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 .
Acknowledgements
Applicant’s response filed March 17, 2026 is acknowledged.
Claims 1-20 are pending in the application.
Claims 2-4, 9, 10, 12-14, and 19 remain withdrawn from consideration.
Claims 1, 5-8, 11, 15-18, and 20 are examined below.
Examiner Request
Applicant is requested to indicate where in the specification there is support for amendments to claims should applicant amend. The purpose of this is to reduce potential 35 USC 112(a) or 35 USC 112, 1st paragraph issues that can arise when claims are amended without support in the specification. Examiner thanks applicant in advance. See also relevant portions of MPEP 2163.II.A:
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a "simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘___’ in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported."); see also MPEP § 714.02 and § 2163.06 ("Applicant should ... specifically point out the support for any amendments made to the disclosure."); and MPEP § 2163.04 ("If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.").
Claim Objections
The claims are objected to because they lack the consistency of terminology with the remainder of the specification required by 37 CFR § 1.75(d)(1). For example, applicant introduces “a first digitally signed cross-border message” in line 3 of claim 1. However, this message appears to correspond to the “second digitally signed cross-border payment message 45” of the remainder of the specification. See [0062]. Similarly, the claimed “second digitally signed cross-border message” appears to correspond to the “first digitally signed cross-border payment message 35” of the remainder of the specification. Note that the issue is the reversal of “first” and “second” between the claims and the remainder of the specification, not the lack of use of the word “payment” in the claims.
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, 5-8, 11, 15-18, and 20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter.
Regarding claims 1, 5-8, 11, 15-18, and 20, the claimed invention is directed to an abstract idea without significantly more. Representative claim 1 recites receiving a signed message, verifying the signed message, and approving a payment, which constitutes a certain method of organizing human activity (specifically, a commercial or legal interaction) or mental process. Accordingly, the claim recites an abstract idea. This judicial exception is not integrated into a practical application because the additional elements beyond the abstract idea simply link the abstract idea to a particular technological environment (public key infrastructure) or amount to extra-solution activity. Because the abstract idea is not integrated into a practical application, claim 1 is “directed to” an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements identified above represent only well-understood, routine, and conventional technology (or placeholders for such) when compared with the court decisions listed in MPEP § 2106.05(d). Viewing the additional elements as a combination does not add anything further than the individual elements. Therefore, the additional elements in the claim are not sufficient to amount to an inventive concept. Because claim 1 is directed to an abstract idea and fails to recite an inventive concept, it is patent ineligible.
Independent claims 11 and 20 contain limitations similar to claim 1 and are therefore rejected using the same rationale.
The dependent claims when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101. The additional limitations added by these claims fail to either integrate the claims into a practical application or add an inventive concept, because they serve to further narrow the abstract idea without integrating it into a practical application (claims 7, 8, 17, and 18), add additional elements that simply further link to a particular technological environment (claims 6 and 16), and/or amount to additional extrasolution activity (claims 5 and 15). Viewing the additional elements of the dependent claims as a combination does not add anything further than the individual elements. Therefore, the dependent claims neither practically integrate the abstract idea nor constitute an inventive concept, and these claims are also rejected as patent ineligible.
Claim Rejections - 35 U.S.C. 112(a) or 35 U.S.C. 112, 1st Paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 5-8, 11, 15-18, and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter that was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant points to ¶s 64, 67, and Figs. 1, 3 as supporting the amendment, however, there does not appear to be written description in this portion of the specification or elsewhere for the following claim limitation: “verifying at least one of the first digitally signed cross-border message or the intermediate computing system comprising determining … whether a digital signature and a detached content of the second digitally signed cross-border message is verified” (claim 1 and similar in claims 11 and 20).
Therefore, claims 1, 11, and 20 and their dependent claims are rejected as introducing new matter.
Claim Rejections - 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd Paragraph
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.
Claims 1, 5-8, 11, 15-18, and 20 are 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 that the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claim 1, applicant’s recitation “verifying at least one of the first digitally signed cross-border message or the intermediate computing system comprising determining … whether a digital signature and a detached content of the second digitally signed cross-border message is verified” would have been unclear to a person having ordinary skill in the art at the time of the invention. It is unclear how verifying the signature or contents of the second message would constitute verification of the intermediate computing system or the first digitally signed cross-border message, because the second message comes from and is signed by the originating computing system, not the intermediate computing system.
Claims 11 and 20 contain language similar to the recitation in claim 1 discussed in the immediately preceding paragraph, and claims 11 and 20 are rejected for reasons similar to those discussed above.
Response to Amendments and Arguments
The examiner expresses his appreciation for applicant’s specific citations to the specification indicating where applicant believes support for the claim amendments can be found. The examiner's search for support for the claim amendments was not limited to these citations.
Regarding the 101 rejection, applicant argues that the amendment overcomes the rejection of record. Examiner respectfully disagrees. The amended claims encompass the same abstract idea as the previously presented claims. The claims are similarly lacking in integration into a practical application and fail to include additional elements sufficient to amount to significantly more than the judicial exception. Therefore, the rejection is still believed to be proper and is maintained.
The 112(b) rejections are withdrawn in response to applicant’s amendment. Note, however, the new rejections above.
The prior art rejections are withdrawn in response to applicant’s amendment.
Conclusion
Applicant's amendment necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMIE KUCAB whose telephone number is (571)270-3025. The examiner can normally be reached Monday through Friday, 9 a.m. to 4:30 p.m. ET. The examiner’s email address is Jamie.Kucab@USPTO.gov. See MPEP 502.03 regarding email communications. Following is the sample authorization for electronic communication provided in MPEP 502.03.II: “Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.” Without such an authorization in place, an examiner is unable to respond via email.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel, can be reached at telephone number (571) 270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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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) Form at https://www.uspto.gov/patents/uspto-automated-interview-request-air-form.
/JAMIE R KUCAB/Primary Examiner, Art Unit 3699
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