DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
2. The information disclosure statement (IDS) submitted on 10/18/2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
3. Claim 1 is objected to because of the following informalities:
Claim recites “wherein … the first intermediary sever”, wherein underlined word should be corrected into the word “server”.
Appropriate correction is required.
Claim Rejections - 35 USC §101
4. 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.
5. Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
6. In the instant case, claim 1 is directed to a “method for processing a financial transaction between a first intermediary server and a second intermediary server”.
7. Claim 1 recites “processing a financial transaction”. Specifically, claim recites “initiating the financial transaction …; generating … an enriched data record in relation to the financial transaction; transmitting the enriched data record …; transmitting a first request …; encrypting the first request … before transmitting the first request …; decrypting the first request … after receiving the first request …; generating … a first response in response to the first request; encrypting the first response … before transmitting the first response …; transmitting the first response … ; receiving the first response …; decrypting the first response … after receiving the first response …; and settling the financial transaction … wherein the financial transaction is a payment transaction …”. Subject matter grouped under “Certain methods of organizing human activity” (e.g., commercial or legal interactions) and “Mathematical concepts – mathematical relationships”, and an abstract idea in prong one of step 2A (MPEP 2106.04(a)).
8. This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP 2106.04 II), the additional elements of the claim 1 such as “a first intermediary server”, “a second intermediary server”, “a centralized financial system”, “a blockchain”, and “a distributed ledger” do no more than represent the use of a computer as a tool to perform an abstract idea. The additional elements do no more than represent the use of a computer as a tool to perform an abstract idea and/or generally linking the use of a judicial exception to a particular technological environment or field of use, and therefore, neither improve computer functionality nor improve another technology or technical field. And, with respect to “transmitting the enriched data record …”, “transmitting a first request …”, “transmitting the first response…”, and “receiving the first response…” is simply transmitting data “[use] of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more, (MPEP 2106.05(f)(2)).
9. When analyzed under step 2B (MPEP 2106.04 II), 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 processing a financial transaction using computer technology (e.g., the processor). Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
10. Hence, claim is not patent eligible.
Claim Rejections - 35 USC § 112
11. 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.
12. Claim 1 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Unclear scope
13. “An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.” Zletz, 893 F.2d at 322, 13 USPQ2d at 1322.
14. Claim 1 recites “transmitting a first request from the first intermediary server to the second intermediary server …; encrypting the first request at the first intermediary server before transmitting the first request to the second intermediary server.”
Claim recite “encrypting… before transmitting…”, however, the previous limitation recites “transmitting…” In other words, the “first request” is already transmitted. Therefore, the scope is unclear. (See MPEP 2173.02 III).
Claim Rejections - 35 USC § 103
15. 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.
16. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
17. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
18. Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over US7333615B1 to Jarboe et al. in view of US20170132626A1 to Kennedy.
19. As per claim 1:
Jarboe et al. discloses the following limitations:
initiating the financial transaction at the first intermediary server (Fig.4, item 424; col.6, lines 44-46)
transmitting a first request from the first intermediary server to the second intermediary server in the centralised financial system (Col.5, lines 14-19, col.6, lines 53-55)
encrypting the first request at the first intermediary server before transmitting the first request to the second intermediary server (Fig.4, item 426; col.6, lines 47-52)
decrypting the first request at the second intermediary server after receiving the first request from the first intermediary server (Fig.4, items 432, 434; col.6, lines 56-65)
generating, at the second intermediary server, a first response in response to the first request (Fig.5, item 510; col.7, lines 22-24)
encrypting the first response at the second intermediary server before transmitting the first response to the first intermediary server (Fig.5, item 512, 514; col.7, lines 25-33)
transmitting the first response from the second intermediary server to the first intermediary server (Fig.5, item 516; col.7, lines 34-35)
receiving the first response at the first intermediary server (Fig.5, item 520; col.7, lines 35-36)
decrypting the first response at the first intermediary server after receiving the first response from the second intermediary server (Fig.5, item 522; col.7, lines 37-40)
wherein the financial transaction is a payment transaction between the first intermediary sever [server] and the second intermediary server (Fig.6, item 630 “Secure Payment”; col./line 7/67-8/7)
Jabroe et al. does not disclose, however, Kennedy, as shown, discloses the following limitations:
generating, at the first intermediary server, an enriched data record in relation to the financial transaction (Fig.3, item 304; [0049])
transmitting the enriched data record from the first intermediary server to a blockchain being a distributed ledger (Fig.3, item 306; [0050])
settling the financial transaction between the first intermediary server and the second intermediary server (Fig.7, items 704, 706, 740, 742, 744, 746, 748, 750; [0083]-[0084])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a system for validating blockchain transactions using a transaction processing network of Kennedy (‘626, [0006]) with teaching of Jabroe et al. for encryption between multiple devices, wherein a first device receives first information and second information, encrypts the information and sends the encrypted information to a second device that receives the encrypted information and decrypts the information with a set of encryption keys of Jarboe et al. (‘615, col.1, lines 57-62) for generating a data record comprising transaction data values stored in the data elements, adding the generated data record to the blockchain, authorizing the transaction account for payment to the merchant, and providing the purchased products to the consumer (‘626, [0049]-[0050], [0083]-[0084]).
Conclusion
20. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US20160342994A1 – Davis – Discloses a system for storing a plurality of financial transactions in a blockchain network.
US20150095238A1 – Khan et al. – Discloses systems, methods, and computer-readable media for securely conducting online payments with a secure element of an electronic device, wherein the electronic device generating first data that includes payment card data, generating second data by encrypting the first data and merchant information with a first key, transmitting to a commercial entity subsystem.
US20130124422A1 – Hubert et al. – Discloses a system and methods for transactions initiated by or on behalf of users between client systems and transaction systems for approval, wherein an authorization system contacts one or more registered devices for approval from a user of the registered devices for the transactions initiated by or on behalf of the users that are being handled by the transaction systems.
21. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANULLA ABDULLAEV whose telephone number is (571)272-4367. The examiner can normally be reached Monday-Friday 9:30AM -4:30PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Calvin L Hewitt II can be reached at 571-272-6709. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANULLA ABDULLAEV/ Examiner, Art Unit 3692
/CALVIN L HEWITT II/ Supervisory Patent Examiner, Art Unit 3692