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
This action is in reply to the application filed on August 20, 2026.
Claims 7, 15, and 20 were cancelled.
Claims 1, 4-5, 11, 13, 16-17 and 19 were amended.
Claim(s) 1-6, 8-14, and 16-19 are currently pending and have been examined.
This action is made Final.
Response to Arguments
Applicant argued that Examiner’s 101 rejection was improper because the pending claims provide a technical solution to a technical problem. Examiner disagrees. Applicant asserts that the claimed invention solves a technical problem by reducing the assessment of substantial volumes of network data through a filtration process described in the specification at paragraph 15. However, none of the claims describe the filtering of data. The pending claims do not provide a technical solution to a technical problem because the purported technical solution is not found in the pending claims. Therefore, Examiner finds Applicant’s argument non-persuasive.
Applicant argued that Examiner’s 101 rejection was improper because the pending claims are analogous to McRO. Examiner disagrees. Unlike the patent eligible subject matter in McRO, Applicant’s claimed invention does not impart any new functionality upon a computer or computer network, which was the basis for finding patent eligibility in McRO. Therefore, Examiner finds Applicant’s argument non-persuasive.
Applicant argued that Examiner’s 101 rejection was improper because the human mind is not equipped to perform the recited steps of Claim 1 or any other recited claim. Examiner disagrees. Evaluations are recognized as a concept performed in the human mind. The human mind is equipped to identify a recommendation based on a rule because it is a form of evaluation. The remaining steps can be performed by a human with the aid of a computer as a tool. The use of the computer as a tool does not transform the abstract mental process into patent eligible subject matter. Therefore, Examiner finds Applicant’s argument non-persuasive.
Applicant argued that Examiner’s 101 rejection was improper because the pending claims recite more than limitations at a high level of generality. Examiner disagrees. The specificity referenced by Applicant pertains to the abstract idea and not the additional elements that accompany it. The specificity of the abstract idea recited in the claims does not make it any less abstract. The additional element of the claimed invention, specifically the service platform computing device, was recited at a high level of generality and is not indicative of patent eligible subject matter when considered both individually or in combination with the recited abstract idea. Therefore, Examiner finds Applicant’s argument non-persuasive.
Applicant argued that Examiner’s 101 rejection was improper because the pending claims represent a specific environment and a specific use of operations integrated into that environment. Examiner disagrees. As previously mentioned, the specificity of the environment and the operations are features of the abstract idea that do not transform the abstract idea into patent eligible subject matter. An abstract idea does not become any less abstract due to its specificity. Therefore, Examiner finds Applicant’s argument non-persuasive.
In light of Applicant’s arguments and amendments, Examiner withdraws the rejection of claims 1-6, 8-14, and 16-19 under 35 USC 103.
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.
Claim(s) 1-6, 8-14, and 16-19 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim(s) 1-6, 8-14, and 16-19 are directed to a system, method, or product, which are/is one of the statutory categories of invention. (Step 1: YES).
The Examiner has identified independent system claim 11 as the claim that represents the claimed invention for analysis and is similar to independent method Claim 1 and product Claim 19. Claim 11 recites the following limitations:
[a system for use in identifying recommendations, based on network benchmarks, the system comprising a processing network; wherein the processing network includes a service platform computing device, which is configured, by executable instructions, to:] access data specific to a participant, the data representative of multiple transactions, the participant including an issuer of accounts funding the multiple transactions, the multiple transactions including millions of transactions processed through the processing network;
calculate a first metric based on the accessed data specific to a category of transactions defined by a merchant category code (MCC), the first metric indicative of a rate of the transaction represented by the accessed data;
solicit readiness information from the participant, the readiness information indicative of a readiness of the participant to implement technology to adapt an authentication system and/or an authorization system of the issuer;
receive the readiness information from a user of the participant;
identify a recommendation based on the readiness information relative to a technology included in the recommendation and a trigger rule, which defines a relationship between at least one benchmark and the first metric; and
display the recommendation to the user associated with the participant.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as a mental process because the limitations recite concepts performed in the human mind, including an observation, evaluation, judgment, or opinion. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a concept performed in the human mind, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. The service platform computing device in Claim 11 is 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. Claim(s) 1 and 19 are also abstract for similar reasons. (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 service platform computing device. 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 to 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(s) 1, 11, and 19 are 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 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(s) 1, 11, and 19 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims 2-6, 8-10, 12-14, and 16-18 further define the abstract idea that is present in their respective independent claim(s) 1 and 11 and thus correspond to mental processes and hence are abstract for the reasons presented above. Dependent claims 2-6, 8-10, 12-14, and 16-18 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, dependent claims 2-6, 8-10, 12-14, and 16-18 are directed to an abstract idea. Thus, claim(s) 1-6, 8-14, and 16-19 are not patent-eligible.
Examiner’s Statement of Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter. In light of Applicant's remarks, Examiner agrees that the cited reference(s) of Kumar (US 2023/0043286), Kohli (US 2020/0234268), and Villacorta (US 2012/0296848) do not disclose, teach, or suggest the claimed invention. Kumar teaches methods and systems for dynamic spend policy optimization. Kohli teaches systems and methods for recommending financial instruments. Villacorta teaches a system and method for managing credit risk for investment portfolios. However, the prior art of record fails to anticipate or render obvious the claimed invention. Specifically, the prior art of record fails to anticipate or render obvious limitations for “soliciting readiness information from the participant, the readiness information indicative of a readiness of the participant to implement technology to adapt an authentication system and/or an authorization system of the issuer; receiving the readiness information from a user of the participant; and identifying, by the service platform computing device, a recommendation based on the readiness information relative to a technology included in the recommendation and a trigger rule, which defines a relationship between at least one benchmark and the first metric”, as described by the allowed claims. For these reasons, claims 1-6, 8-14, and 16-19 are deemed to be allowable over the prior art of record.
Conclusion
Pertinent Art
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure. Jia (US 2020/0134628) discloses machine learning system for taking control actions.
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 of 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 JOHN O PRESTON whose telephone number is (571)270-3918. The examiner can normally be reached 12:00 pm - 8:00 pm.
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/JOHN O PRESTON/Examiner, Art Unit 3693
October 9, 2026
/ELIZABETH H ROSEN/Primary Examiner, Art Unit 3693
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