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 action is in response to the election filed 7/16/2025. Applicant's election with traverse is acknowledged. For Species A, the traversal is on the ground(s) that Species A-1 and A-2 are not mutually exclusive. This is not found persuasive because in Species A-1 (claims 15-18), the “processor” and “network interface” are separate components and the request is received by “network interface” while the rest of steps are performed by the “processor” but in Species A-2 (claims 19-20) all the steps including the request are received by the “processor”. The requirement for Species A is still deemed proper and is therefore made FINAL. The examiner has reconsidered applicant’s traversals for Species B and C, and the restriction is hereby removed. Accordingly, claims 1-14 and 19-20 are pending for examination.
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 1-14 and 19-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 1 recites the abstract idea of “processing request to perform transaction to transfer funds from a payor account and comparing processing cost”, which is grouped under “Certain Methods of Organizing Human Activity” such as “fundamental economic principles or practices” (mitigating risk; managing financial information or transactions), “commercial or legal interactions” (sale activities or behaviors; providing services to facilitate transactions). (MPEP 2016.04(a)). Specifically, claim 1 recites “receiving a request, from a …., to perform a transaction to transfer funds from a payor account over a first…, …being associated with a …corresponding with an element of the ….”, “determining whether a …. is available for processing the request based upon a determination that the …. meets a requirement of the transaction, the … having a least a reduced processing cost relative to the …”, “upon determining that the … is available, converting the request to a request for processing using a …. different from the … and processing the request using the …”. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP 2106.04II), the additional elements of claim 1 such as “wallet application”, “first payment rail”, “second payment rail” and” payment network” 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 technological environment or field of use. Additionally, the claimed “converting the request … and processing the request using the second payment rail” limitations described only the result (processing using a second payment rail) but not how the conversion is accomplished. Therefore, these functionalities are no more than “apply it” (MPEP 2106.05(f)(1)) and do not provide a practical application. Further, as the additional elements do not provide a practical application, they do not improve computer functionality and do not improve another technology or technical field.
When analyzed under step 2B (MPEP 2106.04II), because the additional elements do no more than 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, they do not provide an improvement to computer functionality, or an improvement to another technology or technical field and, therefore, do not amount to significantly more than the judicial exception itself (MPEP 2106.05(I)(A)(f)&(h)).
Hence, claim 1 is not patent eligible.
Claim 19 is also directed to the abstract idea of “processing request to perform transaction to transfer funds from a payor account and comparing processing cost”, which is grouped under “Certain Methods of Organizing Human Activity” such as “fundamental economic principles or practices” (mitigating risk; managing financial information or transactions), “commercial or legal interactions” (sale activities or behaviors; providing services to facilitate transactions). (MPEP 2016.04(a)).
As in the case of claim 1, the exception is not integrated into a practical application. Claim 19 includes the additional elements such as “non-transitory computer readable medium”, “processor”, “wallet application”, “first payment rail”, “second payment rail” 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 technological environment or field of use. Additionally, the claimed “converting the request … and processing the request using the second payment rail” limitations described only the result (processing using a second payment rail) but not how the conversion is accomplished. Therefore, these functionalities are no more than “apply it” (MPEP 2106.05(f)(1)) and do not provide a practical application. Further, as the additional elements do not provide a practical application, they do not improve computer functionality and do not improve another technology or technical field.
When analyzed under step 2B (MPEP 2106.04II), because the additional elements do no more than 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, they do not provide an improvement to computer functionality, or an improvement to another technology or technical field and, therefore, do not amount to significantly more than the judicial exception itself (MPEP 2106.05(I)(A)(f)&(h)).
Hence, claim 19 is not patent eligible.
Depending claims 2-14 and 20 further recite “wherein the …includes an …and wherein the requirement of the transaction includes a timing requirement (claim 2)”, “wherein the reduced processing cost includes financial …fees (claim 3)”, “wherein the request includes a request to process the transaction using …. (claim 4)”, “wherein the …. Is associated with a ….account associated with the payor account (claim 5)”, “wherein determining whether the …is available for processing the request comprises determining identification information for account holders of the … account (claim 6)”, “wherein determining whether the … is available for processing the request comprising predicting available funds of the …account (claim 7)”, “wherein detecting likely available funds includes predicting at least one of a subsequent … date or a subsequent … amount (claim 8)”, “wherein determining whether the …is available for processing the request comprising predicting whether the request is involves a product that is likely to be returned or disputed by a payor associated with the payor account (claim 9)”, “providing …request to request approval from a payor associated with the payor account to use the …. (claim 10)”, “requesting approval from a payee to use the … and upon receiving approval from the payee, process the request using the … (claim 11)”, “providing a reward to the payor subsequent to using the … to process the request (claim 12)”, “registering a … with the payor account and recoding a payor account preference for one of the … and at least the … (claim 13)”, “wherein the request is received from a … (claim 14)”, “the request includes a request to process the transaction using a … for accessing a …account associated with the payor account; determining whether the … is available for processing the request comprises: determining identification information for account holders of the … account and predicting available funds of the … account (claim 20)” which is grouped under “Certain Methods of Organizing Human Activity” such as “fundamental economic principles or practices” (mitigating risk; managing financial information or transactions), “commercial or legal interactions” (sale activities or behaviors; providing services to facilitate transactions). (MPEP 2016.04(a)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP 2106.04II), the additional elements of claims 2-14 and 20, such as “second payment rail (claims 2, 6, 7, 9, 10, 11, 12, 13), “automated clearing house (ACH) (claim 2)”, “network (claim 3)”, “debit card system payment rail (claims 4, 5, 20)”, “direct deposit (claims 5, 6, 7, 8, 20)”, “user interface (claim 10)”, “wallet (claims 13, 14)”, “first payment rail (claim 13)” 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 technological environment or field of use.
When analyzed under step 2B (MPEP 2106.04II), because the additional elements do no more than 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, they do not provide an improvement to computer functionality, or an improvement to another technology or technical field and, therefore, do not amount to significantly more than the judicial exception itself (MPEP 2106.05(I)(A)(f)&(h)).
Hence, depending claims 2-14 and 20 are not patent eligible.
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-2, 4, 10-14 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Castrechini et al. (US 2014/0351147 A1) in view of Ramanathan et al. (US 2020/0380501 A1).
As per Claims 1, 19
Castrechini (‘147) discloses
receiving a request to perform a transaction to transfer funds from a payor account over a first payment rail, see at least paragraph 0100 (a payment method selection may be obtained from the customer), paragraph 0101 (the selected payment method is a virtual wallet; a virtual wallet may include a plurality of payment methods),
the first payment rail being associated with a payment network corresponding with an element of the wallet application, see at least paragraph 0100 (a payment method selection may be obtained from the customer), paragraph 0101 (the selected payment method is a virtual wallet; a virtual wallet may include a plurality of payment methods)
determining whether a second payment rail is available for processing the request based upon a determination that the second payment rail meets a requirement of the transaction, paragraph 0009 (available payment methods can be determined based on characteristics of the transaction; order can be determined based on transaction costs associated with the available payment methods), paragraph 0097 (different payment methods may be available depending on transaction characteristics)
the second payment rail having at least a reduced processing cost relative to the first payment rail, see at least paragraph 0100 (transaction costs associated with the ACH payment may have a lower cost than transaction costs associated with a credit card payment)
upon determining that the second payment rail is available, converting the request to a request for processing using a second payment rail different from the first payment rail, and processing the request using the second payment rail, see at least Fig 6 (obtain payment method selection from customer -> more preferable payment method available? [Wingdings font/0xE0] yes [Wingdings font/0xE0] [Wingdings font/0xE0] obtain updated payment method selection), paragraph 0009 (available payment methods can be determined based on characteristics of the transaction; order can be determined based on transaction costs associated with the available payment methods), paragraph 0100 (transaction costs associated with the ACH payment may have a lower cost than transaction costs associated with a credit card payment)
Castrechini (‘147) discloses receiving a request to perform a transaction to transfer funds from a payor account over a first payment rail, see at least paragraph 0100 (a payment method selection may be obtained from the customer), paragraph 0101 (the selected payment method is a virtual wallet; a virtual wallet may include a plurality of payment methods), but fails to explicitly disclose the request is received from a wallet application. Ramanathan (‘501) teaches receive transaction request from a wallet application, see at least paragraph 0024 (payment request client application may be a mobile wallet application configured to allow the user to make payments from accounts), paragraph 0027 (mobile wallet users associated with the payer). Both Castrechini and Ramanathan are directed toward facilitating a payment. Therefore, the examiner asserts that it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Castrechini’ s invention to include receive transaction request from a wallet application. One would have been motivated to do so for the benefit of speeding up transaction process.
As per Claim 2
Castrechini (‘147) discloses wherein the second payment rail includes an automated clearing house (ACH) system, see at least paragraph 0100 (transaction costs associated with the ACH payment may have a lower cost than transaction costs associated with a credit card payment), paragraph 0009 (available payment methods can be determined based on characteristics of the transaction; order can be determined based on transaction costs associated with the available payment methods),
Castrechini (‘147) fails to explicitly disclose wherein the requirement of the transaction includes a timing requirement. Ramanathan (‘501) teaches requirement for transaction includes a timing requirement, see at least paragraph 0063 (payment request may also be configurable to include an expiration data for the payment, such that the gift card is invalidated after a specific period of time e.g. six months). Both Castrechini and Ramanathan are directed toward facilitating a payment. Therefore, the examiner asserts that it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Castrechini’ s invention to include requirement for transaction includes a timing requirement. One would have been motivated to do so for the benefit of reducing risk.
As per Claim 4
Castrechini (‘147) discloses wherein the request includes a request to process the transaction using a debit card system payment rail, see at least paragraph 0100 (a payment method selection may be obtained from the customer), paragraph 0080 (payment method utilized by the customer e.g. a debit card number)
As per Claim 10
Castrechini (‘147) fails to explicitly disclose providing a user interface request to request approval from a payor associated with the payor account to use the second payment rail, see at least Fig 6 (more preferable payment method available? [Wingdings font/0xE0] yes [Wingdings font/0xE0] display payment method steering message to customer [Wingdings font/0xE0] obtain updated payment method selection), paragraph 0014 (direct a payment steering message to the customer, obtain an updated payment method selection from the customer; payment steering message can include an incentive for using the more preferable payment method), paragraph 0150 (user interface; obtain input and/or provide output to user)
As per Claim 11
Castrechini (‘147) discloses requesting approval from a payee to use the second payment rail and upon receiving approval from the payee, process the request using the second payment rail, see at least Fig 6 (more preferable payment method available? [Wingdings font/0xE0] yes [Wingdings font/0xE0] display payment method steering message to customer [Wingdings font/0xE0] obtain updated payment method selection), paragraph 0014 (direct a payment steering message to the customer, obtain an updated payment method selection from the customer; payment steering message can include an incentive for using the more preferable payment method), paragraph 0056 (reward the customer for using a specific payment method)
As per Claim 12
Castrechini (‘147) discloses providing a reward to the payor subsequent to using the second payment rail to process the request, see at least Fig 6 (more preferable payment method available? [Wingdings font/0xE0] yes [Wingdings font/0xE0] display payment method steering message to customer [Wingdings font/0xE0] obtain updated payment method selection), paragraph 0014 (direct a payment steering message to the customer, obtain an updated payment method selection from the customer; payment steering message can include an incentive for using the more preferable payment method), paragraph 0056 (reward the customer for using a specific payment method)
As per Claim 13
Castrechini (‘147) discloses registering a wallet with the payor account, see at least paragraph 0088 (payment method is a digital wallet), paragraph 0101 (selected payment method is a virtual wallet; a virtual wallet may include a plurality of payment methods) and claim 3 of Castrechini (mobile wallet account number)
Castrechini (‘147) discloses recording a payor account preference for one of the first payment rail and at least the second payment rail, see at least paragraph 0007 (colling via the processor payment information from the customer), paragraph 0008 (collecting payment information can further include…determining preference order for the available payment methods)
As per Claim 14
Castrechini (‘147) fails to explicitly disclose wherein the request is received from a wallet. Ramanathan (‘501) teaches receive request from a wallet, see at least paragraph 0024 (payment request client application may be a mobile wallet application configured to allow the user to make payments from accounts), paragraph 0027 (mobile wallet users associated with the payer). Both Castrechini and Ramanathan are directed toward facilitating a payment. Therefore, the examiner asserts that it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Castrechini’ s invention to include wherein the request is received from a wallet. One would have been motivated to do so for the benefit of speeding up transaction process.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Castrechini et al. (US 2014/0351147 A1) in view of Ramanathan et al. (US 2020/0380501 A1), as applied to claim 1 above, and further in view of Mohsenzadeh (US 8,768,831 B2).
As per Claim 3
Castrechini (‘147) discloses reduced processing cost, see at least paragraph 0100 (transaction costs associated with the ACH payment may have a lower cost than transaction costs associated with a credit card payment), paragraph 0009 (available payment methods can be determined based on characteristics of the transaction; order can be determined based on transaction costs associated with the available payment methods), paragraph 0098 (a first payment method has lower transaction costs to the merchant than a second payment method), but fails to explicitly disclose the cost includes financial network fees. Mohsenzadeh (‘831) teaches cost includes financial network fees, see at least column 1, lines 45-67 (process card transactions through the lowest cost network; fees include…a card network fee), column 2, lines 10-20 (all fees collected above are typically paid by the merchant as part of doing business), column 10, Table 1 (fees for processing credit cards are higher than fees for processing debit cards; different networks have different fees). Both Castrechini and Mohsenzadeh are directed toward selecting payment method based on cost. Therefore, the examiner asserts that it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Castrechini’ s invention to include the cost includes financial network fees. One would bee motivated to do so for the benefit of allowing cost savings by lowering financial network fees.
Claims 5-8 and 20 is rejected under 35 U.S.C. 103 as being unpatentable over Castrechini et al. (US 2014/0351147 A1) in view of Ramanathan et al. (US 2020/0380501 A1), as applied to claim 1 above, and further in view of Bowers et al. (US 11,847,623 B1).
As per Claim 5
Castrechini (‘147) discloses debit card system payment rail, see at least paragraph 0100 (a payment method selection may be obtained from the customer), paragraph 0080 (payment method utilized by the customer e.g. a debit card number), but fails to explicitly disclose wherein the debit card system payment rail is associated with a direct deposit account associated with the payor account. Bowers (‘623) teaches debit card system payment rail is associated with a direct deposit account associated with the payor account, see at least column 2, lines 17-25 (automatic card lock feature that activates automatically when an account enters a low cash mode based on a predicted balance e.g. a payment or direct deposit scheduled for tomorrow) and column 45, lines 9-12 (debit card smart lock may allow a user to choose to automatically lock their debit card to avoid spending when their balance is low). Both Castrechini and Castrechini are directed toward providing customer with the ability to select alternative account for transaction. Therefore, the examiner asserts that it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Castrechini’ s invention to include debit card system payment rail is associated with a direct deposit account associated with the payor account. One would been motivated to do so for the benefit of reducing risk.
As per Claim 6
Castrechini (‘147) discloses determining whether a second payment rail is available for processing the request, paragraph 0009 (available payment methods can be determined based on characteristics of the transaction; order can be determined based on transaction costs associated with the available payment methods), paragraph 0097 (different payment methods may be available depending on transaction characteristics), but fails to explicitly disclose determining identification information for account holders of the direct deposit account. Bowers (‘623) teaches determining identification information for account holders of the direct deposit account, see at least
column 2, lines 17-25 (predicted balance… direct deposit scheduled for tomorrow), claim 1 of Castrechini (associating the user device unique identifier with the account), column 14, lines 32-67 (accounts for customers; two or more account owners). Both Castrechini and Castrechini are directed toward providing customer with the ability to select alternative account for transaction. Therefore, the examiner asserts that it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Castrechini’ s invention to include determining identification information for account holders of the direct deposit account. One would been motivated to do so for the benefit of speeding up the process.
As per Claim 7
Castrechini (‘147) discloses determining whether a second payment rail is available for processing the request, paragraph 0009 (available payment methods can be determined based on characteristics of the transaction; order can be determined based on transaction costs associated with the available payment methods), paragraph 0097 (different payment methods may be available depending on transaction characteristics), but fails to explicitly disclose predicting available funds of the direct deposit account. Bowers (‘623) teaches predicting available funds of the direct deposit account, see at least column 2, lines 17-25 (automatic card lock feature that activates automatically when an account enters a low cash mode based on a predicted balance e.g. a payment or direct deposit scheduled for tomorrow) and column 45, lines 9-12. Both Castrechini and Castrechini are directed toward providing customer with the ability to select alternative account for transaction. Therefore, the examiner asserts that it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Castrechini’ s invention to include predicting available funds of the direct deposit account. One would been motivated to do so for the benefit of reducing risk.
As per Claim 8
Castrechini (‘147) fails to explicitly disclose wherein detecting likely available funds includes predicting at least one of a subsequent direct deposit date or a subsequent direct deposit amount. Bowers (‘623) teaches wherein detecting likely available funds includes predicting at least one of a subsequent direct deposit date or a subsequent direct deposit amount, see at least column 2, lines 17-25 (automatic card lock feature that activates automatically when an account enters a low cash mode based on a predicted balance e.g. a payment or direct deposit scheduled for tomorrow) and column 45, lines 9-12. Both Castrechini and Castrechini are directed toward providing customer with the ability to select alternative account for transaction. Therefore, the examiner asserts that it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Castrechini’ s invention to include wherein detecting likely available funds includes predicting at least one of a subsequent direct deposit date or a subsequent direct deposit amount. One would been motivated to do so for the benefit of reducing risk.
As per Claim 20
Castrechini (‘147) discloses wherein: the request includes a request to process the transaction using a debit card system payment rail, see at least paragraph 0100 (a payment method selection may be obtained from the customer), paragraph 0080 (payment method utilized by the customer e.g. a debit card number), but fails to explicitly disclose for accessing a direct deposit account associated with the payor account. Bowers (‘623) teaches for accessing a direct deposit account associated with the payor account, see at least column 2, lines 17-25 (automatic card lock feature that activates automatically when an account enters a low cash mode based on a predicted balance e.g. a payment or direct deposit scheduled for tomorrow) and column 45, lines 9-12 (debit card smart lock may allow a user to choose to automatically lock their debit card to avoid spending when their balance is low). Both Castrechini and Castrechini are directed toward providing customer with the ability to select alternative account for transaction. Therefore, the examiner asserts that it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Castrechini’ s invention to include for accessing a direct deposit account associated with the payor account. One would been motivated to do so for the benefit of speeding up transaction process.
Castrechini (‘147) discloses determining whether the second payment rail is available for processing the request, paragraph 0009 (available payment methods can be determined based on characteristics of the transaction; order can be determined based on transaction costs associated with the available payment methods), paragraph 0097 (different payment methods may be available depending on transaction characteristics), but fails to explicitly disclose determining identification information for account holders of the direct deposit account; and predicting available funds of the direct deposit account. Bowers (‘623) teaches determining identification information for account holders of the direct deposit account; and predicting available funds of the direct deposit account, see at least column 2, lines 17-25 (automatic card lock feature that activates automatically when an account enters a low cash mode based on a predicted balance e.g. a payment or direct deposit scheduled for tomorrow), claim 1 of Castrechini (associating the user device unique identifier with the account), column 14, lines 32-67 (accounts for customers; two or more account owners). Both Castrechini and Castrechini are directed toward providing customer with the ability to select alternative account for transaction. Therefore, the examiner asserts that it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Castrechini’ s invention to include determining identification information for account holders of the direct deposit account; and predicting available funds of the direct deposit account. One would been motivated to do so for the benefit of reducing risk.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Castrechini et al. (US 2014/0351147 A1) in view of Ramanathan et al. (US 2020/0380501 A1), as applied to claim 6 above, and further in view of Bowers et al. (US 11,847,623 B1) and Higgins et al. (US 10,915,900 B1).
As per Claim 9
Castrechini (‘147) discloses determining whether a second payment rail is available for processing the request, paragraph 0009 (available payment methods can be determined based on characteristics of the transaction; order can be determined based on transaction costs associated with the available payment methods), paragraph 0097 (different payment methods may be available depending on transaction characteristics), but fails to explicitly disclose predicting whether the request is involves a product that is likely to be returned or disputed by a payor associated with the payor account. Higgins (‘900) teaches predicting whether a request is involves a product that is likely to be returned or disputed by a payor associated with the payor account, see at least claim 1 of Higgins (send a request to authorize the payment data for the cost of transaction to a payment service associated with the payment card of the customer; determine a likelihood that the customer will return the item to the merchant for the cost of the transaction; the likelihood bine above a threshold probability indicating that the customer is likely to return the item). Both Castrechini and Higgins are directed toward processing a payment request. Therefore, the examiner asserts that it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Castrechini’ s invention to include predicting whether a request is involves a product that is likely to be returned or disputed by a payor associated with the payor account. One would been motivated to do so for the benefit of reducing risk.
Related But Not Relied Upon
Relevant prior art cited but not applied: Montelo et al. (US 7,580,862 B1), directed to changing payment method at the time service is performed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHIA-YI LIU whose telephone number is (571)270-1573. The examiner can normally be reached Mon-Thurs 9-8 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RYAN DONLON can be reached at (571) 270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHIA-YI LIU/Primary Examiner, Art Unit 3692