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 .
Status of Claims
Applicant filed an amendment on December 11, 2025. Claims 1-15 were pending in the Application. Claims 1-2, 5-7, and 12-14 have been amended. No new claims have been canceled. Claims 16-19 have been added. Claims 1, 12, and 15 are the independent claims, the remaining claims depend on claims 1 and 12. Thus claims 1-19 are currently pending. After careful and full consideration of Applicant arguments and amendments, the Examiner finds them to be moot and/or not persuasive.
Response to Arguments
In the context of 35 U.S.C. §101, Applicant respectfully disagrees with the rejection. Applicant is of the opinion that the claims are statutory and respectfully asserts that “under Step2A, Prong 1 of the Alice test, the claims are not directed towards an abstract idea; payment network system technology is grounded in specific technology involving distributed network architectures, specialized message protocols, and real-time data coordination across multiple entities; the instant claims are rooted in payment network technology and provide an improvement over existing payment network technology; the claims are directed to a technological improvement in a recognized technological area and satisfy the conditions of Prong 1 of the Alice test; that under Step 2A, Prong 2 of the Alice test, the claims are directed to a practical application of the purported abstract ideas of organizing human activity and/or mental processes; the claims are directed to a practical application that integrates the purported abstract idea into a practical application and addresses a technological problem arising in payment network infrastructure: accurate and efficient fraud detection for transactions occurring in a real-time payment network infrastructure; the instant claims are directed to a technical improvement to this technical problem by providing a practical application of the purported abstract idea that creates, stores, and updates data records on a real-time payment network, enabling a more accurate and efficient network security threat detection; the instant claims apply the judicial exception in a manner that imposes meaningful limit on the judicial exception; in rejecting the claims, the Examiner errs by oversimplifying the claims by looking at them generally and failing to account for the specific requirements of the claims, which the courts and the MPEP caution against; the Examiner fails to consider the claims in their entirety, instead only considering some elements of claim 1, while failing to consider the elements in context within claim 1 in its integrity (claims 12 and 15 include similar recitations), and Applicant finds that this is an unfair consideration of the additional elements and the claim as a whole; the Examiner fails to recognize the claimed element of "a data record in the index structure," (similarly recited in claims 1, 12, and 15) as an additional element; the amendments made to the independent claim further incorporate the existing elements and add additional elements (e.g., "a security server system" recited in amended claim 1 and "a processor," "one or more storage media," and "instructions stored on the one or more storage media," as recited in amended claim 12) which are additional elements that further integrate the purported abstract idea into a practical application; these additional elements are integral to the claim, and, when considered within the context of the claim as a whole, integrate the purported abstract idea into a practical application; the claims cover a particular solution to a problem (time consuming, resource consuming, and inaccurate threat detection at a real-time payment network infrastructure) by claiming a discrete, particular way to achieve a desired outcome (e.g., improved threat detection via improved data records in an index structure stored at a real-time payment network infrastructure), as opposed to claiming the idea of a solution or outcome; the instant claim is directed to particular defined steps for achieving the desired outcome; the additional elements of the instant claims, when considered in ordered combination and the claim is considered as a whole, do integrate the abstract idea into a practical application; claim 15 does not merely recite an abstract idea in isolation, but instead requires specific computer-executable operations that construct and update a structured index data record using heterogeneous transaction information received across multiple authorization services; and under Enfish, McRO, and Finjan, such improvements to computer functionality render claim 15 patent-eligible”.
Initially, the Examiner would like to point out that the basis of the rejection is Alice, by applying the subject matter eligibility analysis and flowchart according to MPEP § 2106, which applies a two-step framework, earlier set out in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice, 573 U.S. at 217.
Under the two-step framework, it must first be determined if "the claims at issue are directed to a patent-ineligible concept." If the claims are determined to be directed to a patent-ineligible concept, e.g., an abstract idea, then the second step of the framework is applied to determine if "the elements of the claim ... contain an "inventive concept" sufficient to 'transform' the claimed abstract idea into a patent-eligible application." (citing Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, we apply a "directed to" two-prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the claim "applies, relies on, or uses 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 judicial exception," i.e., whether the claim integrates the judicial exception into a practical application. (MPEP §2106.04 II.A.1. and II.B.2.).
The Specification, (PG Pub US 20250053978 A1, para 8), provides evidence as to what the claimed invention is directed. In this case, the specification, (‘978 A1, para 8), discloses that the invention relates to preventing transaction fraud, and is grouped under “Certain Methods of Organizing Human Activity, commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)” and grouped under “Certain Methods of Organizing Human Activity, fundamental economic principles or practices (including hedging, insurance, mitigating risk)”, in prong one of step 2A. (MPEP §2106.04 II.A.1.).
Claim 1 provides additional evidence, and recites the limitations “receiving, by a security server system, a first set of transaction information, wherein the first set of transaction information comprises one or more data field entries relating to a user; creating, by the security server system, a data record in the index structure for the user, the data record comprising a plurality of data fields for data field entries; inserting, by the security server system, the one or more data field entries in the first set of transaction information into the data record; receiving, by the security server system, a second set of transaction information, wherein the second set of transaction information comprises one or more data field entries; determining, by the security server system, that the second set of transaction information is associated with the user, wherein at least one data field entry in the second set of transaction information is different to a corresponding data field entry in the first set of transaction information; and based on determining that the second set of transaction information is associated with the user, updating, by the security server, the data record by inserting the one or more data field entries in the second set of transaction information into the data record if the second set of transaction information is determined to be associated with the user”, where the italicized claim language represents the abstract idea of “preventing transaction fraud”, and the bolded claim language represents the additional elements (MPEP §2106.04 II.A.1.).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP §2106.04 II.A.2.), the additional elements of the claim, such as “a security server system” and “creating, by the security server system, a data record in the index structure for the user”, represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “preventing transaction fraud.”
Examiner notes the basis of the rejection was, and is not as any mental process covering performance in the mind, but classified as an abstract idea, “preventing transaction fraud”, grouped under “Certain Methods of Organizing Human Activity, commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations) and grouped under “Certain Methods of Organizing Human Activity, fundamental economic principles or practices (including hedging, insurance, mitigating risk)”.
With respect to the additional elements operating in a non-conventional and non-generic way and reflecting an improvement to a particular technological environment, the cited additional elements represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “preventing transaction fraud.” The claim is not directed to improving computers or related technologies, but improving the method for “preventing transaction fraud”. For potential improvement in an abstract idea, “preventing transaction fraud”, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a preventing transaction fraud concept) is not an improvement in technology. (MPEP § 2106.04(d)(1)). Therefore, claim 1 is non-statutory.
Claim 12 also recites the abstract idea of “preventing transaction fraud”, as well as the additional elements of “a system for constructing an index structure in a real-time payment network”, “a processor”, “one or more storage media”, “instructions stored on the one or more storage media that, when executed by the processor, direct the system to: …”, and “create a data record in the index structure for the user”, which represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “preventing transaction fraud”.
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describe the concept of “preventing transaction fraud” using computer technology (e.g., “a processor” and “one or more storage media”). Therefore, the use of these additional elements do no more than employ a computer as a tool to implement the abstract idea. And as the computer does no more than serve as a tool to implement the abstract idea, they do not improve computer functionality or improve another technology or technical field. Therefore, claim 12 is non-statutory.
Claim 15 also recites the abstract idea of “preventing transaction fraud”, as well as the additional elements of “a non-transitory computer-readable storage medium storing instructions thereon which, when executed by a processor, cause the processor to perform a method for constructing an index structure in a real-time payment network”, and “creating a data record in the index structure for the user”, which represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “preventing transaction fraud”.
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describe the concept of “preventing transaction fraud” using computer technology (e.g., “a processor” and “a non-transitory computer-readable storage medium”). Therefore, the use of these additional elements do no more than employ a computer as a tool to implement the abstract idea. And as the computer does no more than serve as a tool to implement the abstract idea, they do not improve computer functionality or improve another technology or technical field. Therefore, claim 15 is non-statutory.
Finally, Examiner notes the basis of the rejection is Alice, by applying the subject matter eligibility analysis and flowchart according to MPEP § 2106. And, based on this standard, the claims are non-statutory, and correctly rejected under 35 U.S.C. § 101.
In the context of 35 U.S.C. § 102 and 35 U.S.C. § 103, in the Non-Final Rejection Office Action dated September 18, 2025, Applicant arguments are persuasive to overcome the current rejections under 35 U.S.C. § 102 and 35 U.S.C. § 103. Das and Lee fail to disclose the limitation "based on determining that the second set of transaction information is associated with the user, updating, by the security server, the data record by inserting the one or more data field entries in the second set of transaction information into the data record if the second set of transaction information is determined to be associated with the user", with claim 12 being similarly amended. Das fails to describe receiving new transaction (e.g., from a second merchant server) in order to determine whether the newly received transaction information is associated with a particular user and user data record, and Lee does not cure this deficiency. Das and Lee are silent regarding receiving new transaction information and determining that the newly received transaction information is associated with a particular user and user data record.
With respect to independent claim 15, Das does not disclose or anticipate the claimed sequence of operations required for constructing an index structure. Das does not teach creating a data record for a user comprising a plurality of data fields, inserting a first set of transaction information into that data record, receiving a second set of transaction information, determining whether that second set is associated with the same user based on at least one differing data field entry, and then inserting the second set of transaction information into the same data record conditional upon that determination, and Lee does not cure these deficiencies.
Examiner has rescinded the rejections under 35 U.S.C. § 102 and 35 U.S.C. § 103 for claims 1-19.
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 1-19 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-11 and 16-19 are directed to a “method”; claims 12-14 are directed to a “system”; and claim 15 is directed to a “non-transitory computer-readable storage medium”. Therefore, these claims are directed to one of the four statutory categories of invention.
Claim 1 recites “preventing transaction fraud”, which is a form of commercial or legal interaction and fundamental economic principles or practices (i.e., organizing human activity), and therefore, an abstract idea. Specifically, the claim recites “receiving, by a security server system, a first set of transaction information, wherein the first set of transaction information comprises one or more data field entries relating to a user; creating, by the security server system, a data record in the index structure for the user, the data record comprising a plurality of data fields for data field entries; inserting, by the security server system, the one or more data field entries in the first set of transaction information into the data record; receiving, by the security server system, a second set of transaction information, wherein the second set of transaction information comprises one or more data field entries; determining, by the security server system, that the second set of transaction information is associated with the user, wherein at least one data field entry in the second set of transaction information is different to a corresponding data field entry in the first set of transaction information; and based on determining that the second set of transaction information is associated with the user, updating, by the security server, the data record by inserting the one or more data field entries in the second set of transaction information into the data record if the second set of transaction information is determined to be associated with the user”. The abstract idea is in italics, and the additional elements are in bold. (MPEP § 2106.04 II.A.1.).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP §2106.04 II.A.2.), the additional elements of the claim, such as “a security server system” and “creating, by the security server system, a data record in the index structure for the user”, represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “preventing transaction fraud.”
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describes the concept of “preventing transaction fraud” using computer technology (e.g., “a security server system”). Therefore, the use of these additional elements do no more than employ a computer as a tool to implement the abstract idea. And as the computer does no more than serve as a tool to implement the abstract idea, they do not improve computer functionality nor improve another technology or technical field. Therefore, claim 1 is non-statutory.
Claim 12 also recites the abstract idea of “preventing transaction fraud”, as well as the additional elements of “a system for constructing an index structure in a real-time payment network”, “a processor”, “one or more storage media”, “instructions stored on the one or more storage media that, when executed by the processor, direct the system to: …”, and “create a data record in the index structure for the user”, which represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “preventing transaction fraud”.
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describe the concept of “preventing transaction fraud” using computer technology (e.g., “a processor” and “one or more storage media”). Therefore, the use of these additional elements do no more than employ a computer as a tool to implement the abstract idea. And as the computer does no more than serve as a tool to implement the abstract idea, they do not improve computer functionality nor improve another technology or technical field. Therefore, claim 12 is non-statutory.
Claim 15 also recites the abstract idea of “preventing transaction fraud”, as well as the additional elements of “a non-transitory computer-readable storage medium storing instructions thereon which, when executed by a processor, cause the processor to perform a method for constructing an index structure in a real-time payment network”, and “creating a data record in the index structure for the user”, which represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “preventing transaction fraud”.
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describe the concept of “preventing transaction fraud” using computer technology (e.g., “a processor” and “a non-transitory computer-readable storage medium”). Therefore, the use of these additional elements do no more than employ a computer as a tool to implement the abstract idea. And as the computer does no more than serve as a tool to implement the abstract idea, they do not improve computer functionality nor improve another technology or technical field. Therefore, claim 15 is non-statutory.
Dependent claims 2-11, 13-14, and 16-19 further describe the abstract idea of “preventing transaction fraud”, which is insufficient to overcome the rejection of claims 1, 12, and 15.
Dependent claims 2, 4-5, 7-8, 10-13, and 15-19 do not recite any new additional elements that integrate the abstract idea into a practical application, and that do no more than represent a computer performing functions that correspond to implementing the acts of “preventing transaction fraud”, when analyzed under Step 2A, Prong Two. Under Step 2B, when taken, alone or in ordered combination, do not amount to significantly more than the abstract idea alone.
Dependent claim 3 recites new additional elements of “IP address” and “MAC address”, which do no more than employ a computer as a tool to implement the abstract idea. And, as they do no more than employ a computer as a tool to implement the abstract idea, they do not improve computer functionality nor improve another technology or a technical field.
Dependent claim 6 recites a new additional element of “an IP address associated with a user device”, which does no more than employ a computer as a tool to implement the abstract idea. And, as it does no more than employ a computer as a tool to implement the abstract idea, it does not improve computer functionality nor improve another technology or a technical field.
Dependent claim 9 recites a new additional element of “an issuer server”, which does no more than employ a computer as a tool to implement the abstract idea. And, as it does no more than employ a computer as a tool to implement the abstract idea, it does not improve computer functionality nor improve another technology or a technical field.
Dependent claim 14 recites new additional elements of “a first server” and “one or more additional servers”, which do no more than employ a computer as a tool to implement the abstract idea. And, as they do no more than employ a computer as a tool to implement the abstract idea, they do not improve computer functionality nor improve another technology or a technical field.
Hence, claims 1-19 are not patent eligible.
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.
Claim 16 is 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 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.
New Matter
Claim 16 recites, “The method of claim 1, … a computer-implemented data structure configured to enable real-time retrieval and updating of the user-associated transaction information, thereby facilitating real-time authorization processing and reducing network latency during transaction evaluation …”. Specification, (PG Pub US 20250053978 A1), is silent and lacks sufficient details so that one of ordinary skill in the art would understand how the inventor intended the functions “enable real-time retrieval and updating of the user-associated transaction information” and “facilitating real-time authorization processing and reducing network latency” to be performed. Therefore, this is an issue of new matter, which is matter not present on the filing date of the application in the specification, claims, or drawings that has been added after the application filing. (MPEP § 2163.06 I).
The following is a quotation of 35 U.S.C. § 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. § 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 16 is rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Means-Plus-Function
Claim 16 recites “The method of claim 1, wherein creating the data record in the index structure comprises storing the data record in a computer-implemented data structure configured to enable real-time retrieval …”
The claim limitations above do not use the word "means" but is being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, because the claim limitations use generic placeholders that are coupled with functional language, "acts", without reciting sufficient structures to perform the recited functions and the generic placeholders are not preceded by structural modifiers.
These claim limitations invoke 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph. However, the written description (PG Pub US 20250053978 A1) fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the functions. Therefore, the claim is indefinite and is rejected under 35 U.S.C. § 112(b) or pre-AIA 35 U.S.C. § 112, second paragraph.
Applicant may:
Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph;
Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. § 132(a)); or
Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. § 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. § 132(a)); or
Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP § 608.01 (o) and § 2181.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Oberhofer et al (U. S. Patent Application Publication No. 20200250159 A1) – Data Resolution Among Disparate Data Sources
Oberhofer discloses cross-matching of match indexes assigned to respective data sources being performed. Each match index can store at least a portion of data from a subset of data records in the data source to which the match index is assigned. Such data can be stored in the match index as match index records. Responsive to identifying matches between match records of different match indexes, the data records in the data sources to which the match records correspond can be updated to add links between the respective data records.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN CHISM whose telephone number is (571) 272-5915. The examiner can normally be reached during 9:00 AM – 3:00 PM Monday – Thursday, EST.
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/STEVEN R CHISM/Examiner, Art Unit 3692
/DAVID P SHARVIN/Primary Examiner, Art Unit 3692