DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 14-19 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Scipioni et al. (USPAP 2008/0228637) in view of Mersky (USPAP 2013/0060686).
Re claim 14: Scipioni teaches a computer-implemented system for the secure management of digital funds comprising: a first value product, wherein the first value product is a physical card, wherein the physical card is associated with a first value product digital funds and a first value product package identifier (abstract; 0028, primary or secondary account);
a second value product, wherein the second value product is associated with a second value product digital funds, wherein the second value product digital funds are redeemable in one or more transactions (abstract; 0028, primary or secondary account);
and a specially programmed computer server, wherein the computer server functions to establish a user account in a database, for a user, via executing specific programming instructions to create the user account in an account database, wherein the user account is enabled by source code for the secure storage of value, wherein the specially programmed computer server can associate the first value product and the second value product with the user account, and wherein the association of the first value product with the user account allows the user to use a portion of the first value product digital funds in a first transaction and a remainder of the first value product digital funds in one or more subsequent transactions (0028, 0040).
Scipioni does not explicitly teach wherein the physical card is configured for a total redemption transaction and a partial redemption transaction, wherein the first value product package identifier, when interpreted in the total redemption transaction, wherein the total redemption transaction is a transaction which is not processed by the computer implemented system for the secure management of digital funds thereby requiring all of the first value product digital funds be redeemed in the total redemption transaction (first system that is the conventional system), and when interpreted in the partial redemption transaction, wherein the partial redemption transaction is another transaction which is processed by the computer-implemented system for the secure management of digital funds thereby allowing for portion of the first value product digital funds be redeemed in the partial redemption transaction (second system that is the SAFE account system).
However, by Applicant’s Own Admitted Prior Art (AOAPA), “historically, a reload card, when redeemed, would be required to load all of the funds associated with the reload card onto a single GPR card, i.e., redemption of a reload card with a value of $500 would require that the reload card’s $500 be entirely loaded onto a single GPR card.” (Specification: ¶ 0211). Furthermore, the paragraph continued thus, “As part of the present invention, via use of a SAFE account, the same $500 reload card may be used to “top off” or “replenish” multiple GPR cards, e.g., a single reload card/pack with a value of $500 can be used to reload one GPR card with $100 and another GPR card with $400.”
In other words, the SAFE account simply enables the “historical” reload card be used to reload multiple GPR cards. The invention does not prevent same SAFE account from being used like a traditional (“historical”) reload card, that when redeemed, all of the funds associated with the reload card be loaded onto a single GPR card (“redeem all or a portion”). AOAPA further establishes that this can be applicable to both physical or electronic cards (Specification: ¶¶ 0023, 0027).
Therefore, the first system that requires all of the first value product digital funds be redeemed in a single transaction, is considered conventional, old and well known as discussed by AOAPA.
Mersky teaches the concept of first value product package identifier, {when interpreted in a redemption transaction not processed by the computer-implemented system for the secure management of digital funds would require that all of the first value product digital funds be redeemed in a single transaction (AOAPA as discussed previously), but} when interpreted in a redemption transaction processed by the computer-implemented system for the secure management of digital funds, allows for a portion of the first value product digital funds be used in a single transaction (0108). Mersky’s system similarly does not prevent the use of the reload card in a traditional (“historical”) manner.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify Scipioni to include this feature as taught by Mersky for the obvious reason of enhancing the flexibility of the transaction process.
Re claims 15 and 16: Scipioni teaches transferring at least a portion of the first value product digital funds to the second value product; and transferring at least a portion of the first value product digital funds to a third party (0035, 0039, 0057, 0074-0076).
Re claim 18: Scipioni teaches associating a plurality of first value products and a plurality of second value products with the user account (0063).
Re claim 19: Scipioni teaches wherein the first value product digital funds can be transferred by the specially programmed computer server to satisfy a reload request, a bill pay request, or combinations thereof (0076).
Response to Arguments
Applicant's arguments with respect to the 35 U.S.C. 103 rejection have been fully considered but they are not persuasive.
Applicant argues that the Mersky reference fails to teach the “System Differential Element” as discussed in Applicant’s Remarks (pg. 10-12). In particular, Applicant asserts that Mersky does not teach a physical card configurable to require a first system to process a transaction request differently from a second system based upon receipt of the same transaction information by both the first and second systems, e.g., a second system which allows digital funds to be allocated over multiple transactions while the first system would require the value product’s digital funds to be totally redeemed in a single transaction.
Examiner respectfully disagrees. These limitations are interpreted in light of the specification as indicated in Applicant’s response dated 10/20/2023 (citing paragraph 0211, 0331-0332) (pages 8-9). This simple transforms/converts a “traditional” single use card into a multiple use card were necessary.
More importantly, by Applicant’s Own Admitted prior art, the first system is the “historical” reload card system that is configured for a total redemption transaction (old and conventional). The instant invention which is The SAFE account system (second system), allows for (what would have otherwise been a total redemption transaction obtainable using the conventional system) partial redemption if desired without necessarily preventing total redemption as well. The ability for partial redemption does not mean total redemption cannot be obtained. The SAFE account system does not prevent total redemption, rather, it allows for flexibility for both total redemption and partial redemption. Therefore, a “historical” reload card that would not allow for partial redemption under conventional system (first system), would be allowed for partial redemption (or even total redemption) under the SAFE system (second system). This concept is explicitly taught by Mersky (0108).
With respect to the physical card in the instant claims versus the virtual debit card in Mersky (non-analogous art), it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the Mersky reference is reasonably pertinent to the particular problem with which the inventor was concerned.
Further note In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958) where providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art, MPEP 2144.04 (III); as well as Leapfrog Enterprises Inc. v. Fisher-Price Inc., 485 F.3d 1157, 1162, 82 USPQ2d 1687, 1692 (Fed. Cir. 2007) and Muniauction, Inc. V. Thomson Corp., 532 F.3d 1318, 87 USPQ2d1350 (Fed. Cir. 2008), where the application of modern electronics to the prior art was deemed obvious. Thus, considering the level of ordinary skill in the art in automating similar processes, claimed invention would also have been obvious.
Conclusion
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLABODE AKINTOLA whose telephone number is (571)272-3629. The examiner can normally be reached Mon-Fri 8:30a-6:00p.
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/OLABODE AKINTOLA/Primary Examiner, Art Unit 3691