DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, 18/776,519, was filed on July 18, 2024, and claims priority from Provisional Application 63/514,665, filed July 20, 2023.
The effective filing date is after the AIA date of March 16, 2013, and so the application is being examined under the “first inventor to file” provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of the Application
This Final Office Action is in response to Applicant’s communication of 03/17/2026.
Claims 6-20 are pending, of which claims 8 and 14 are independent.
In the most recent amendment, claims 1-5 were cancelled, and claims 6-10 and 12-18 were amended.
All pending claims have been examined on the merits.
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 6-20 are rejected under 35 U.S.C. §101 because the claimed invention is directed to non-statutory subject matter. The claimed invention is directed to an abstract idea, without “significantly more”.
Based on the flowchart in MPEP § 2106, Step 1 of the Alice/Mayo analysis is: “Is the claim to a process, machine, manufacture or composition of matter?”
In regards to Step 1 of the Alice/Mayo analysis, independent claim 1 is a method claim, claim 14 is an apparatus claim.
For the sake of compact prosecution, we continue with the Alice/Mayo “abstract idea” analysis.
Step 2A, prong 1 of the Alice/Mayo analysis is: “Does the claim recite a law of nature, a natural phenomenon (product of nature), or an abstract idea?”
In regards to Step 2A, prongs 1 and 2 of the Alice/Mayo analysis, the abstract idea elements recited in independent claims 8 and 14 are shown in italic font. (The “additional elements” and “extra solution steps” are shown in italic and underlined font):
In regards to claim 8,
8. (Currently Amended) A method for messaging communications for cross-border transactions, the method comprising:
receiving a request message from a requester agent of a requester, the request message identifying a request being made by the requester for a requestee and providing information to identify the requester;
identifying, from information provided by the request message, at least one jurisdiction implicated by the request message;
determining, based on the identified at least one jurisdiction and a request type of the request, one or more first regulations applicable to the requester, one or more second regulations applicable to the requestee, and one or more third regulations applicable to the request;
screening the requester identified by information provided by the received request message with respect to the one or more first regulations, wherein the screening of the requester comprises at least a Know Your Customer (KYC) identity check and a sanctions screening;
screening the requestee identified from the received request message with respect to the one or more second regulations, wherein the screening of the requestee comprises at least a sanctions screening;
screening the request identified from the received request message with respect to the one or more third regulations, wherein the screening of the request comprises at least an anti-money laundering (AML) check and a counter-terrorist financing (CTF) check;
converting the request from the received request message to an ISO 20022 request message protocol based on the request type of the request and the identified jurisdiction;
generating, in response to a result of the screenings of the requestee, requester, and the request, a signal to facilitate an electronic transmission of a request notification message to a requestee communication device of the requestee;
communicating, using the ISO 20022 request message protocol, information regarding the request for viewing by the requestee on the requestee communication device;
receiving a first response message from the requestee communication device of the requestee, the first response message providing an indication of the requestee agreeing to review a detail of the request; and
communicating, using the ISO 20022 request message protocol and in response to receipt of first response message, additional information regarding the request for viewing on the requestee communication device.
In regards to claim 14,
14. (Currently Amended) A messaging system for cross-border transactions, the messaging system comprising:
a request message platform comprising at least one historical database, a regulation database, and a screening analyzer, the screening analyzer comprising at least one processor and a memory coupled with the at least one processor, the memory including instructions that when executed by the at least one processor cause the at least one processor to:
receive a request message from a requester agent of a requester, the request message identifying a request being made by the requester for a requestee and providing information to identify the requester;
identify, from information provided by the request message, at least one jurisdiction implicated by the request message;
determine, based on the identified at least one jurisdiction and a request type of the request and by querying the regulation database, one or more first regulations applicable to the requester, one or more second regulations applicable to the requestee, and one or more third regulations applicable to the request;
screen the requester identified by information provided by the received request message with respect to the one or more first regulations, wherein the screening of the requester comprises at least a Know Your Customer (KYC) identity check and a sanctions screening;
screen the requestee identified from the received request message with respect to the one or more second regulations of the at least one jurisdiction, wherein the screening of the requestee comprises at least a sanctions screening;
screen the request identified from the received request message with respect to the one or more third regulations, wherein the screening of the request comprises at least an anti-money laundering (AML) check and a counter-terrorist financing (CTF) check;
convert the request from the received request message to an ISO 20022 request message protocol based on the request type of the request and the identified at least one jurisdiction;
generate, in response to a result of the screenings of the requestee, requester, and the request, a signal to facilitate an electronic transmission of a request notification message to a requestee communication device of the requestee; and
communicate, using the ISO 20022 request message protocol, information regarding the request for viewing by the requestee on the requestee communication device.
More specifically, claims 6-20 recite an abstract idea: “Certain Methods of Organizing Human Activity", specifically “Commercial or Legal Interactions (Including Agreements in the form of Contracts; Legal Obligations; Advertising, Marketing, or Sales Activities or Behaviors; Business Relations)”, as discussed in MPEP §2106(a)(2) Parts (I) and (II), and in the 2019 Revised Patent Subject Matter Eligibility Guidance.
The “Commercial or Legal Interactions” elements in claim 8 include:
“identifying, from information provided by the request message, at least one jurisdiction implicated by the request message”.
“determining, based on the identified at least one jurisdiction and a request type of the request, one or more first regulations applicable to the requester, one or more second regulations applicable to the requestee, and one or more third regulations applicable to the request”.
“screening the requester identified by information provided by the received request message with respect to the one or more first regulations, wherein the screening of the requester comprises at least a Know Your Customer (KYC) identity check and a sanctions screening”.
“screening the requestee identified from the received request message with respect to the one or more second regulations, wherein the screening of the requestee comprises at least a sanctions screening”.
“screening the request identified from the received request message with respect to the one or more third regulations, wherein the screening of the request comprises at least an anti-money laundering (AML) check and a counter-terrorist financing (CTF) check”.
The “Commercial or Legal Interactions” elements in claim 14 include:
“identify, from information provided by the request message, at least one jurisdiction implicated by the request message”.
“determine, based on the identified at least one jurisdiction and a request type of the request and by querying the regulation database, one or more first regulations applicable to the requester, one or more second regulations applicable to the requestee, and one or more third regulations applicable to the request”.
“screen the requester identified by information provided by the received request message with respect to the one or more first regulations, wherein the screening of the requester comprises at least a Know Your Customer (KYC) identity check and a sanctions screening”.
“screen the requestee identified from the received request message with respect to the one or more second regulations of the at least one jurisdiction, wherein the screening of the requestee comprises at least a sanctions screening”.
“screen the request identified from the received request message with respect to the one or more third regulations, wherein the screening of the request comprises at least an anti-money laundering (AML) check and a counter-terrorist financing (CTF) check”.
Moreover, claims 6-20 recite “Mathematical Concepts", specifically “Mathematical Relationships”, “Mathematical Formulas or Equations”, and “Mathematical Calculations”, as discussed in MPEP §2106.04(a)(2) Part (IV), and in the 2019 Revised Patent Subject Matter Eligibility Guidance.
The “additional elements” include: In claim 8: “a requestee communication device of the requestee”. In claim 14: “at least one historical database”, “a regulation database”, “at least one processor”, and “a memory coupled with the at least one processor”.
Moreover, “additional extra-solution elements” in claim 8 include:
“receiving a request message from a requester agent of a requester”,
“generating, in response to a result of the screenings of the requestee, requester, and the request, a signal to facilitate an electronic transmission of a request notification message to a requestee communication device of the requestee”,
“communicating, using the ISO 20022 request message protocol, information regarding the request for viewing by the requestee on the requestee communication device”,
“receiving a first response message from the requestee communication device of the requestee, the first response message providing an indication of the requestee agreeing to review a detail of the request”, and
“communicating, using the ISO 20022 request message protocol and in response to receipt of first response message, additional information regarding the request for viewing on the requestee communication device”.
Moreover, “additional extra-solution elements” in claim 14 include:
“receive a request message from a requester agent of a requester, the request message identifying a request being made by the requester for a requestee and providing information to identify the requester”,
“generate, in response to a result of the screenings of the requestee, requester, and the request, a signal to facilitate an electronic transmission of a request notification message to a requestee communication device of the requestee”, and
“communicate, using the ISO 20022 request message protocol, information regarding the request for viewing by the requestee on the requestee communication device”.
Step 2A, prong 2 of the Alice/Mayo analysis is “Does the claim recite additional elements that integrate elements that integrate the judicial exception into a practical application?”
In regards to Step 2A, prong 2 of the Alice/Mayo analysis, this abstract idea is not integrated into a practical application, because:
The claim is directed to an abstract idea with additional generic computer elements. The generically recited computer elements (In claim 8: “a requestee communication device of the requestee”. In claim 14: “at least one historical database”, “a regulation database”, “at least one processor”, and “a memory coupled with the at least one processor”) do not add a meaningful limitation to the abstract idea, because they amount to simply implementing the abstract idea on a computer. The claim amounts to adding the words "apply it" (or an equivalent) with the abstract idea, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea.
The extra-solution activities in claim 8 (“receiving a request message from a requester agent of a requester”, “generating … a signal to facilitate an electronic transmission of a request notification message to a requestee communication device of the requestee”, “communicating, using the ISO 20022 request message protocol, information regarding the request for viewing by the requestee on the requestee communication device”, “receiving a first response message from the requestee communication device of the requestee”, and “communicating, using the ISO 20022 request message protocol and in response to receipt of first response message, additional information regarding the request”) do not add a meaningful limitation to the method, as they are insignificant extra-solution activity.
The extra-solution activities in claim 14: “receive a request message from a requester agent of a requester”, “generate … a signal to facilitate an electronic transmission of a request notification message”, and “communicate, using the ISO 20022 request message protocol, information regarding the request”) do not add a meaningful limitation to the method, as they are insignificant extra-solution activity;
The combination of the abstract idea with the additional elements (generically recited computer elements), and/or with the extra-solution activities, does not integrate the abstract idea into a practical application.
Step 2B of the Alice/Mayo analysis is: “Does the claim recite additional elements that amount to significantly more than the judicial exception?”
In regards to Step 2B of the Alice/Mayo analysis, the claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea, because:
When considering the elements "alone and in combination" (In claim 8: “a requestee communication device of the requestee”. In claim 14: “at least one historical database”, “a regulation database”, “at least one processor”, and “a memory coupled with the at least one processor”), they do not add significantly more (also known as an "inventive concept") to the exception, because they amount to simply implementing the abstract idea on a computer. Instead, they merely add the words "apply it" (or an equivalent) with the abstract idea, or mere instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea.
In regards to the extra solution activities “receiving”, “generating … a signal”, and “communicating”), these are recognized as such by the court decisions listed in MPEP § 2106.05(d).
More specifically, in regards to the “receiving”, “generating … a signal”, and “communicating” steps, see the court cases OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network) and (presenting offers and gathering statistics), OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network).
Moreover, in regards to the “displaying” step (i.e. “communicate … for viewing by the requestee on the requestee communication device”), see Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 120 U.S.P.Q.2d 1844 (Fed. Cir. 2016) (Holding that the claimed menu graphic user interface is an abstract idea under 35 USC §101, because claimant "[did] not claim a particular way of programming or designing the software to create menus that have these features, but instead merely claims the resulting systems").
Moreover, in regards to “apply it”, according to MPEP § 2106.05(f)(2):
Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015).
In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
The Examiner holds that the independent claims “use a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data)” or “simply add a general purpose computer or computer components after the fact to an abstract idea”.
All dependent claims are also rejected, because they merely further define the abstract idea.
Response to Amendments
Re: Claim Rejections - 35 USC § 101
The 35 U.S.C. 101 rejection has been amended, as necessitated by Applicant’s amendments to the claims.
The Examiner recommends that the Applicants further amend the claims to be more closely analogous to Example 42 (“Method for Transmission of Notifications When Medical Records Are Updated”) of the 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 PEG”).
Re: Claim Rejections - 35 USC § 103
The 35 U.S.C. 101 rejection has been withdrawn, as necessitated by Applicant’s amendments to the claims.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US-2017/0221066-A1 to Ledford et al. (“Ledford”).
Paragraph [0326] of Ledford teaches Know Your Customer (KYC), paragraph [0010] teaches “real-time screening for suspected fraud, AML, and sanctions (FIG. 47 represents known automated fraud detection systems and their capabilities)”, and paragraph [0199] of Ledford teaches “Messages employed herein also can comply with existing global standard formats (e.g., ISO 20022, ISO 8583, etc.)”
However, according to a conservative reading of Ledford, it does not expressly teach the following feature of independent claim 8 (and its analogous feature in independent claim 14) in combination with the other claimed features:
“determining, based on the identified at least one jurisdiction and a request type of the request, one or more first regulations applicable to the requester, one or more second regulations applicable to the requestee, and one or more third regulations applicable to the request”
Also, according to a conservative reading of US 2021/0350343 A1 to Gaur et al. (“Gaur”. Eff. Filed on May 7, 2020. Published on Nov. 11, 2021) in view of US 2019/0220853 A1 to Srivastava et al. (“Srivastava”. Eff. Filed on Jan. 3, 2023. Published on Aug. 29, 2024), these two references do not teach said claimed feature in combination with the other claimed features. (These two references were previously applied in a 35 USC 103 rejection to a previous version of the claims that did not recite said feature in combination with the other features).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 should be directed to Examiner Ayal Sharon, whose telephone number is (571) 272-5614, and fax number is (571) 273-1794. The Examiner can normally be reached from Monday to Friday between 9 AM and 6 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SPE Christine Behncke can be reached at (571) 272-8103 or at christine.behncke@uspto.gov. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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Sincerely,
/Ayal I. Sharon/
Examiner, Art Unit 3695
May 28, 2026
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