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
Claims 79-97 are pending in this application.
Claim Interpretation - 35 USC § 112(f)
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Claim 79’s limitation “component” continues to be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “component” coupled with functional language such as “configured to process the payment transaction in the real-time payments system” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. Note that there are 6 such components recited by the independent claim 79 – "an application programming interface endpoint component ", "a payment orchestration component", "a routing component", "a repair component", "a data enrichment component", and "a reformatting component".
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation:
“The components… may be implemented as hardware, software, or a combination of hardware and software. While shown in Fig. 1 as being located in a single component (e.g., orchestration service 1012), in some embodiments, the components 1020-1024 may be located in separate components (e.g., separate servers) [emphasis examiner’s].” See e.g., specification paragraph 34.
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Interpretation
Given the 112(f) invocation, the term “component” is interpreted as a hardware component. Again, this is because the term imports the hardware element disclosed by specification paragraph 34, which explains that “the components… may be implemented as hardware, software, or a combination of hardware and software. While shown in Fig. 1 as being located in a single component (e.g., orchestration service 1012), in some embodiments, the components 1020-1024 may be located in separate components (e.g., separate servers).” Thus, the examiner is interpreting that there are 6 hardware components in the independent claim 79 – i.e., "an application programming interface endpoint component ", "a payment orchestration component", "a routing component", "a repair component", "a data enrichment component", and "a reformatting component".
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 79-97 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 79-97 are directed to a system which are/is one of the statutory categories of invention. (Step 1: YES).
The Examiner has identified independent system claim 79 as the claim that represents the claimed invention for analysis. Claim 79 recites the limitations of a payment transaction being routed through a payment process, where a machine learning model repair and edit the transaction data, and the data is reformatted.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as certain methods of organizing human activity. Receiving payment transaction; processing payment transaction; routing payment transaction to payment rail (the examiner notes that “payment rail” could be payment process. See e.g., specification paragraph 98, which explains that “the transaction in the API call to be pushed to a specific route (e.g., a specific payment rail, such as real-time payment, ACH, wire transfer, international SWIFT transaction, or an international wire transfer)); implementing trained ML to repair payment transaction; editing payment transaction; and reformatting payment transaction, – specifically, the claim recites
“receive a payment transaction; process the payment transaction in the real-time payments system; route the payment transaction from the real-time payments system to a payment rail to complete processing of the payment transaction; implement a trained machine learning model to repair the payment transaction such that the payment transaction can continue to be processed by the payment orchestration component or by the payment rail; edit one or more elements of the payment transaction; and reformat the payment transaction to a different format”, recites a fundamental economic practice, directed to mitigating risk.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice or commercial or legal interactions, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The “a real-time payments system”, “an application programming interface endpoint component”, “a payment orchestration component”, “a routing component”, “a repair component”, “a trained machine learning model”, “a data enrichment component”, and “a reformatting component”, in claim 79, are just applying generic computer components to the recited abstract limitations. The recitation of generic computer components in a claim does not necessarily preclude that claim from reciting an abstract idea. (Step 2A-Prong 1: YES. The claims recite an abstract idea)
This judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements of: a computer such as a real-time payments system, a payment orchestration component, a repair component, a data enrichment component, and a reformatting component; a communication device such as an application programming interface endpoint component and a routing component; and software module and algorithm such as a trained machine learning model.
The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. Therefore, claim 79 is directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Accordingly, these additional elements, do not change the outcome of the analysis, when considered separately and as an ordered combination. Thus, claim 79 is not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims further define the abstract idea that is present in their independent claim 79 and thus correspond to Certain Methods of Organizing Human Activity, and hence are abstract for the reasons presented above.
Dependent claim 80 discloses the limitation of wherein the routing component is configured to implement a trained machine learning model to route the payment transaction to the payment rail, which further narrows the abstract idea. Note that the technical elements “the routing component” and “a trained machine learning model”, are recited at a high level of generality. They do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Dependent claim 81 discloses the limitation of wherein the data enrichment component is further configured to edit one or more elements of metadata associated with the payment transaction, which further narrows the abstract idea.
Dependent claim 82 discloses the limitation of the reformatting component is configured to reformat the payment transaction from a first format when the payment transaction is received by the application programming interface endpoint component to a second format used by the real-time payments system; and the second format is a different format than the first format, which further narrows the abstract idea. Note that the technical elements “the reformatting component”, “real-time payments system”, and “the application programming interface endpoint component”, are recited at a high level of generality. They do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Dependent claim 83 discloses the limitation of the reformatting component is further configured to reformat the payment transaction from the second format to a third format; the third format is used by the payment rail; and the third format is a different format than the second format, which further narrows the abstract idea. Note that the technical element “the reformatting component” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Dependent claim 84 discloses the limitation of the third format is a same format as the first format, which further narrows the abstract idea.
Dependent claim 85 discloses the limitation of examine contents of the payment transaction, wherein the contents of the payment transaction includes a transaction type; examine metadata associated with the payment transaction, wherein the metadata includes a payment rail preference; and use the trained machine learning model to determine a payment rail for routing the payment transaction based on the transaction type and the payment rail preference, which further narrows the abstract idea. Note that the technical element “the trained machine learning model” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Dependent claim 86 discloses the limitation of wherein the machine learning model is a decision-type machine learning model and is trained based on previous routes for a given transaction type, which further narrows the abstract idea. Note that the technical element “the machine learning model” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Dependent claim 87 discloses the limitation of examine an error code associated with the payment transaction; and perform a repair operation on the payment transaction based on the error code, which further narrows the abstract idea.
Dependent claim 88 discloses the limitation of retrying to post the payment transaction at a later point in time; editing one or more elements of contents of the payment transaction; editing one or more elements of metadata associated with the payment transaction; or sending the payment transaction to the data enrichment component for repair, which further narrows the abstract idea. Note that the technical element “the data enrichment component” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Dependent claim 89 discloses the limitation of wherein the data enrichment component is further configured to edit one or more elements of metadata associated with the payment transaction, which further narrows the abstract idea. Note that the technical element “data enrichment component” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Dependent claim 90 discloses the limitation of a payment transaction monitoring component configured to: assign an identifier to the payment transaction upon receipt of the payment transaction by the application programming interface endpoint component; associate an event with the identifier at each step of processing the payment transaction; record the event with the identifier in real-time as the event occurs; monitor the events in real-time to determine whether a payment transaction stop condition exists; and stop processing of the payment transaction on a condition that the payment transaction stop condition exists, which further narrows the abstract idea. Note that the technical elements “a payment transaction monitoring component” and “the application programming interface endpoint component” are recited at a high level of generality. They do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Dependent claim 91 discloses the limitation of wherein the identifier is a unique identifier associated with the payment transaction from payment transaction initiation through payment transaction termination, which further narrows the abstract idea.
Dependent claim 92 discloses the limitation of wherein payment transaction termination includes completing processing the payment transaction, which further narrows the abstract idea.
Dependent claim 93 discloses the limitation of wherein payment transaction termination includes stopping processing of the payment transaction based on the payment transaction stop condition, which further narrows the abstract idea.
Dependent claim 94 discloses the limitation of wherein the event includes a status update at a step of processing the payment transaction, which further narrows the abstract idea.
Dependent claim 95 discloses the limitation of wherein recording the event includes storing the event in a storage system, which further narrows the abstract idea. Note that the technical element “a storage system” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Dependent claim 96 discloses the limitation of wherein monitoring the events includes performing real-time analytics on the events to determine if the payment transaction stop condition is detected, which further narrows the abstract idea.
Dependent claim 97 discloses the limitation of wherein monitoring the events is performed by a trained machine learning model, which further narrows the abstract idea. Note that the technical element “a trained machine learning model” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Thus, the dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the dependent claims are directed to an abstract idea. Thus, the Claims 79-97 are not patent-eligible.
Response to Arguments
Applicant's arguments filed 6/3/26 have been fully considered but they are not persuasive.
In response to applicant's argument that:
“35 U.S.C. § 112(f)… Applicant submits that a person of skill in the art, when reading the claim term "component" in light of the description in the specification (i.e., that the component may be hardware, software, or a combination of hardware and software), would understand that the term "component" in combination with the recited function performed by the component connotes sufficient structure,”
the examiner respectfully disagrees. Based on the current claim language, applicant needs to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action. If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. See Claim Interpretation - 35 USC § 112(f) above.
In response to applicant's argument that:
“35 U.S.C. § 101… The Office has failed to identify an abstract idea,”
the examiner respectfully disagrees. The examiner has determined that the claims recite the abstract idea of a payment transaction being routed through a payment process, where a machine learning model repair and edit the transaction data, and the data is reformatted. See Claim Rejections - 35 USC § 101 above.
In response to applicant's argument that:
“Claim elements "involve" an exception but do not "recite" an exception… This is an overbroad generalization of claim 79. While the elements of claim 79 may "involve" an exception, the elements of claim 79 do not "recite" an exception as required by MPEP § 2106.04(11)(A)(1 ).… The claims include specific technical claim language that is used to "repair the payment transaction such that the payment transaction can continue to be processed" as recited in claim 79. The pending claims address technical problems in real-time payments systems,”
the examiner respectfully disagrees. The ability to conduct a process in real-time/immediately does not change the analysis. E.g., if a “generic computer” is used in real-time/immediately to carry out an abstract idea, that alone will not overcome the 35 U.S.C. § 101 requirements. The Alice Court’s holding is clear… abstract ideas that lack genuine innovation beyond the use of generic computers are not patentable.
In response to applicant's argument that:
“The features in claim 79 recite a technical solution to problems associated with interoperability between disparate payment systems (via the claimed "reformatting component configured to reformat the payment transaction to a different format") and to provided automated error recovery (via the claimed "repair component configured to implement a trained machine learning model to repair the payment transaction such that the payment transaction can continue to be processed" and the claimed "data enrichment component configured to edit one or more elements of the payment transaction"). These features of claim 79 are more than any alleged abstract idea. And the Office has not presented any evidence how these elements are allegedly a "certain method of organizing human activity,”
the examiner respectfully disagrees. The procedure cited in the above quote is a business model (e.g., reformatting component, repair component, and edit one or more elements of the payment transaction). These are business ideas/process. Procedural ideas are not technological advancements. They are ideas for carrying out business activities.
In response to applicant's argument that:
“practical application… the Office has not provided any analysis showing such,”
the examiner respectfully disagrees. The examiner has determined that the claims judicial exception is not integrated into a practical application. In particular, the claims technical elements are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. Therefore, the claims are directed to an abstract idea without a practical application. See Claim Rejections - 35 USC § 101 above.
In response to applicant's argument that:
“claim 79 recite technical solutions to problems associated with interoperability between disparate payment systems (via the claimed "reformatting component configured to reformat the payment transaction to a different format") and to provide automated error recovery (via the claimed "repair component configured to implement a trained machine learning model to repair the payment transaction such that the payment transaction can continue to be processed" and the claimed "data enrichment component configured to edit one or more elements of the payment transaction"),”
the examiner respectfully disagrees. Again, the procedure cited in the above quote is a business model (e.g., reformatting component, repair component, and edit one or more elements of the payment transaction). These are business ideas/process. Procedural ideas are not technological advancements. They are ideas for carrying out business activities.
In response to applicant's argument that:
“significantly more… like the claims in BASCOM, the pending claims do not preempt all ways of implementing the alleged abstract idea that the Office relies on… like in BASCOM, the claimed combination of additional elements presents a specific, discrete implementation of the alleged abstract idea,”
the examiner respectfully disagrees. First, Bascom does not change the way the Office analyzes claims. The case is specific to the specific application. The additional limitations when considered both individually and in combination do not amount to significantly more because the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
Secondly, the argument is not found persuasive because preemption is but one of the factors in the 35 USC 101 analysis. The preemption doctrine is a policy that shields the public against monopoly of ideas by individuals. It is less effective as an applicant’s sword against patent prohibitions. This is reflected by the Office’s guidance, which states “the absence of complete preemption does not guarantee that a claim is eligible.” See the July 2015 Update.
In response to applicant's argument that:
“the Office's statement that "prior art searches have yielded nothing similar to the claimed invention" (Office Action, page 6) at least implicitly acknowledges that the elements recited in claim 79 represent a nonconventional arrangement. Therefore, the additional elements apply the alleged abstract idea in a meaningful way described above beyond generally linking the use of the alleged abstract idea to a particular technological environment,”
the examiner respectfully disagrees. The 35 USC 101 patent eligibility determination is not a prior art analysis. For example, if the applicant were to submit claims for a regular table, it would meet the 35 USC 101 patent eligibility. But it may not be sufficiently novel to meet the requirements of 35 USC 102 & 103 patent eligibility. Conversely, if the applicant were to submit claims for a mathematical equation (for commercial calculations) that has variables never before used, it may be sufficiently novel to meet the requirements of 35 USC 102 & 103 patent eligibility. But it would not meet the 35 USC 101 patent eligibility. This is because abstract ideas are not patentable even if they are novel. This reasoning is consistent with the Court’s teaching in Alice that abstract ideas that lack genuine innovation beyond the use of generic computers are not patentable.
Conclusion
Accordingly, THIS ACTION IS MADE FINAL. 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 from the examiner should be directed to MARK H GAW whose telephone number is (571)270-0268. The examiner can normally be reached Mon-Fri: 9am -5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mike Anderson can be reached on 571 270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK H GAW/Examiner, Art Unit 3693
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