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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/7/2026 has been entered.
The 35 USC 103 has been withdrawn in view of the applicant’s arguments.
Response to Arguments
Applicant's arguments filed 5/7/2026 have been fully considered but they are not entirely persuasive.
Applicant’s representative again states that the Applicant has claimed a specific technical solution that solves specific technical problems. The present application describes a specific technical problem related to "when a first financial institution that is a member of a payment network wants to make a payment to a second financial institution that is not a member of the payment network," as stated in paragraph [0012]. Applicant’s representative argues that claims 1-20 recite additional elements that integrate the alleged Judicial Exception into a practical application. Applicant’s representative also argues that the Examiner fails to analyze the claims as a whole.
In response, the claims still fail to recite technological implementation details of how the claimed functions are being realized. Claims of this nature are almost always found to be ineligible for patenting under Section 101." Beteiro, LLC V. DraftKings Inc., 104 F.4th 1350, 1356 (Fed. Cir. 2024). The specification does not even provide details of a specific architecture or means or structures or specific computer executed modules for performing the claimed functions. Taken claim 1 as an example, claim 1 now recites an improvement to the business of:
Forwarding a providing a payment from a first payment network to a second payment network.
The claims "do[es] not improve the functioning of the computing device having a processor and a memory or the global transaction router or supernetwork or make[s] it operate more efficiently, or solve any technological problem." Trading Techs. Int'l, Inc. V. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019). "Nothing in the claim[s], understood in light of the specification, calls for anything but preexisting computers and displays, programmed using techniques known to skilled artisans, to present the new arrangement of information." Brumfield V. IBG LLC, 97 F Ath 854, 868 (Fed. Cir. 2024). The claims also do not show a technical improvement in the architecture of the computing device with the processor and memory or using a computing logic of the computing device or global router. The recited functions involve generic or conventional functions and setup of a basic computer device.
The mere recitation of a generic computing device with a processor and memory, a payment network and router cannot transform a patent-ineligible abstract idea into a patent-eligible invention as stated in Alice Corp., 134S.Ct. at 2358; DDR Holdings, LLC V. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cri. 2014) ("And after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible. (citation omitted)). Thus, if a patent's recitation of a computer amounts to a mere instruction to 'implement' an abstract idea 'on a computer', that addition cannot impart patent eligibility." Alice Corp., 134 S. Ct. at 2358 (internal citation omitted). The claimed computing device, network and router are merely a field of use that attempts to limit the abstract idea to a particular technological environment.
Each of the independent claims uses generic computer technology (such as a generic computing device and a payment network, processor or router) for routing or providing payment from a first payment network to another payment network, as such do not recite an improvement to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F .3 d 1299, 1314-1315 (Fed. Cir. 2016) ( finding claims not abstract because they "focused on a specific asserted improvement in computer animation").
Accordingly, the claims are void of anything significantly more than the abstract idea itself.
Applicant’s representative then argues that claims 1-20 amount to significantly more than the alleged Judicial Exception. Applicant’s representative then submits that it is not "routine, conventional activity" to "determine for a scheduled transaction for a first payment network that a recipient of the scheduled transaction is associated with a second payment network based at least in part on a network identifier for the recipient", "generate a payment request representing the scheduled transaction, the payment request comprising the network identifier for the recipient and a participant identifier for the recipient, and "forward the payment request to a global transaction router of a supernetwork that is configured to route the payment request from the first payment network to the second payment network." Therefore, Applicant submits that Step 2B also favors eligibility for claim 1.
In response, all the cited prior art provide the structural means or structures for performing the claimed invention or the functions as recited in at least the independent claims.
The additional elements when considered both individually and as a combination do not amount to significantly more than the abstract idea. The additional elements of a computing device, processor, memory and a first and second network when taken individually or as a whole are seen as general purpose computer or a computerized system (see the applicant’s specification). These claimed devices are noted to perform routine computer functions such as receiving data, determining data generating data, and displaying data on a computer screen or graphical user interface. The claimed computing device with a processor and memory, and the payment networks are seen as a generic computer performing generic functions without an inventive concept as such does not amount to significantly more. These devices are simply a field of use that attempts to limit the abstract idea to a particular environment. The type of data being manipulated does not impose meaningful limitations. Looking at the elements as a combination does not add anything more than the elements analyzed individually. Therefore the claims do not amount to significantly more than the abstract idea itself. The claims are not patent eligible.
Furthermore, in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., the Courts held that claims to a method for making websites easier to navigate on a small-screen device were not directed to an abstract idea. 880 F.3d 1356, 1363 (Fed. Cir. 2018). Here, the claims are not drafted in the format CoreWireless. Rather than providing a technical solution that improves the way the computing device, the applicant is merely using alternate ways of using a computer for allowing a user to generate a payment request and forward the payment request to payment network.
The judicial exception is not integrated into a practical application. In particular, the claims merely recite a generic computing device with a processor and memory, and a payment network to perform the claimed functions. These types of functions being performed are functions that a generic computer may achieve and they are also functions which similarly the Courts found to be abstract. The claimed “processor” in a network is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of ranking information based on a determined amount of use) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Applicant’s representative then continues to argue that the claimed invention provides an inventive concept.
In response, using a known computing device or a generic processor, memory and a network and router noted as being the additional elements does not add a significant more than the abstract idea. As noted in the applicant’s specification, the generic processing unit can be any known server or computer processor or software or hardware components. However, there is not a specific or new algorithm noted in the applicant’s specification to provide the generation of a payment request or of a forwarding of a payment request or data message in a network.
The listed computers or "CPU’s" noted in the applicant's specification are routine computer processors or computers performing generic computer functions such as determining, generating and sending or forwarding data.
The reliance of computers to perform their routine tasks even more accurately is not sufficient to transform a claim into patent eligible subject matter as noted in Alice 134 S. Ct. at 2359. As indicated by the court "use of a computer to create electronic records, track multiple transactions and issue simultaneous instructions" was not an inventive concept. The claims or even the applicant's specification does not support or provide or claim any specifically inventive technology or algorithm for performing the claimed functions.
The claimed payment requests or message data are intangible data. A specific type of data as such are within the realm of abstract data, See Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 451 n.12 (2007); Bayer AG v. Housey Pharm., Inc., 340 F.3d 1367, 1372 (Fed. Cir. 2003). Accordingly, we have treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas. See, e.g., Internet Patents, 790 F.3d at 1349; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011).
Accordingly, the applicant’s arguments are not persuasive.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 remain 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.
Subject Matter Eligibility Standard
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
Specifically, claim 1 is directed to a system. Claims 8 and 15 are directed to a method. Each of the claims falls under one of the four statutory classes of invention.
If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea).
The claims when the bolded limitations are removed recite the following limitations:
Claim 1 recites:
A system, comprising:
a computing device comprising a processor and a memory; and
a network hub of a first payment network comprising machine-readable instructions stored in the memory that, when executed by the processor, cause the computing device to at least:
determine for a scheduled transaction for the first payment network that a recipient of the scheduled transaction is associated with a second payment network based at least in part on a network identifier for the recipient;
generate a payment request representing the scheduled transaction, the payment request comprising the network identifier for the recipient and a participant identifier for the recipient;
forward the payment request to a global transaction router of a supernetwork that is configured to route the payment request from the first payment network to the second payment network, wherein the supernetwork in in data communication with the network hub, and wherein the global transaction router is configured to select, based at least in part on the network identifier, a destination network hub associated with the second payment network.
Claim 2 recites:
receive a payment response for the payment request from the global transaction router, the payment response representing a payment acceptance message; and
adjust a participant account balance for a participant account of a participant system associated with a creator of the scheduled payment.
Claim 3 recites:
send a payment acceptance message to the participant system associated with the creator of the scheduled payment.
Claim 4 recites:
receive a payment response for the payment request from the global transaction router, the payment response representing a payment rejection message; and
send an error message to a participant system associated with a creator of the scheduled payment.
Claim 5 recites:
determine that a trigger has occurred for the scheduled transaction for the first payment network; and
determine that the recipient of the scheduled transaction is associated with the second payment network in response to a determination that the trigger has occurred.
Claim 6 recites: the schedule specifies a trigger event for the scheduled transaction; and
the event specifies payment information for the scheduled transaction.
Claim 7 recites:
determine that a trigger has occurred for the scheduled transaction for the first payment network; and
identify the network identifier for the recipient and the participant identifier for the recipient in response to a determination that the trigger has occurred.
Claim 8 recites: A method, comprising:
determining, by a network hub of a first payment network for a scheduled transaction for the first payment network that a recipient of the scheduled transaction is associated with a second payment network based at least in part on a network identifier for the recipient;
generating a payment request representing the scheduled transaction, the payment request comprising the network identifier for the recipient and the participant identifier for the recipient;
forwarding the payment request to a global transaction router of a supernetwork that is configured to route the payment request from the first payment network to the second payment network, wherein the supernetwork is in data communication with the network hub, and wherein the global transaction router is configured to select, based at least in part on the network identifier, a destination network hub associated with the second payment network.
Claim 9 recites:
receiving a payment response for the payment request from the global transaction router, the payment response representing a payment acceptance message; and
adjusting a participant account balance for a participant account of a participant system associated with a creator of the scheduled payment.
Claim 10 recites:
sending a payment acceptance message to the participant system associated with the creator of the scheduled payment.
Claim 11 recites:
receiving a payment response for the payment request from the global transaction router, the payment response representing a payment rejection message; and
sending an error message to a participant system associated with a creator of the scheduled payment.
Claim 12 recites:
determining that a trigger has occurred for the scheduled transaction for the first payment network; and
determining that the recipient of the scheduled transaction is associated with the second payment network in response to determining that the trigger has occurred.
Claim 13 recites: wherein the scheduled transaction comprises a schedule and an event, wherein: the schedule specifies the trigger event for the scheduled transaction; and
the event specifies payment information for the scheduled transaction.
Claim 14 recites:
determining that a trigger has occurred for the scheduled transaction for the first payment network; and
identifying the network identifier for the recipient and the participant identifier for the recipient in response to determining that the trigger has occurred.
Claim 15 recites:
determine for a scheduled transaction for the first payment network that a recipient of the scheduled transaction is associated with a second payment network based at least in part on a network identifier for the recipient;
generate a payment request representing the scheduled transaction, the payment request comprising the network identifier for the recipient and a participant identifier for the recipient; and
forward the payment request to a global transaction router of a supernetwork that is configured to route the payment request from the first payment network to the second payment network, wherein the supernetwork is in data communication with the network hub, and wherein the global transaction router is configured to select, based at least in part on the network identifier, a destination network hub associated with the second payment network.
Claim 16 recites:
receive a payment response for the payment request from the global transaction router, the payment response representing a payment acceptance message; and
adjust a participant account balance for a participant account of a participant system associated with a creator of the scheduled payment.
Claim 17 recites:
send a payment acceptance message to the participant system associated with the creator of the scheduled payment.
Claim 18 recites:
receive a payment response for the payment request from the global transaction router, the payment response representing a payment rejection message; and
send an error message to a participant system associated with a creator of the scheduled payment.
Claim 19 recites:
determine that a trigger has occurred for the scheduled transaction for the first payment network; and
determine that the recipient of the scheduled transaction is associated with the second payment network in response to a determination that the trigger has occurred.
Claim 20 recites: wherein the scheduled transaction comprises a schedule and an event, wherein: the schedule specifies the trigger event for the scheduled transaction; and the event specifies payment information for the scheduled transaction.
Here, the claimed concept falls into the category of functions of organizing human activities such as performing commercial or legal interactions (including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, business relations) because it amounts to the concept of forwarding a payment to a merchant using a payment network.
The BRI of the claimed limitations describe functions of :
“generating a payment request representing the scheduled transaction, the payment request comprising the network identifier for the recipient and a participant identifier for the recipient, and forwarding the payment request to a global transaction router of a supernetwork that is configured to route the payment request from the first payment network to the second payment network”.
Step 2A, Prong Two: The judicial exception is not integrated into a practical application, In particular, the claims recite the above bolded limitations understood to be the additional limitations.
Performing steps by a generic machine or server computing device with a memory merely limit the abstraction to a computer field by execution by generic computers. See MPEP 2106.05(1).
As noted in MPEP 2106.04(d), limitations which amount to instructions to implement an abstract idea on a computer or merely using a computer as a tool, limitations which amount to insignificant extra-solution activity, and limitations which amount to generally linking to a particular technological environment do not integrate a practical exception into a practical application.
Generating data and forwarding data to a router to route data are similar to Alappat, which as noted in MPEP 2106. 05(b)(1) is superseded, and the correct analysis is to look whether the added elements integrate the exception into a practical application or provide significantly more than the judicial exception. The claims in the instant application are performed by one processor or computing device which merely queries for populating a template with data. The claimed payment networks are not performing any functions. The supernetwork performs its expected function which is to route data.
Consideration of these steps as a combination does not change the analysis as it does not add anything compared to when the steps are considered separately. The claims recite a particular sequence of functions of forwarding payment to a merchant using a payment network.
Performance of these steps or functions technologically may present a meaningful limit to the scope of the claim does not reasonably integrate the abstraction into a practical application.
Step 2B: The elements discussed above with respect to the practical application in Step 2A, prong 2 are equally applicable to consideration of whether the claims amount to significantly more. Accordingly, the claims fail to recite additional elements which, when considered individually and in combination, amount to significantly more. Reconsideration of these elements identified as insignificant extra-solution activity as part of Step 2B does not change the analysis.
Positively reciting a “processor” with “memory”, a “first and second payment network”, a router, and a “supernetwork” does not change the analysis as these aspects are properly considered as additional elements which amount to instructions to apply it with a computer.
These claimed elements also as found in the dependent claims are also recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using a generic component.
In processing the claims, it is noted that the recitation of these additional elements does not impact the analysis of the claims because these elements in combination are noted only to be one or more of a general purpose computer for performing basic or routine computer functions. The claimed processor is noted to a be a generic computer for querying a remote system or aggregator and for performing known computer functions therein. These additional elements do not overcome the analysis as these elements are merely considered as additional elements which amount to instructions to be applied to the generic computer.
The judicial exception is not integrated into a practical application. In particular, the claimed “processor”, “memory”, “global transaction router”, “system” and payment network” are recited at a high level of generality such they amount to no more than mere instructions to apply the exception using generic components. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Accordingly, claims 1, 8 and 15 are directed to an abstract idea.
The dependent claim(s) when analyzed and each taken as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea.
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. See 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);and, 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) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 remain rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,093,909. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-20 of the instant application are directed to a similar subject matter contained in claims 1-20 of the '909 patent. The only difference between the instant application and the '909 patent is merely a labeling difference. It is noted that all the features of claims 1-20 are contained in claims 1-20 of the '909 patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANTZY POINVIL whose telephone number is (571)272-6797. The examiner can normally be reached M-Th 7:00AM to 5:30PM.
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/FRANTZY POINVIL/Primary Examiner, Art Unit 3693
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