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 .
Response to Arguments
Applicant's arguments filed 28 January 2026 with respect to the 101 rejection have been fully considered but they are not persuasive. Applicant argues on pages 7-8 that the claim limitation containing the notification feature of a missed payment is directed to a new and useful function, thereby integrating the abstract idea into a practical application. The Examiner disagrees because providing an electronic notification regarding a missed payment is not a new and useful function even considering having a secondary or backup payer, which is extremely common in automatic bill pay or payment arrangement that have optional secondary payment methods if the primary payment method fails. The arrangement of primary and secondary payers responsible for a payment amount is legal arrangement that is part of the abstract idea of transferring a debt obligation and the notification element of the missed or failed payment does not integrate the abstract idea because it is considered extra-solution activity to the identified concept. Providing notifications is not new or unknown and the Applicant is not alleging notification of a missed/failed payment was a concept invented by the Applicant and the notification means are using data/instructions that are transmitted or received over a network utilizing several well-known transfer protocols and using computer components that are known in the art, see specification [0061]-[0063]. Applicant does not contend similar claim limitations are present in claims 1 and 15, therefore no technical solution is argued in those claims. The technical problem and technical solution argued by the Applicant on pages 8-9 amounts to a business problem (a user unable or unwilling to meet the terms of an agreement) with a business solution (a secondary user previously agreed to the terms of the legal agreement similar to co-signing a loan).
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 1-4 and 7-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In the instant case, claim 1 directed to a “a computer implemented method of securely transferring at least one payment amount associated with a payment plan set for a first user to a second user”. Claim 1 is directed to the abstract idea of “transferring a debt obligation” which is grouped under “organizing human activity… fundamental economic practice, a legal interaction (transferring a debt obligation is a legal action) and a commercial interaction (transferring a debt obligation is a sales activity or behavior and a business relation)” in prong one of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance). Claim 1 recites receiving a transfer request from a first user device, associated with the first user, to transfer the at least one payment amount to the second user, wherein the transfer request comprises a payment plan account identifier associated with the second user; pushing a confirmation request to a second user , associated with the second user, to confirm acceptance of a transfer of the at least one payment amount, wherein the confirmation request comprises an identifier associated with the first user; receiving a confirmation, from the second user, of the acceptance of the transfer of the at least one payment amount; updating a payment status associated with the payment plan to a transferred status. Accordingly, the claim recites an abstract idea (See 2019 Revised Patent Subject Matter Eligibility Guidance). This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance), the additional elements of the claim such as an issuer system, a first user device, a second user device, and an issuer-provided application programming interface (API) represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use (MPEP 2106.05(f)&(h)). The additional elements of sending an indication of the transferred status of the payment plan, sending information relating to the at least one payment amount associated with the payment plan based on the transferred status are extra solution activity similar to notification of the completed method and do not integrate the abstract idea into a practical application, see MPEP 2106.05(g). Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. implement) the acts of transferring a debt obligation.
When analyzed under step 2B (See 2019 Revised Patent Subject Matter Eligibility Guidance), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. The additional elements of sending an indication of the transferred status of the payment plan, sending information relating to the at least one payment amount associated with the payment plan based on the transferred status are extra solution activity similar to notification of the completed method and do not integrate the abstract idea into a practical application, see MPEP 2106.05(g). Viewed as a whole, the combination of elements recited in the claims merely describe the concept of transferring a debt obligation using computer technology (e.g. an issuer system and a device). Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Claim 7 recites substantially similar claim limitations and the above reasoning applies. The claim limitation “transferring the at least one payment amount to the second user” is an element of the abstract idea of transferring a debt obligation. As to the additional claim 7 elements of “sending based on receiving the indication of the approval of the payment plan, a request…”, “assigning an active status to the payment plan,” and “receiving an alert indicative of a failure to satisfy the at least one repayment obligation…” are extra solution activity (MPEP 2106.05(g)) because the limitations do not contribute to the abstract idea of the independent claim 7 and sending a request, receiving a credential, and sending a credential are considered post-solution activity not integrated into the claim as a whole (see MPEP 2106.05(g) “An example of pre-solution activity is a step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered information by a series of steps in order to detect whether the transactions were fraudulent. An example of post-solution activity is an element that is not integrated into the claim as a whole, e.g., a printer that is used to output a report of fraudulent transactions, which is recited in a claim to a computer programmed to analyze and manipulate information about credit card transactions in order to detect whether the transactions were fraudulent.”)
Claim 14 recites substantially similar claim limitations and the above reasoning applies. As to the additional claim 14 elements of “sending based on receiving the confirmation from the second user, a request…”, “receiving the first credential…” and “sending the first credential…” are extra solution activity (MPEP 2106.05(g)) because the limitations do not contribute to the abstract idea of the independent claim 14 and sending a request, receiving a credential, and sending a credential are considered post-solution activity not integrated into the claim as a whole (see MPEP 2106.05(g) “An example of pre-solution activity is a step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered information by a series of steps in order to detect whether the transactions were fraudulent. An example of post-solution activity is an element that is not integrated into the claim as a whole, e.g., a printer that is used to output a report of fraudulent transactions, which is recited in a claim to a computer programmed to analyze and manipulate information about credit card transactions in order to detect whether the transactions were fraudulent.”)
Dependent claims 2-4, 8-13, and 15-20 do not remedy the deficiencies of the independent claims and are rejected accordingly. The dependent claims further refine the abstract idea of the independent claims and do not integrate the abstract idea into a practical application. In this case, all claims have been reviewed and are found to be substantially similar and linked to the same abstract idea (see Content Extraction and Transmission LLC v. Wells Fargo (Fed. Cir. 2014)).
Claim Interpretation
In the interest of compact prosecution, Applicant should be aware that there is claim language that does not serve to differentiate the claims from the prior art and/or or provide an additional element that can be a consideration for eligibility1. See MPEP 2103(c).
Intended Use
Intended use language is generally not given patentable weight. See MPEP 2114(II) ("A claim containing a 'recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus’ if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).”); see also MPEP 2103(C). Examples of claim limitations that are often found to precede intended use include “adapted to,” “capable of,” “sufficient to,” “whereby,” and “for.”
The following limitations include intended use limitations:
Claim 1 recites “a transfer request …to transfer the at least one payment amount…”, “a confirmation request …to confirm acceptance …”.
Claim 7 recites “pushing an approval request…to secure an approval…”
Claim 14 recites “pushing an acceptance request …to secure an acceptance…”
Claim 20 recites “pushing an acceptance request…to secure an acceptance…”
Not Positively Recited
The following limitations are not positively recited and, therefore, do not differentiate the claims from the prior art:
Claim 14 recites “to generate a payment plan identifier…”
Claim 17 recites “to generate a second credential…”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Fortin US 2018/0174152 Pinto US 2023/0289768 Brock US 2021/0133868
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 DAVID P SHARVIN whose telephone number is (571)272-9863. The examiner can normally be reached M-F 9 am - 5 pm EST.
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/DAVID P SHARVIN/Primary Examiner, Art Unit 3692
1 See MPEP 2106.04(d)(2) (“Examiners should keep in mind that in order to qualify as a "treatment" or "prophylaxis" limitation for purposes of this consideration, the claim limitation in question must affirmatively recite an action that effects a particular treatment or prophylaxis for a disease or medical condition. An example of such a limitation is a step of "administering amazonic acid to a patient" or a step of "administering a course of plasmapheresis to a patient." If the limitation does not actually provide a treatment or prophylaxis, e.g., it is merely an intended use of the claimed invention or a field of use limitation, then it cannot integrate a judicial exception under the "treatment or prophylaxis" consideration. For example, a step of "prescribing a topical steroid to a patient with eczema" is not a positive limitation because it does not require that the steroid actually be used by or on the patient, and a recitation that a claimed product is a "pharmaceutical composition" or that a "feed dispenser is operable to dispense a mineral supplement" are not affirmative limitations because they are merely indicating how the claimed invention might be used.”)