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 .
DETAILED ACTION
This Office Action is in response to Applicant’s communication filed on July 24, 2025 for the patent application 19/218,109.
Status of Claims
Claims 1 – 20 are pending in the application.
Claim 12 is currently amended in the application.
Claims 1 – 11 and 13 - 20 are previously amended in the application.
Claims 1 – 20 are examined in the application.
Information Disclosure Statement
The Information Disclosure Statements (IDS) submitted on July 31, 2025 and July 31, 2025 were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, these Information Disclosure Statements are being considered by the Examiner.
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 – 20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1 - 20 are either directed to a method or system or computer readable medium, which are statutory categories of invention. (Step 1: YES).
The Examiner has identified method claim 13 as the claim that represents the claimed invention for analysis and is similar to computer readable claims 1 and 20. Claim 13 recites the limitations of:
( A ) obtaining, using at least one processor, decomposed message data comprising a first value of a parameter of an exchange of data involving a first device and a second device;
( B ) transmitting, to the second device using the at least one processor, a notification that includes the first parameter value, and receiving, from the second device using the at least one processor, a response to the notification that includes a modification to the first parameter value of the data exchange by the second device;
( C ) determining, using the at least one processor, a second value of the parameter of the data exchange based on the modification to first parameter value, and performing operations, using the at least one processor, that reconcile the response with the decomposed message data based on at least the modification to first parameter value and the second parameter value; and
( D ) transmit, to the first device using the at least one processor, outcome data associated with an outcome of the reconciliation of the response with the decomposed message data, the outcome data being transmitted across a secure channel of communications established with a first application program executed at the first device.
These limitations without the bolded limitations above, cover performance of the limitations as certain methods of organizing human activity under their broadest reasonable interpretation.
More specifically, these limitations cover performance of the limitations as a fundamental economic practice.
In summary, if claim 13 limitations, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. Claims 1 and 20 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims are abstract).
The use of the at least one processor or any of the bolded limitations in claim 1 are just applying generic computer components to the recited abstract limitations. Similar arguments apply to claims 1 and 20.
Therefore, the above mentioned judicial exception is not integrated into a practical application by merely applying generic computer components (bolded elements).
Furthermore, the “obtaining” and “transmitting” steps are recited at a high level of generality and amounts to mere data gathering/transmitting, which are forms of insignificant extra-solution activity (See MPEP 2106.05(g): CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011); and OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)).
In addition, supported by specification, the computer hardware 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., see MPEP 2106.05(f), where applying a computer or using a computer is not indicative of a practical application).
Claim 13, limitation ( A ) – ( D ) above in Applicant’s specification para [0006], which discloses “Further, in some examples, a tangible, non-transitory computer-readable medium storing instructions that, when executed by at least one processor, cause the at least one processor to perform a method that includes obtaining elements of decomposed message data. The elements of decomposed message data includes a first value of a parameter of an exchange of data involving a first counterparty and a second counterparty, and the elements of decomposed message data characterize a real-time payment requested from the second counterparty by the first counterparty. The method includes transmitting a notification associated with the data exchange to a first device operable by the second counterparty and receiving a response to the notification from the first device. The response includes a second value of the parameter of the data exchange. The method includes, based on at least the first and second parameter values, performing operations that reconcile the response with the elements of decomposed message data, and transmitting data indicative of an outcome of the reconciliation to a second device operable by the first counterparty. The second device is configured to present at least a portion of the outcome data within a digital interface.“. Similar arguments apply to claims 1 and 20.
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.
Therefore, Claims 1, 13 and 20 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 1 , 13 and 20 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 elements (bolded elements above) amount to no more than mere instructions to apply the abstract idea using generic computer components. In conclusion, merely "applying" the exception using generic computer components cannot provide an inventive concept. Therefore, the claims 1, 13, and 20 are not patent eligible under 35 USC 101. (Step 2B: NO. The claims do not provide significantly more).
Dependent Claims
Dependent claims 2 – 12 and 14 - 19 are also rejected under 35 U.S.C. 101. Dependent claims 2 – 12 and 14 - 19 are further define the abstract idea or further define the extra-solution activities that are present in independent claim 13 thus abstract idea correspond to certain methods of organizing human activity as presented above. Claims 2 – 12 and 14 - 19 clearly further define the abstract idea as stated above and further define extra-solution activities such as presenting data and transmitting/receiving data.
Furthermore, dependent claims 2 – 12 and 14 - 19 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.
Regarding claims 2 and 14, these claims merely recite additional steps that amount to no more than insignificant extra-solution activity. Specifically, claim 2 states “wherein the at least one processor is further configured to execute the instructions to perform operations that establish the secure channel of communications with a programmatic interface of the executed first application program.”. These steps amount to no more than mere data gathering/analysis, which is a form of insignificant extra- solution activity (See M PEP 2016.05(g): CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011); and GIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)). Such limitations do not integrate the abstract idea into a practical application, or amount to significantly than the abstract idea, because the courts have found the concept of data gathering to be well-understood, routine, and conventional activity (See MPEP 2106.05(d): GIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, (Fed. Cir. 2014)). Similar arguments can be made for claim 14.
Regarding claims 3 and 15, these claims merely recite, "the response comprises elements of response data disposed within corresponding message fields; and the at least one processor is further configured to execute the instructions to obtain, from the memory, mapping data associated with message fields of the response; and based on the mapping data, perform operations that obtain at least the modification to first parameter value from the message fields of the response.“. These limitation merely recites storing data in a server which amounts to no more than gathering/storing data which is a form of insignificant extra-solution activity (See MPEP 2106.0S(g)(3)(iii): GIP Technologies, 788 F.3d at 1363). This does not integrate the abstract idea into a practical application because it has been determined, by the courts, that the concept of storing data is well-understood, routine, and conventional activity (See MPEP 2106.0S(d)(II): Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015)). Similar arguments can be made for claim 15.
Regarding claim 4, this claim merely provide further detail regarding the processing the message, recited in claim 1. Merely stating, “the message fields of the response are structured in accordance with a standardized data-exchange protocol; and the mapping data is associated with the standardized data-exchange protocol.”. This does not integrate the abstract idea into a practical application because it does not impose any meaningful limitation on practicing the abstract idea.
Regarding claims 5 and 16, these claims merely recite, "the executed first application program causes the first device to present at least a portion of the outcome data within a first digital interface; and the notification causes a second application program executed at the second device to present at least the first parameter value within a second digital interface.“. These limitation merely recites storing data in a server which amounts to no more than gathering/storing data which is a form of insignificant extra-solution activity (See MPEP 2106.0S(g)(3)(iii): GIP Technologies, 788 F.3d at 1363). This does not integrate the abstract idea into a practical application because it has been determined, by the courts, that the concept of storing data is well-understood, routine, and conventional activity (See MPEP 2106.0S(d)(II): Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015)). Similar arguments can be made for claim 16.
Regarding claim 6, this claim merely provide further detail regarding the processing the execution of data, recited in claims 1. Merely stating “wherein the response to the notification comprises exception data and causal data, the exception data characterizing the modification to the first parameter value, and the causal data characterizing a rationale for the modification.". This does not integrate the abstract idea into a practical application because it does not impose any meaningful limitation on practicing the abstract idea.
Regarding claim 7, this claim merely add further description to the process of “the outcome data comprises at least a portion of the causal data; and the executed first application program causes the first device to present, within a digital interface, a portion of the outcome data that characterizes the modification to the first parameter value and the portion of the causal data.” This amount to no more than mere data gathering/outputting as described in reference to claims 1, 10 and 16 (see analysis above). Merely describing the comparing the new claim information does not integrate the abstract idea into a practical application, or amount to significantly more than the judicial exception, because it does not impose any meaningful limitations on practicing the abstract idea.
Regarding claim 8, this claim merely add further description to the process of “wherein the at least one processor is further configured to execute the instructions to: modify the first parameter value in accordance with the exception data; and determine the second parameter value of the data exchange based on the modified first parameter value.”, which amounts to no more than gathering/storing data which is a form of insignificant extra-solution activity (See MPEP 2106.0S(g)(3)(iii): GIP Technologies, 788 F.3d at 1363). This does not integrate the abstract idea into a practical application because it has been determined, by the courts, that the concept of storing data is well-understood, routine, and conventional activity (See MPEP 2106.0S(d)(II): Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015)).
Regarding claims 9 and 18, these claims merely recite, "the first device is operable by a first counterparty; the second device is operable by a second counterparty; and the data exchange is initiated between the first device operable by the first counterparty and the second device operable by the second counterparty.“. These limitation merely recites storing data in a server which amounts to no more than gathering/storing data which is a form of insignificant extra-solution activity (See MPEP 2106.0S(g)(3)(iii): GIP Technologies, 788 F.3d at 1363). This does not integrate the abstract idea into a practical application because it has been determined, by the courts, that the concept of storing data is well-understood, routine, and conventional activity (See MPEP 2106.0S(d)(II): Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015)). Similar arguments can be made for claim 18.
Regarding claim 10, this claim merely provide further detail regarding the processing the counterparty data, recited in claim 1. Merely stating, “obtain counterparty data associated with the first counterparty from the memory; modify the counterparty data in accordance with the outcome data, the modification to the counterparty data characterizing an impact of the modification to the first parameter value on the counterparty data; and transmit, via the communications interface, information comprising the modification to the counterparty data to the first device, the executed first application program causes the first device to present, within a digital interface, a graphical representation of the modification to the counterparty data.”. This does not integrate the abstract idea into a practical application because it does not impose any meaningful limitation on practicing the abstract idea.
Regarding claims 11 and 19, these claims merely recite, "wherein the at least one processor is further configured to execute the instructions to perform operations that execute the data exchange in accordance with at least the second parameter value.“. These limitation merely recites storing data in a server which amounts to no more than gathering/storing data which is a form of insignificant extra-solution activity (See MPEP 2106.0S(g)(3)(iii): GIP Technologies, 788 F.3d at 1363). This does not integrate the abstract idea into a practical application because it has been determined, by the courts, that the concept of storing data is well-understood, routine, and conventional activity (See MPEP 2106.0S(d)(II): Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015)). Similar arguments can be made for claim 19.
Regarding claim 12, this claim merely provide further detail regarding the processing the message, recited in claim 1. Merely stating “the decomposed message data characterizes a real-time payment requested from the second counterparty by the first counterparty; and the at least one processor is further configured to execute the instructions to determine the first parameter value based on an application of a trained machine learning or artificial intelligence process to an input dataset.". This does not integrate the abstract idea into a practical application because it does not impose any meaningful limitation on practicing the abstract idea.
As a result, such limitations do not overcome the requirements as described above. Therefore, claims 2 – 12 and 14 - 19 are directed to an abstract idea. Thus, claims 1 - 20 are not patent eligible.
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 are provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1 -2, 4 - 12 and 14 – 25 of Application Number 17/554,146,758, now Patents Number 12,333,518, (Pat. 518’). Although the conflicting claims are not identical, they are not patentably distinct from each other because the instant claims recite a computer-implemented method, comprising: obtaining, using at least one processor, decomposed message data comprising a first value of a parameter of an exchange of data involving a first device and a second device; transmitting, to the second device using the at least one processor, a notification that includes the first parameter value, and receiving, from the second device using the at least one processor, a response to the notification that includes a modification to the first parameter value of the data exchange by the second device; determining, using the at least one processor, a second value of the parameter of the data exchange based on the modification to first parameter value, and performing operations, using the at least one processor, that reconcile the response with the decomposed message data based on at least the modification to first parameter value and the second parameter value; and transmit, to the first device using the at least one processor, outcome data associated with an outcome of the reconciliation of the response with the decomposed message data, the outcome data being transmitted across a secure channel of communications established with a first application program executed at the first device. The patent claims are narrower than this broad claim, but they include similar limitations. Specifically, claims 1 -2, 4 - 12 and 14 – 25 of (Pat. 518’) also pertain to obtaining elements of decomposed message data using at least one processor, the elements of decomposed message data comprising a first value of a parameter of an exchange of data involving a first device operable by a first counterparty and a second device operable by second counterparty, and the elements of decomposed message data characterizing a real- time payment requested from the second counterparty by the first counterparty; using the at least one processor, transmitting, across a network, a notification associated with the data exchange to the second a first device operable by the second counterparty, the notification comprising at least the first parameter value, and the notification causing a first application program executed at the first device to present at least the first parameter value within a first digital interface; using the at least one processor, receiving a response to the notification from the second first device across the network, the response comprising message fields that include a modification to the first parameter value, and the message fields of the response being structured in accordance with a standardized data-exchange protocol; obtaining, using the at least one processor, mapping data associated with message fields of the response, and based on the mapping data, performing operations, using the at least one processor, that obtain exception data and causal data from the message fields of the response, the exception data characterizing the modification to the first parameter value of the data exchange by the second first device, and the causal data characterizing a rationale for the modification; modifying, using the at least one processor, the first parameter value in accordance with the exception data, determining, using the at least one processor, a second value of the parameter of the data exchange based on the at least the modification to the modified first parameter value, and performing operations, using the at least one processor, that execute the modified data exchange in accordance with at least the second parameter value, and this does not make the claims of the present application patentably distinct over the claims of the above mentioned patents. Therefore it would have been obvious to a person of ordinary skill in the art at the time of applicant's invention to conceive of and include obtaining, using at least one processor, decomposed message data comprising a first value of a parameter of an exchange of data involving a first device and a second device; transmitting, to the second device using the at least one processor, a notification that includes the first parameter value, and receiving, from the second device using the at least one processor, a response to the notification that includes a modification to the first parameter value of the data exchange by the second device; determining, using the at least one processor, a second value of the parameter of the data exchange based on the modification to first parameter value, and performing operations, using the at least one processor, that reconcile the response with the decomposed message data based on at least the modification to first parameter value and the second parameter value.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN H. HOLLY whose telephone number is (571)270-3461. The examiner can normally be reached on MON. - FRI 10 AM - 8 PM.
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/John H. Holly/Primary Examiner, Art Unit 3696
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