DETAILED ACTION
Response to Amendment
This Office Action is responsive to Applicant’s arguments and request for reconsideration of application 18/795,924 (08/06/24) filed on 02/17/26.
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 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
ALICE/ MAYO: TWO-PART ANALYSIS
2A. First, a determination whether the claim is directed to a judicial exception (i.e., abstract idea).
Prong 1: A determination whether the claim recites a judicial exception (i.e., abstract idea).
Groupings of abstract ideas enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Mathematical concepts- mathematical relationships, mathematical formulas or equations, mathematical calculations.
Certain methods of organizing human activity- fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
Mental processes- concepts performed in the human mind (including an observation, evaluation, judgement, opinion).
Prong 2: A determination whether the judicial exception (i.e., abstract idea) is integrated into a practical application.
Considerations indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception
Considerations that are not indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
2B. Second, a determination whether the claim provides an inventive concept (i.e., Whether the claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
Considerations indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception NOTE: The only consideration that does not overlap with the considerations indicative of integration into a practical application associated with step 2A: Prong 2.
Considerations that are not indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. NOTE: The only consideration that does not overlap with the considerations that are not indicative of integration into a practical application associated with step 2A: Prong 2.
See also, 2010 Revised Patent Subject Matter Eligibility Guidance; Federal Register; Vol. 84, No. 4; Monday, January 7, 2019
Claims 1 - 20 is/are 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.
1: Statutory Category
Applicant’s claimed invention, as described in independent claim 1, is/are directed to a process (i.e. a method).
2(A): The claim(s) are directed to a judicial exception (i.e., an abstract idea).
PRONG 1: The claim(s) recite a judicial exception (i.e., an abstract idea).
Certain Method of Organizing Human Activity
The claim as a whole recites a method of organizing human activity. The claimed invention involves receiving a request to process a transaction, the request being associated with a web-based external resource; determining that a first secured payment processor is unregistered with the web-based external resource;
generating a single-use data item; generating a desensitized data item based on the single-use data item; and processing the transaction using the desensitized data item and transactional data associated with the request, which is a fundamental economic principles or practices (processing a transaction); commercial or legal (processing a transaction); and managing personal behavior or relationships or interactions between people (receiving, determining, causing ….. to generate, generating, processing).
The mere nominal recitation of “a server” does not take the claim out of the method of organizing human activity grouping. Thus, the claim recites an abstract idea.
Mental Processes
The claim recites limitations directed to receiving a request to process a transaction, the request being associated with a web-based external resource; determining that a first secured payment processor is unregistered with the web-based external resource; generating a single-use data item; generating a desensitized data item based on the single-use data item; and processing the transaction using the desensitized data item and transactional data associated with the request.
The limitation(s), as drafted, is/are a process that, under it’s broadest reasonable interpretation, covers performance of the limitation(s) in the mind. That is, other than reciting a “server”, nothing in the claim element precludes the steps from practically being performed in the mind. In other words, the claim encompasses the user manually receiving a request to process a transaction, the request being associated with a web-based external resource; determining that a first secured payment processor is unregistered with the web-based external resource; generating a single-use data item; generating a desensitized data item based on the single-use data item; and processing the transaction using the desensitized data item and transactional data associated with the request.
The mere nominal recitation of a “server” does not take the claim limitation out of the mental processes grouping. This/these limitation(s) recite a mental process. Thus, the claim recites an abstract idea.
PRONG 2: The judicial exception (i.e., an abstract idea) is not integrated into a practical application.
The claim recites the combination of additional elements of each of the steps or acts being performed “by a server”. The claim recites the combination of additional elements of the “receiving” step occurring “via a messaging application implemented on a device”. The claim recites the combination of additional elements of “causing, by the server, the first secured payment processor to generate a single-use data item”. The claim recites the combination of additional elements of the “generating” step occurring “via a second secured payment processor registered with the web- based external resource”. The claim recites the combination of additional elements of the “processing” step occurring “via the first secured payment processor”. The additional element(s) is/ are recited at a high level of generality (i.e., as a generic computer performing the generic computer functions of (a) data receipt/ transmission (e.g., “receiving”, etc. step(s) as claimed); and (b) data processing (e.g., “determining”, “causing ….. to generate”, “generating”, “processing”, etc. step(s) as claimed)). The additional element(s) is/ are recited at a high level of generality (i.e., as general means of gathering transaction data, and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The “server” that performs the step(s) is also recited at a high level of generality, and merely automates the step(s). The “server” limitations are no more than mere instructions to apply the exception using generic computer components. Accordingly, the additional element(s) does not integrate the abstract idea into a practical application because it does not impose any meaningful limitations on practicing the abstract idea. The claim is directed to an abstract idea. NOTE: (a) The claim is exclusively from the perspective of a “server”. (b) Although “a messaging application implemented on a device” is mentioned in the claim, the “messaging application implemented on a device” is merely interacting with the claimed “server”. Applicant is not claiming positively recited steps or acts performed by the “messaging application implemented on a device” itself. (c) Although a “first secured payment processor” and a “second secured payment processor” are mentioned in the claim, the “first secured payment processor” and the “second secured payment processor” are merely interacting with the claimed “server”. Applicant is not claiming positively recited steps or acts performed by the “first secured payment processor” and the “second secured payment processor” themselves.
Since the claim(s) recite a judicial exception and fails to integrate the judicial exception into a practical application, the claim(s) is/are “directed to” the judicial exception. Thus, the claim(s) must be reviewed under the second step of the Alice/ Mayo analysis to determine whether the abstract idea has been applied in an eligible manner.
2(B): The claims do not provide an inventive concept (i.e., The claim(s) do not include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
As discussed with respect to Step 2A Prong Two, the additional element(s) 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.
Furthermore, the additional element(s) under STEP 2A Prong 2 have been evaluated in STEP 2B to determine if it is more than what is well-understood, routine conventional activity in the field. Applicant’s specification as filed 08/06/24 does not provide any indication that the “server” is anything other than a generic, off-the-shelf computer components. Furthermore, the prosecution history of the instant application provides McElmurry, IV, US Pub. No. 2016/0171481; Zarakas, 2020/0118115; operating in a similar environment, suggesting performing tasks such as (a) data receipt/ transmission (e.g., “receiving”, etc. step(s) as claimed); and (b) data processing (e.g., “determining”, “causing ….. to generate”, “generating”, “processing”, etc. step(s) as claimed) are well understood, routine and conventional. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed by applicant (a) data receipt/ transmission (e.g., “receiving”, etc. step(s) as claimed); and (b) data processing (e.g., “determining”, “causing ….. to generate”, “generating”, “processing”, etc. step(s) as claimed) are well understood, routine and conventional. Symantec, TLI, OIP Techs and buySAFE court decisions cited in MPEP § 2106.05(D) (ii) indicate that mere collection or receipt of data over a network is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Accordingly, a conclusion that the additional elements are well-understood, routine, conventional activity is supported under Berkheimer.
For these reasons, there is no invention concept in the claim, and thus the claim is ineligible.
Dependent claims 2 - 10 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Alice Corp. also establishes that the same analysis should be used for all categories of claims (e.g., product and process claims). Therefore, independent server system claim 11 and independent machine-readable non-transitory storage medium claim 20 is/are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as the method claims. The component(s) (e.g., “one or more processors; and non-transitory computer readable storage medium”, etc.) described in independent server system claim 11 and the component(s) (e.g., “machine-readable non-transitory storage medium”, “processor”) described in independent machine-readable non-transitory storage medium claim 20, add nothing of substance to the underlying abstract idea. At best, the product (i.e., “server system”; “machine-readable non-transitory storage medium”) recited in the claim(s) are merely providing an environment to implement the abstract idea.
Dependent claims 12 - 19 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Response to Arguments
101
(1)Applicant argues the judicial exception (i.e., an abstract idea) is integrated into a practical application.
Applicant suggests the claimed invention presents a “practical application” because it (a) provides a technical solution to a technical problem (e.g., “This specific sequence of cross-platform routing and data transformation operations addresses a technical problem that arises in multi-platform computing environments and resolves it through a defined technical architecture that reduces compute overhead, reduces transaction processing latency, and conserves database memory, rather than through the application of generic computing operations to a conventional transaction processing flow.”. See pgs. 8 - 9 of applicant’s arguments/ remarks as filed (02/17/26).); and (b) provides improvements in the functioning of a computer, or to any other technology or technical field (e.g., “Specifically, the claims reflect an improvement to the functionality of electronic messaging systems by providing users with a secure and optimal payment flow for commercial transactions.”. See also, pg. 7 of Applicant’s argument’s/ remarks as filed (02/17/26).). The Examiner disagrees.
Applicant’s arguments suggesting the claimed invention (a) provides a technical solution to a technical problem; and (b) provides improvements in the functioning of a computer, or to any other technology or technical field suggests the applicant believes the technical aspects of the invention are substantial. There exists alternative perspectives however.
Applicant’s remarks regarding the alleged “solution”/ “improvement” (e.g., (a) “Specifically, the system determines whether a first secured payment processor is unregistered with the web-based external resource before initiating any payment processing operations, thereby avoiding wasted compute cycles and network round-trip that would otherwise result from wasted operations such as submitting transactional data to an incompatible processor, receiving a failure response, and re-initiating the transaction through an alternative processing path.” See pgs. 7 - 8 of Applicant’s arguments/ remarks as filed 02/17/26.; (b) “ The second processor generates a desensitized data item from the single-use data item rather than raw payment card data, reducing system latency and the need for the user to re-enter sensitive payment card information into a separate form compatible with the second processor. This approach effectively avoids a second transmission of sensitive card data across the network along with the associated encryption and decryption overhead, and allows the second processor to perform a lighter-weight token-to-token transformation instead of a full tokenization from raw card data.” See pg. 8 of Applicant’s arguments/ remarks as filed 02/17/26.; (c) “The system then routes the desensitized data item back to the first secured payment processor for transaction processing along with the transactional data, which consolidates all transaction processing through a single processor interface that the server already maintains. This approach reduces the number of active transaction sessions the server must manage, reduces the total number of network round-trips required to complete the transaction, and significantly reduces the compute overhead that would otherwise be required to reconcile transaction records across two different processor systems.” See pg. 8 of Applicant’s arguments/ remarks as filed 02/17/26.) are “conclusory” and amount to a “bare assertion”. See also, MPEP §2106.04(d)(1).
Applicant’s specification as filed (08/06/24) never describes how the claimed invention addresses the problems described or provides the improvements described (e.g., “avoiding wasted compute cycles and network round-trip”, “reducing system latency”, “significantly reduces the compute overhead”, etc.) in Applicant’s arguments/ remarks (02/17/26). This line of reasoning has been introduced for the first time in Applicant’s arguments/ remarks (02/17/26).
Furthermore, it is noted that the features upon which applicant relies (i.e., “network”, “network round-trip”, “encryption”, “decryption”, “token-to-token”, “tokenization”, etc.) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
NOTE: Although Applicant may act as their own lexicographer with respect to terms such as “single-use data item” and “desensitized data item”, Applicant has not done so in the instant application. Contrary to Applicant’s remarks, Applicant’s specification (08/06/24) has not defined what a “single-use data item” is, but instead has merely provided a “one-time-use card” as an example of what it may be (e.g., “ single-use data item (e.g., one-time-use card)”. See para. [0024] of Applicant’s specification (08/06/24). Contrary to Applicant’s remarks, Applicant’s specification (08/06/24) has not defined what a “desensitized data item” is, but instead has merely provided a “payment token” as an example of what it may be (e.g., “desensitized data item (e.g., payment token)”; “desensitized data items, such as payment tokens”. See para. [0027] [0063] [0116] [0120] of Applicant’s specification (08/06/24). NOTE: If Applicant intended “tokens”, the Applicant could have used that language in the claims. Applicant instead chose “single-use data item” and “desensitized data item” which is subject to broader interpretation. See also, MPEP § 2111.01 IV.. For example, a “desensitized data item” could be done on a machine, but a machine is not required. Similarly, desensitization does not require “tokens” or “tokenization”; “encryption” or “decryption”, etc. Masking, anonymizing, etc. could all be performed by a human operator and read upon applicant’s claimed invention.
Processing payments (e.g., processing transactions) is directed to the underlying abstract idea, not the functioning of the computer itself. What applicant is really arguing is the use of a computer as a tool or the benefits of automation itself.
Applicant’s alleged “solution”/ “improvement” are with respect to the business operations (i.e., “abstract idea”), not “the functioning of a computer, or to any other technology or technical field”.
Adding the words “apply it” (or an equivalent) with the judicial exception is not
not indicative of integration into a practical application. See also, MPEP § 2106.05(f). Merely using a computer as a tool to perform an abstract idea; and mere instructions to implement an abstract idea on a computer are not indicative of integration into a practical application. See also, MPEP §2106.05(f).
Many of the features applicant relies upon are “insignificant”. For example, they amount to “necessary data gathering and outputting” (e.g., “receiving, by a server via a messaging application implemented on a device, a request to process a transaction, the request being associated with a web-based external resource;”).
Adding insignificant extra-solution activity to the judicial exception is not indicative of integration into a practical application. See also, MPEP §2106.05 (g).
Collecting information (e.g., “receiving, by a server via a messaging application implemented on a device, a request to process a transaction, the request being associated with a web-based external resource;”); analyzing it (e.g., “determining, by the server, that a first secured payment processor is unregistered with the web-based external resource; causing, by the server, the first secured payment processor to generate a single-use data item; generating, by the server via a second secured payment processor registered with the web-based external resource, a desensitized data item based on the single-use data item; and processing, by the server via the first secured payment processor, the transaction using the desensitized data item and transactional data associated with the request.”); and displaying certain results of the collection and analysis merely indicates a field of use or technical environment in which to apply the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use is not indicative of integration into a practical application. See also, MPEP §2106.05 (h).
112
Withdrawn in light of Applicant’s arguments and/ or amendments.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure and relates to data management and integration and/ or processing a transaction.
US 20150161576 A1
US 20190228414 A1
US 20140052633 A1
US 20190087814 A1
US 20220291979 A1
US 20160104153 A1
US 20150178708 A1
US 20190356641 A1
US 10127544 B2
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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SARA CHANDLER HAMILTON
Primary Examiner
Art Unit 3695
/SARA C HAMILTON/Primary Examiner, Art Unit 3695
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