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 .
Status of Claims
This action is in response to amendment filed on 27 February 2026. Claims 1, 5, 8, 9, 12, 14, 15 and 19 have been amended. Claims 1-20 are currently pending and have been examined.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting over claims 1-12 of U.S. Patent No. 12, 008,575 since the claims, if allowed, would improperly extend the “right to exclude” already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows:
18/737,266
12/008,575
A computer-implemented method for managing a transaction between a providing entity and a receiving entity, the method comprising:
receiving, by a computer system over a communication network, a first plurality of entity parameters for each of a plurality of receiving entities;
receiving, by the computer system over the communication network, a second plurality of entity parameters for each of a plurality of providing entities;
registering, by the computer system, the plurality of receiving entities based on the first plurality of entity parameters;
registering, by the computer system, the plurality of providing entities based on the second plurality of entity parameters;
receiving a request to initiate a transaction from a receiving entity of a plurality of receiving entities;
extracting one or more entity parameters of a first plurality of entity parameters associated with the receiving entity upon receiving the request, wherein the first plurality of entity parameters were received from each of the plurality of receiving entities during registration;
matching each of the one or more entity parameters with pre-determined transaction rules related to a plurality of providing entities to identify at least one providing entity of the plurality of providing entities for the receiving entity, wherein the pre-determined transaction rules comprise a structural tree, the structural tree comprising a plurality of nodes comprising a first set of nodes each representing a transaction value to be provided by one of the plurality of providing entities, a second set of nodes representing one or more transaction preferences from a second plurality of entity parameters received from the plurality of providing entities during registration, and a node representing a transaction token configured to enable the transaction between the at least one providing entity and the receiving entity, and wherein the matching comprises:
identifying matching nodes amongst the plurality of nodes associated with a representation matching each of the one or more entity parameters;
activating links between the matching nodes to identify an unbroken link between at least one node in the first set of nodes to the node representing the transaction token through nodes in the second set of nodes; and
selecting a providing entity to be the at least one providing entity for enabling the transaction based on identifying the unbroken link; and
automatically enabling, by a transaction enable module of the computer system, the transaction from the at least one providing entity to the receiving entity based on the matching, wherein enabling the transaction comprises establishing a connection
A computer-implemented method for managing a transaction between a providing entity and a receiving entity, the method comprising:
receiving a first plurality of entity parameters for each of a plurality of receiving entities;
receiving a second plurality of entity parameters for each of a plurality of providing entities;
registering the plurality of receiving entities based on the first plurality of entity parameters;
registering the plurality of providing entities based on the second plurality of entity parameters;
receiving a request to initiate a transaction from a receiving entity of the plurality of receiving entities;
extracting one or more entity parameters of the first plurality of entity parameters associated with the receiving entity upon receiving the request;
matching each of the one or more entity parameters with pre-determined transaction rules related to the plurality of providing entities to identify at least one providing entity of the plurality of providing entities for the receiving entity, wherein the pre-determined transaction rules comprise a structural tree comprising a plurality of layers with a plurality of nodes, wherein each node of the plurality of nodes in a bottom layer of the plurality of layers represents a transaction value to be provided by one of the plurality of providing entities, wherein the plurality of nodes in intermediate layers of the plurality of layers represents one or more transaction preferences from the second plurality of entity parameters of the plurality of providing entities, wherein a top layer of the plurality of layers comprises a single node representing a transaction token configured to enable the transaction between the at least one providing entity and the receiving entity, and wherein the matching comprises: identifying matching nodes amongst the plurality of nodes of the plurality of layers associated with a representation matching each of the one or more entity parameters; activating links between the matching nodes to identify an unbroken link between at least one node in the bottom layer to the single node in the top layer through nodes in the intermediate layers; and selecting a providing entity related to the at least one node to be the at least one providing entity for enabling the transaction; and enabling the transaction from the at least one providing entity to the receiving entity.
Although the claims at issue are not identical, they are not patentably distinct from each other because: though the wording are different, the limitations carried are either inherently implied or would have been obvious to one of ordinary skill in the art. 18/737, 266 recites “wherein the first plurality of entity parameter wherein received from each of the plurality of receiving entity during registration” vs “ receiving a first plurality of entity parameters for each of a plurality of receiving entities and “registering the plurality of receiving entities based first plurality of entity parameters”. One ordinary skill in the art would have contemplated that the act of wherein includes the previously received a plurality of entities parameters from sources (i.e., from receiving entity or during registration), the nature of the steps are different, however do not result in a patentable distinction in either case the plurality of paraments must be received from a certain source and processed. 18/737, 266 recites “nodes comprising a first set of and a second set of nodes ” vs “layers with a plurlity of nodes ” which is merely a different way of wording to the patent’s however, do not result in a patentable distinction in either case. 18/737, 266 recites “in the first set of nodes to the node” vs at least node in the bottom layer to the single nodes” which is merely a different way of wording to the patent’s however, do not result in a patentable distinction in either case.
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.
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.
Step 1: The claims 1-7 are a method, claims 8-14 are a system and claims 15-20 are medium. Thus, each independent claim, on its face, is directed to one of the statutory categories of 35 U.S.C. §101. However, the claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 2A-Prong 1: The (independent claims 1, 8 and 15) recite receiving a request to initiate a transaction from a receiving entity, extracting one or more entity parameters associated with the receiving entity upon receiving the request, matching each of the one or more entity parameters with pre-determined transaction rules related to a plurlity of providing entities registered with a system to identify at least one providing entity for the receiving entity and enabling the transaction from the at least one providing entity to the receiving entity. The extracting limitation, as drafted, is a process that , under its broadest reasonable interpretation covers processing of information of the limitation in the mind but for the recitation of the generic computer components. Thus, the limitation is a mental process.
The matching limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of the generic computer components. That is, other than reciting the generic computer components, nothing in claim element precludes the step from practically being performed in the mined. For example, but for the computer components language, the claims encompass that user comparing one or more parameters with pre-determined transaction rules related to a plurality of providing entities registered with a system. Thus, the limitation is also a mental process.
Step 2A-Prong 2: The claims recited additional elements of the computer components (i.e., , memory) is used to perform both the extracting and matching steps. The computer components (i.e., processor , memory) in both steps is recited at a hash level of generality, i.e., as a generic processor performing a generic computer function of processing data (comparing information in response receiving request and pulling out information. This generic processor limitation is no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claims are directed to the abstract idea.
Step 2B: As discussed with respect to Step 2A Prong Two, the additional element in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim is ineligible.
Dependent claims 2-7, 9-14 and 16-20, these claims recite limitation that further define the same abstract idea noted in claims 1, 8 and 15. These claims recite additional limitation of structural tree comprising a plurality of layers with plurality of nodes that represent a plurality of transactions. The structural graph is recited at a high level of generality that represents plurality of transaction. This generic processor limitation is no more than mere instructions to apply the exception using a generic computer component. The structural graph limitation used to store information and at best is doing no more than generally linking the claims to computer environment. In sum, the combination of steps that stores data, receives and send message, activate link between nodes at best is doing no more than generally linking the claims to network environment that sends and receives communications– see MPEP 2106.05(h). See also, OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network). Thus, the claims are an abstract idea.
TLI Communications provides an example of a claim invoking computers and other machinery merely as a tool to perform an existing process. The court stated that the claims describe steps of recording, administration and archiving of digital images, and found them to be directed to the abstract idea of classifying and storing digital images in an organized manner. 823 F.3d at 612, 118 USPQ2d at 1747. The court then turned to the additional elements of performing these functions using a telephone unit and a server and noted that these elements we’re being used in their ordinary capacity (i.e., the telephone unit is used to make calls and operate as to identifying the connection , and simply receives data, extracts information from the received data, and stores the digital images based on the extracted information). 823 F.3d at 612-13, 118 USPQ2d at 1747-48.
The closest prior arts to the applicants claimed invention:
Banerjee et al (US Pub/. No., 2018/0196694 A1) discloses techniques described herein relate to generating graphoriented data structures based on cross-channel multi-user transaction and/or interaction data from one or more data sources, Additional techniques relate to analyzing and processing transactions using the graph-oriented data structures. Transaction data may be received from various data sources, and analyzed to determine subsets of the transaction data relating to interactions between specific pairs of users.
Kenyon et al (US Pub., 2014/0244493 A1) discloses systems and methods that receive one or more images and based at least in part on the received images, identify information associated with a payment instrument. The information associated with the payment instrument may be stored in a payment instrument repository, such as an electronic wallet (eWallet), associated with a user. The eWallet may be accessed by the user to add, delete, or modify payment instruments and associated information in the eWallet.
Miller et al (US Pu., 2016/0224993 A1) focused on systems, apparatuses, methods, and/or computer program products for identifying existing relationships between entities. Identification of relationships is based on an analysis of received entity data of one or more entities. The system of the present invention may compare received entity data with existing entity data to determine a match of entity data between one or more entities(abstract), receiving a first plurality of entity parameters for each of a plurlity of parameters of receiving entities (Fig. 2, 210, discloses receiving first entity data [plurality of entity parameter]); receiving a second plurality of entity parameters for each of a plurality of parameters of receiving entities (Fig. 2, 220 discloses the entity data of the plurlity of other entities [second plurlity of entity parameters] stored in a database); registering the plurlity of receiving entities based on the first plurality of entity parameters; registering the plurality of receiving entities based on the second plurality of entity parameters(paragraph [0097], discloses entities have an entity profile that is registered with the financial institution ..); receiving a request to initiate a transaction from a receiving entity of the plurlity of receiving entities (paragraph [0040], discloses the system 120 and/or user input system 130 is configured to initiate presentation of any of the user interfaces );extracting one or more entity parameters of the first plurality of entity parameters associated with the receiving entity upon receiving the request (paragraph [0058], discloses upon receipt of the files by the system 120, the entity data is extracted from the received file)); and matching each of the one or more entity parameters with pre-determined transaction rules related to the plurality of providing entities (Fig. 2, 220, discloses comparing the first entity data to entity data of a plurlity of other entities, .., and Fig. 2, 230, discloses identifying based on comparing the first entity data to entity data of the plurality of other entities, at least a partial match between the first entity data ,..).
Manoharan et al. (US Pub. No.: US 2019/0188578 Al) focused on methods and systems for automatically discovering data types required by a computer-based rule engine for evaluating a transaction request are presented. Multiple potential paths for evaluating the transaction request according to the rule engine are determined. An abstract syntax tree may be generated based on the rule engine to determine the multiple potential paths. Based on an initial set of data extracted from the transaction request, one or more potential paths that are determined to be irrelevant to evaluating the transaction request are identified (abstract), a rule engine comprises numerous conditions, and is conjured to provide an outcome for the transaction request by analyzing the transaction request according to the condition. In some embodiments, the outcome provided by the rule engine may be a binary outcome – an indication of where whether the truncation request is a legitimate request (paragraph [0011]), the abstract syntax tree is a tree-based data structure that include inter-connected nodes. Each node represents a set of condition for evaluating the transaction requested, and noes that are serially connected together by edges from a path (paragraph [0019]), the user device 100 [receiving entity] , in one embodiment, includes a user interface (UI) application 112 (e.g., a web browser), which may be utilized by the user 140 to conduct transactions (e.g., shopping, purchasing, bidding, etc.) with the service provider server 130[providing entity] over the network 160. In one aspect, purchase expense may be directly and/or automatically debited from an account related to the suer 140 via the user interface application 112 (paragraph [0024]) , extracting information related to a transaction type from the transaction request (which can be easily extracted from the transaction request itself) (paragraph [0055]), and upon receiving a transaction request (e.g., from a user device via the web server 134), the rule set analyzer 204 may extract information directly from the transaction request. In this example, the rule set analyzer 204 may be able to extract the transaction type related to the transaction request from the transaction request itself without retrieving information from other sources(paragraph [0056]).
Ur et al (US Pub., 2019/0342205 A1) focused on system and a method of routing transactions between nodes of a computer network, by at least one processor. Embodiments of the method may include: receiving a destination feature vector (DFV) for at least one destination node of a plurality of destination nodes of the computer network; receiving a transaction request to route a transaction between a source node of the computer network and the at least one destination node; extracting from the transaction request one or more transaction parameters; and selecting a destination node from the plurality of destination nodes based on one or more of the transaction parameters and the DFV of the at least one destination node(abstract), extracting by the processor from the transaction request and FV comprising at least one feather associated with the request transaction (Fig. 6, S1010 and paragraphs [0010] [0020]) , extracting from the transaction request one or more transaction parameters (Fig. 12, S4015 and paragraph [0028), receiving a transaction request to route a transaction between a soured node and destination node of the computer network (Fig. 10, S3005) and obtaining one or more transaction parameters for each avaible routing path, based on the truncation request (Fig. 10, S3015).
Kanza et al (US Pub., No., 2018/0006897 A1) focused on a system may include a processor and an input adapted to communicate with a network. The system may also include memory storing instructions that cause the processor to effectuate operations. The operations may include detecting a plurality of nodes in the network based on data received at the input and for each of a plurality of nodes, instantiating a node data structure. The operations may also include, for each respective node of the plurality of nodes, identifying an edge indicative of a connection between the respective node and a second node of the plurality of nodes (abstract), create a graph database comprising a layered graph based on the node data structures and the edge data structure (Fig, 2B, 245, paragraphs [0008]-[0009]), for each respective node , identifying an edge. The edge may indicate a connection between the respective nod and a second node …, identifying all edge between nodes… edges may indicate that two nodes are in communication with another (paragraph [0041]).
Leung et al (US Pub., No., 2011/0221769 A1) discloses technologies are generally described for providing a robust object recognition scheme based on dynamic modeling. Correlations in fine scale temporal structure of cellular regions may be employed to group the regions together into higher order entities. The entities represent a rich structure and may be used to code high level objects. Object recognition may be formatted as elastic graph matching
Chrapko et al (US Pub., 2014/0172708 A1) discloses systems and methods for conducting reliable financial transactions, credit decisions, and security assessments are provided. Connectivity values may be assigned to members of a community by users, third parties, or automatically based on the frequency of interactions between members of the community. Connectivity values may represent such factors as alignment, reputation within the network community, or the degree of trust. Information about a financial transaction may be automatically published to other qualifying members of the community based on connectivity values.
However, none of the above reference either alone or in a combination the corresponding structural tree comprises a plurality of layers represents a transaction value to be provided by one of the plurality of providing entities, wherein the plurality of nodes in intermediate layers of the plurality of layers represents one or more transaction preference from the second plurality of entity of the plurality nodes, wherein each node of the plurality layers represents one or more transactions preferences form the second plurality of entity parameter of the plurality of providing entities, wherein a top layer of the plurality of layers comprises a single node representing a transaction token configure to enable the transaction between the at least one providing entity and the receiving entity, and wherein the matching comprises: identify matching nodes amongst the plurality of nodes of the plurality of layers associated with a representation matching each of the one or more entity parameters; activating links between the matching nodes to identify an unbroken link between at least one node in the bottom layer to the single node in the top layer through nodes in the top layer through nodes in the intermediate layers; and selecting a providing entity related to the at least one node to be the at least one providing entity for enabling the transaction automatically enabling, by a transaction enable module of the computer system, the transaction from the at least one providing entity to the receiving entity based on the matching, wherein enabling the transaction comprises establishing a connection separate from the communication network between a first bank associated with the at least one providing entity and a second bank associated with the receiving entity to provision a transaction amount from the at least one providing entity to the receiving entity.
Response to Arguments
Applicant's arguments of 35 U.S.C 101 rejection with respect to claims 1-20 filed 27 February 2026 have been fully considered but they are not persuasive.
Applicant’s arguments of the claims are not directed to an abstract idea, but rather to a practical application including improved techniques for automatically enabling, by a transaction between a providing entity and a receiving entity via a connection between a first (e.g., bank associated with providing entity) and second bank (e.g., assocted with the receiving entity) based on the receiving a first plurality of entity parameters for each plurality of entity over a commucation network, receiving a second plurlity parameter for each of a plurality of providing entity over the commucation network is not persuasive.
The claimed elements focuses on transaction processing, entity matching and automated finical settlement, which Courts have consistently classified these as “method of organizing human activity “ or “fundamental economic practices”. The core of the claim – matching entity parameter to a transaction token across layered nodes and selecting a providing entity is an abstract idea similar to intermediate settlement or data matching. Futher, identifying matching nodes is considered a mental process or mathematical concept which are fundament bulling blocks of human ingenuity.
Furthermore, the automated transaction method is an "abstract idea" implemented on generic computer/banking infrastructure, rather than a patentable invention. The description of a transaction via a connection between two banks based on entity parameters over a network closely mirrors the "intermediated settlement" method found ineligible in Alice Corp. v. CLS Bank Int'l. The Generic Components: The use of "banks," "computers," and "communication networks" is viewed as conventional, meaning they do not add "significantly more" to the idea.
Registering the receiving and providing entity based on the first and second plurality of entity parameters over the network. The registering the receiving data step is recited at a high level of generality (i.e., as a general means of gathering entity paraments /data for use in the extracting matching, identifying steps matching nodes), and amount to mere data gathering which is a form of insignificant extra-solution activity. The communication network that performs the receiving step is also recited at a high level of generality, and merely automates the receiving and registering steps. Each of the additional limitations is no more than mere instructions to apply the exception using a generic computer component.
For claims involving the extraction of entity parameters and matching them to structured transaction rules (a "structural tree") are common, often falling under the category of abstract ideas implemented on a generic computer. These claims are frequently deemed ineligible because they constitute a "mental process" or "fundamental economic practice" (i.e., collecting data, analyzing it against rules, and storing results) that is simply automated, rather than a technical improvement.
The activating link.., selecting.., steps which is categorizes methods involving "transaction tokens," "identifying matching nodes," and "selecting a provider" as "methods of organizing human activity" or "financial transactions," which are considered abstract ideas under 35 U.S.C. § 101. The steps (activating, matching, identifying) are performed using conventional computing, the claim is often found to lack an "inventive concept" (significantly more) that transforms the abstract idea into a patent-eligible application. Data Processing vs. Technical Solution: If the "unbroken link" and "node" mapping is merely used to process data, rather than improving the functionality of the computer or network itself, is ineligible.
Applicant further argued that management of transaction between receiving entity and providing entity is improved by the unique and un conventional combination of steps and the user of multiple, separate communication network and the applicant paragraphs [0003],[0004], [0055], [0064, -[0065] and [0074]. None of these paragraphs provides a detail the specific, unconventional steps the computer takes to create this separate channel other than facilitating a transaction between two entities which is considered a "fundamental economic practice. The claims and the paragraphs focus on the result (connecting two banks to move funds) rather than the specific technical implementation (how the connection is physically established). The "Providing Entity" / "Receiving Entity": These terms describe the participants in a transaction, not a technical improvement to computer functionality.
Furthermore, the additional limitation of a generic computer implementation: The claim recites generic computer components, such as a "request reception module" and "entity parameters matching module." The Supreme Court has repeatedly held that merely implementing an abstract idea on a generic computer is not sufficient to satisfy the "inventive concept" requirement.
Thus, the 35 U.S.C 101 rejection with respect to claims 1-20 is maintained.
Conclusion
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/SABA DAGNEW/Primary Examiner, Art Unit 3621
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