dependent claims have been given the full two part analysis including analyzing the additional limitations both individually and in combination. The dependent claim(s) when analyzed both individually and in combination are also held to be patent ineligible under 35 U.S.C. 101 because for the same reasoning as above and the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea. Dependent claims 2-4, 6-7, 9-10, 12-13, and 15-17 simply help to define the abstract idea. The additional limitations of the dependent claim(s) when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
Viewing the claim limitations as an ordered combination does not add anything further than looking at the claim limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea. Accordingly, claims 1-4, 6-10, and 12-17 are ineligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20180330353 A1 (“Prabhune”) discloses systems and methods permitting the issuers involved in the cross-border transactions, and other associated entities, to tune the fees associated therewith based on dimensions associated with the transactions and/or payment accounts to which the transactions are directed.
US 20150032571 A1 (“Delingat”) discloses providing cross-border transaction buying assistance are provided. In example embodiments, an option is presented to a cross-border buyer to purchase an item from a domestic networked commerce system using a buying agent. Based on a purchase of the item using the buying agent, instructions are sent to a seller of the item to ship the item to a domestic location corresponding to the buying agent. Once received by the buying agent, the buying agent is responsible for managing delivery of the item to the cross-border buyer from the domestic location.
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/RAVEN E YONO/Primary Examiner, Art Unit 3694