DETAILED ACTION
This office action is in response to Applicant’s communication of 5/12/2026. Amendments to claims 1, 4, 11, 14 and 20 have been entered. Claims 1-20 are pending and have been examined. The rejection and response to arguments are stated below.
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 § 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. The claims do fall within at least one of the four categories of patent eligible subject matter because claim 1 is directed to a system, claim 11 is directed to a process and claim 20 is directed to a non-transitory computer-readable medium; Step 1-yes.
Under Step 2A, prong 1, representative claim 1 recites a series of steps for validating a transaction request based on a first and second data verification which is a fundamental economic principle, i.e. mitigating risk through authentication, and commercial or legal interaction, i.e. sales activity, and thus grouped as “Certain Methods of Organizing Human Activity”. The claim as a whole and the limitations in combination recite this abstract idea.
Specifically, the limitations of representative claim 1, in bold below and stripped of all additional elements, recite the abstract idea as follows.
1. (Currently Amended) A provider computing system comprising:
a processing circuit having a processor coupled to a memory device, the memory device storing instructions thereon that, when executed, cause the processing circuit to perform operations comprising:
receiving a transaction request from a user device associated with a user account held by a provider associated with the provider computing system, wherein the user account comprises account information, and the transaction request comprises first transaction data and second transaction data;
determining an objective of the transaction request based on the account information;
simultaneously performing a first verification and a second verification, comprising:
verifying, using a first application programming interface (API), the first transaction data based on the account information to determine the first verification, and verifying, using a second API, the second transaction data based on the objective to determine the second verification;
performing a validation process on the transaction request based on the first verification and the second verification; and
in response to the transaction request failing the validation process based on at least one of the first verification or the second verification, holding the transaction request in a transaction queue without reverifying the first transaction data to redetermine the first verification or reverifying the second transaction data to redetermine the second verification.
The claimed limitations, identified above, recite a process that, under its broadest reasonable interpretation, covers performance of a fundamental economic practice and commercial or legal interaction, but for the recitation of generic computer components suitably programmed. Furthermore, but for the nominal recitation of generic computing elements, the limitation steps can be performed mentally in the human mind because they are claimed at such a high level of generality and merely applied to a generic computer. That is, other than the mere nominal recitation of a “A provider computing system comprising: a processing circuit having a processor coupled to a memory device, the memory device storing instructions thereon”, a user “device” and a first and second “application programming interface (API)” in claims 1 and 11 and 20, there is nothing in the claim element which takes the steps out of the methods of organizing human activity abstract idea grouping. Thus, claims 1, 11 and 20 recite an abstract idea.
Under step 2A, prong 2, this judicial exception is not integrated into a practical application. In particular, the claim only recites using generic, commercially available, off-the-shelf computing devices, i.e. processors suitably programmed communicating over a generic network, to perform the steps of receiving, determining, verifying, verifying and validating. The application programming interfaces (APIs) are basic computing elements that are a set of rules or specifications that allow different software to communicate and interact with each other, which in the instant application is used to perform the abstract idea. A human communication via any mode of communication can verify data as recited. This is clear in Applicant’s specification in at least paragraphs [0024-0025]. The computer components are recited at a high-level of generality (i.e., as generic processors with memory suitably programmed communicating information over a generic network, see at least FIG.1 and paragraphs [0019-0031], [0035-0040] and [0087-0088] of the specification) such that it amounts no more than 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 the abstract idea, see MPEP 2106.05(f). Accordingly, the additional elements claimed do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Claims 1, 11 and 20 are directed to an abstract.
Under step 2B, the claim does 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 of using generic computer processors with memory suitably programmed communicating over a generic network to perform the limitation steps amounts no more than 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 the abstract idea, see MPEP 2106.05(f). Mere instructions to apply an exception using generic computer components interacting in a conventional manner cannot provide an inventive concept. Claims 1, 11 and 20 are not patent eligible.
For instance, in the process of claim 1, the limitation steps, claimed at a high level of generality, recite steps that are considered mere instructions to apply an exception akin to a commonplace business method or mathematical algorithm being applied on a general purpose computer, Alice Corp. Pty. Ltd.; Gottschalk and Versata Dev. Group, Inc.; see MPEP 2106.05(f)(2).
Applicant has leveraged generic computing elements to perform the abstract idea of validating a transaction request based on a first and second data verification, without significantly more.
Dependent claims 2-10 and 12-19 when analyzed as a whole and in an ordered combination are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea, as detailed below. The additional recited limitations in the dependent claims only refine the abstract idea.
For instance, claims 2, 3, 12 and 13 recite the additional element of an artificial intelligence model (AI) which is an iterative algorithmic program used to predict elements of the transaction data. Training the model is claimed at a very high level of generality such that it is a basic and well-understood computer programming method on a generic computer, see at least paragraphs [0046-0047] of the specification. Predicting data is a further refinement of the abstract idea. Furthermore storing data for training the AI model is considered adding insignificant extra-solution activity to the judicial exception, see MPEP 2106.05(g), and relies on well-understood, routine and conventional computing functionality akin to storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93; see MPEP 2106.05(d)(II). Claims 4 and 14 further refine the abstract idea by reciting the steps of “determining a legitimacy value…”, “comparing the legitimacy value with a threshold legitimacy value”, “determining that the legitimacy value fails to meet the threshold…” and “in response to the legitimacy value failing to meet the threshold legitimacy value, determining that the transaction request failed the validation process…” which can all be completed manually and through mental observation but for the nominal recitation of the provider “system”. Claims 5, 7 and 15 further refines and defines the type of intangible data/information comprising the first and second transaction data used in the abstract idea. Claims 6, 8, 16 and 17 further refine the abstract idea through receiving account information and the determined objective for verifying said information which can be completed manually and through mental observation but for the nominal recitation of a first and second API and a provider “system”. Claims 9 and 18 further refine the abstract idea by reciting that a plurality of APIs can perform a plurality of verifications on a plurality of transaction data. There are no technical implementation details such that this is anything more than automating an otherwise manual abstract idea. Claims 10 and 19 further refine the abstract idea by merely defining the account information, i.e. intangible data.
Clearly, the additional recited limitations in the dependent claim only refines the abstract idea further. Further refinement of an abstract idea does not convert an abstract idea into something concrete.
The claims merely amount to the application or instructions to apply the abstract idea (i.e. a series of steps for validating a transaction request based on a first and second data verification) on one or more computers, and are considered to amount to nothing more than requiring a generic computer system (e.g. processors suitably programmed and communicating over a network) to merely carry out the abstract idea itself. As such, the claims, when considered as a whole, are nothing more than the instruction to implement the abstract idea (i.e. a series of steps for validating a transaction request based on a first and second data verification) in a particular, albeit well-understood, routine and conventional technological environment.
Accordingly, the Examiner concludes that there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself or integrate the judicial exception into a practical application.
Response to Arguments
Applicant’s arguments, filed in the Remarks dated 4/13/2026, with respect to the 35 U.S.C. 101 rejection have been fully considered but they are not persuasive.
On page 9 of the Remarks, Applicant argues “Even assuming arguendo that amended claim 1 is directed to an abstract idea (which the Applicant does not concede), Applicant submits that the features of amended claim 1 integrate the alleged judicial exception into a practical application of the alleged abstract idea.” and on page 11, “Even if it were assumed that the claims recite a judicial exception, which the Applicant does not concede to, the claims integrate the judicial exception into a practical application by meaningfully applying, relying on, and/or using the judicial exception. Specifically, the claims integrate the judicial exception into a practical application because the claims recite a technical improvement to "systems and methods for prevalidating transactions."’ Applicant points to the specification paragraph [0017], “The systems and methods described herein may also reduce processing power and improve bandwidth by implementing a user-specific cluster of application programming interfaces (APIs) that are working simultaneously in the back end to validate transactions for a specific user, rather than implanting a plurality of APIs operating individually and consuming unnecessary processing power. With the systems and methods described herein, the APIs that are relevant to a user are working simultaneously to validate transactions and may provide the user with an end result (e.g., a transaction validation), rather than providing intermittent results as individual parameters of a transaction are validated by individual APIs.” Further, on page 13 of the remarks, Applicant argues, based on paragraphs [0017], [0067] and [0073], “In view of the above, claim 1, for example, recites a particular solution to systems and methods for prevalidating transactions by, in response to the transaction request failing a validation process, holding the transaction request without reverifying transaction data, thereby addressing the technical problem of allocating great processing power to perform multiple validation processes in an attempt to validate a non-compliant transaction request by holding the transaction request without reverification.” Examiner respectfully disagrees.
Validating a transaction request using specific data is ubiquitous throughout commerce and is a business problem. Furthermore, this is a manual process that existed well before the advent of technology. Applicant has automated a manual process by applying the abstract idea on generic computing devices. API clustering was known before Applicant’s invention and is used to save power and optimize resource utilization. Applicant has merely leveraged a known technique in the realm of transaction validation.
MPEP § 2106.05(a) discusses cases in which the Federal Circuit determined that the claims did not reflect an improvement to computer-functionality or other technology. For instance, if a claimed process can be performed without a computer, the Federal Circuit has indicated that it cannot improve computer technology. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 120 USPQ2d 1473 (Fed. Cir. 2016) (a method of translating a logic circuit into a hardware component description of a logic circuit "cannot be characterized as an improvement in a computer" because the method did not employ a computer and a skilled artisan could perform all the steps mentally). The Federal Circuit has also indicated that mere automation of manual processes or increasing the speed of a process where these purported improvements come solely from the capabilities of a general-purpose computer are not sufficient to show an improvement in computer-functionality. FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095, 120 USPQ2d 1293, 1296 (Fed. Cir. 2016); Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017). Similarly, the Federal Circuit has indicated that a claim must include more than conventional implementation on generic components or machinery to qualify as an improvement to an existing technology. See, e.g., Affinity Labs of Tex. v. DirecTV, LLC, 838 F.3d 1253, 1264-65, 120 USPQ2d 1201, 1208-09 (Fed. Cir. 2016); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 612-13, 118 USPQ2d 1744, 1747-48 (Fed. Cir. 2016). See MPEP § 2106.05(a) for further discussion of these cases, and additional examples of what the courts have indicated does and does not show an improvement to computer functionality or other technology.
There are no technical implementation details to merely holding a transaction request if it fails the verification steps. There is no way of measuring the increase or cost or reduction in resource use through implementing the instant process steps compared to the reduction of resource use by eliminating a step. There are no concrete values that point to this being valid.
In light of the Alice decision and the guidance provided in the 2019 PEG, the features listed in the claims, are not considered an improvement to another technology or technical field, or an improvement to the functioning of the computer itself. At best these features may be considered to be a business solution, using computers, to a problem of validating a transaction are due to business decisions, using computers, rather than any improvement to another technology or technical field, or an improvement to the functioning of the computer itself. By relying on computing devices to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible (See Alice, 134 S. Ct. at 2359 “use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions” is not an inventive concept). As discussed in the rejection above, the components of the instant system, when taken alone, each execute in a manner conventionally expected of these components. At best, Applicant has claimed features that may improve an abstract idea. However, an improved abstract idea is still abstract, (SAP America v. Investpic *2-3 (‘“We may assume that the techniques claimed are “groundbreaking, innovative, or even brilliant,” but that is not enough for eligibility. Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); accord buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014). Nor is it enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 89-90 (2012); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”’
There is a fundamental difference between computer functionality improvements, on the one hand, and uses of existing computers as tools to perform a particular task, on the other. There is nothing, for example, in the pending claims to suggest that the claimed “provider computing system comprising: a processing circuit having a processor coupled to a memory device, the memory device storing instructions thereon”, a user “device” and a first and second “application programming interface (API)” are somehow made more efficient or that the manner in which these elements carry out their basic functions is otherwise improved in any way. The alleged advantages that Applicants argue do not concern an improvement in computer capabilities but instead relate to an alleged improvement in validating a transaction request based on a first and second data verification, for which a computer is used as a tool in its ordinary capacity.
In summary, the computer is merely a platform on which the abstract idea is implemented. Simply executing an abstract concept on a computer does not render a computer “specialized,” nor does it transform a patent-ineligible claim into a patent-eligible one. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1280 (Fed. Cir. 2012). There are no improvements to another technology or technical field, no improvements to the functioning of the computer itself, transformation or reduction of a particular article to a different state or thing or any other meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment as a result of performing the claimed method. The claimed sequence of steps comprises only “conventional steps, specified at a high level of generality,” which is insufficient to supply an “inventive concept.” Id. at 2357 (quoting Mayo, 132 S. Ct. at 1294, 1297, 1300). Also, the addition of merely novel or non-routine components to the claimed idea does not necessarily turn an abstraction into something concrete (See Ultramercial, Inc. v. Hulu, LLC, _ F.3d_, 2014 WL 5904902, (Fed. Cir. Nov. 14, 2014). Hence the claims do not recite significantly more than an abstract idea.
For these reasons and those stated in the rejections above, rejection of claims 1-20 under 35 U.S.C. 101 is maintained by the Examiner.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER J BRIDGES whose telephone number is (571)270-5451. The examiner can normally be reached 7:00am-3:30pm M-F EDT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mike 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTOPHER BRIDGES/Primary Examiner, Art Unit 3693
Prosecution Insights