DETAILED ACTION
Acknowledgements
This Office Action is in response to Applicant’s correspondence filed on 7/14/25.
The Examiner notes that citations to United States Patent Application Publication paragraphs are formatted as [####], #### representing the paragraph number.
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 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.
Status of Claims
Claims 1-6 are currently pending.
Claims 1-6 are rejected as set forth below.
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
Specification
Applicant’s arguments with respect to the Specification have been fully considered and are persuasive. The objection is withdrawn.
Claim Rejections - 35 U.S.C. § 112(a)
Applicant’s arguments with respect to Paragraphs 12, 14 of the Non-Final Rejection have been fully considered and are persuasive. The rejection (and corresponding rejections to its dependent claims, if applicable) is withdrawn.
Applicant’s arguments with respect to Paragraph 16 of the Non-Final Rejection have been fully considered but are not persuasive. The rejection (and corresponding rejections to its dependent claims, if applicable) is maintained.
Applicant has not addressed the issue of the Specification not providing support for all possible entities performing the claimed steps, as the Specification describes these steps as being performed by either a payer, a recipient, an ePayRails platform, or a third party (Fig 1, [0043]-[0046]). Merely stating that the claim is performed by a computer does not address the issue since the computer is not limited to a particular entity.
Claim Rejections - 35 U.S.C. § 112(b)
Applicant’s arguments with respect to claim(s) 1-2, 4-5 have been fully considered and are persuasive. The rejection (and corresponding rejections to its dependent claims, if applicable) is withdrawn.
Claim Rejections - 35 U.S.C. § 103
Applicant’s arguments with respect to claims 1-6 have been fully considered but are not persuasive. The rejection (and corresponding rejections to its dependent claims, if applicable) is maintained.
Applicant contends Swanson does not teach or suggest “the second circuit is further configured to execute a first disbursement to the third circuit using only a single settlement account”. The Examiner respectfully disagrees. Swanson teaches funds being transferred from a Payer’s PCPA, i.e. a single settlement account, to a Payee’s PDDA ([0077]).
Applicant contends Swanson does not teach or suggest “the third circuit is further configured to initiate a further disbursement using only a portion of the funds received via the first disbursement”. The Examiner respectfully disagrees. Swanson teaches the payee transferring funds received in the PDDD to one or more bank accounts in order to cover expenses ([0097]).
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2-3, 5-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
As per claims 2-3, 5-6, the claim recites steps that do not recite the apparatus or computer that performs the step. Therefore, these steps are broad enough to read on all possible entities performing the steps. However, the Specification does not provide support for all possible entities performing these steps, as the Specification describes these steps as being performed by either a payer, a recipient, an ePayRails platform, or a third party (Fig 1, [0043]-[0046]). Therefore, the Specification does not provide support for the full breadth of the claims. See MPEP 2163 (II)(A)(3)(a)(ii); LizardTech v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1346, 76 USPQ2d 1731, 1733 (Fed. Cir. 2005).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 4-6 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by United States Patent Application Publication No. 20170178110 to Swanson.
As per claims 4-6, Swanson teaches:
An apparatus comprising: a first circuit and/or communication circuit; a second circuit and/or communication circuit; a third circuit and/or communication circuit; (Fig 2)
wherein the first circuit and/or communication circuit is configured and/or programmed to transmit an initiation message to the second circuit and/or communication circuit; ([0080], “FIG. 4 (elements 04000-04018) illustrates what the online Payer New Payment Form (accessible to Payer via Payer's client) might look like whereby a compensation Payer identifies a Payee and designates a compensation amount to be paid to same for a new Payment Event.”)
the second circuit and/or communication circuit is configured and/or programmed to generate an out-of-band notification requesting authentication in response to receiving said initiation message, the third circuit and/or communication circuit is configured and/or programmed to receives and accepts the notification, and send a Payment acceptance notification to the second circuit and/or communication circuit, the second circuit and/or communication circuit is configured and/or programmed to transmit a notification of payment acceptance message to the first circuit and/or communication circuit in a case of a successful enrollment result; ([0086], “FIG. 10 (elements 10000-10020) is a flowchart illustrating how the Present Invention tracks and updates the records of a Payee who has been allocated compensation but does not have an active Payee-Directed Disbursement Account and works with said Payee to achieve a “Confirmed” and “Active” status. Present Invention's System is designed to facilitate compensation Payment Events, seeing to it that Payees connect with their Pay in a timely manner. Should a designated Payee have funds allocated but does not have a confirmed and active account, the System is designed to set up such an account and notify the Payee as to how to make the account active.”; Fig 15, [0091], FIG. 15 represents the steps required for a Payee to register with the Present Invention in order to receive compensation at the time of a Payment Event from a Payer. If a new Payee's Account has not yet been confirmed by Payee's having finished supplying necessary information and confirming the New Payee Account, the balance at 15002 will show as “Pending”, as in “Pending Confirmation”; [0087], “FIG. 11 (elements 11000-11014) is a flowchart illustrating how the Present Invention's System retrieves Payment Event records with status set to “Processed” via database trigger. If the 11004 query is returned as True, 11006 System retrieves Payer Information from 11008 Payer Database, 11010 generates and sends “Payment Complete” notification to Payer (along with current balance in Payer's Payer-Controlled Pay Account, 11012 sets status to “Complete” and updates Payment Event record in 11002 Payment Event Database, and cycles back to query 11004, looking for any “Processed” Payment Event records.”)
the second circuit and/or communication circuit is configured and/or programmed to transmit a communication to the third circuit and/or communication circuit providing redemption options, the second circuit and/or communication circuit is configured and/or programmed to debit an account associated with the first circuit and/or communication circuit, the third circuit and/or communication circuit is configured and/or programmed to select either redeeming an entire payment at once or to leave a balance in an account in response to receiving the communication, the third circuit and/or communication circuit is configured and/or programmed to transmit the selected method of redemption, and the second circuit and/or communication circuit is configured and/or programmed to transmit the debit amount to the third circuit and/or communication circuit and fulfil the redemption request in response to receiving communication; the second circuit is further configured to execute a first disbursement to the third circuit using only a single settlement account; ([0077], “Once sufficient funds are tracked by and reported to Present Invention Server 01010 as having been credited to Payer's PCPA 01012, said Server takes over the execution of a compensation Payment Event whereby said compensation funds are discretely credited to Payee's Payee-Directed Disbursement Account (“PDDA”) 01014.”; Fig 20, [0096], “FIG. 20 (elements 20000-20028) illustrates an online or client server Payee Account Disbursement Request Form generated by Present Invention's System whereby a Payee can privately and securely request some or all currently available funds in their Payee-Directed Disbursement Account (“PDDA”) to be transferred to their current Disbursement List or to a specific PDDD. Payee inserts dollar amount 20006 being requested for disbursement and confirms the number by clicking “Update” 20008. Present Invention's System subtracts the requested Disbursement Amount 20006 from the Account's Current Balance 20002 and displays what the new balance will be 20010 once the requested Disbursement is executed.”; [0099], “FIG. 23 (elements 23000-23022) is a flowchart which illustrates the internal steps whereby the Present Invention's System retrieves and processes Payee Account (PDDA) Event Records with status set to “Load to PDDD” via database trigger. Should a designated Payee have funds credited to his or her Payee-Directed Disbursement Account (“PDDA”) and have instructed Present Invention's System to move some or all of said funds to one or more Payee-Directed Disbursement Devices, Present Invention's System takes over the facilitation of such disbursement(s) in the following manner.”)
the third circuit is further configured to initiate a further disbursement using only a portion of the funds received via the first disbursement. ([0097], “Transferring funds to one or more Bank Accounts is still an option for Payees who do not have bank accounts where such bank account loadings can facilitate covering expenses such as rental payments, mortgage payments, tuition, or any other type of timed payment—all of which can be allocated and disbursed to such accounts as any other regular PDDD under the direct control of the Payee.”)
Claim Rejections - 35 USC § 103
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 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 20170178110 to Swanson.
As per claims 1-3, the original embodiment of Swanson teaches:
An apparatus comprising: a first circuit and/or communication circuit; a second circuit and/or communication circuit; a third circuit and/or communication circuit; and a fourth circuit and/or communication circuit; (Fig 2)
the second circuit and/or communication circuit is configured and/or programmed to generate an out-of-band notification requesting authentication from the third circuit and/or communication circuit, the third circuit and/or communication circuit is configured and/or programmed to receive the out-of-band notification whereby the third circuit and/or communication circuit accepts the funds and initial enrollment is completed through the second circuit and/or communication circuit, the second circuit and/or communication circuit is configured and/or programmed to communicate with the fourth circuit and/or communication circuit for identity verification and transmits an enrollment confirmation to the third circuit and/or communication circuit, and the second circuit and/or communication circuit is configured and/or programmed to transmit an enrollment confirmation upon the successful/unsuccessful enrollment of the third circuit and/or communication circuit. ([0086], “FIG. 10 (elements 10000-10020) is a flowchart illustrating how the Present Invention tracks and updates the records of a Payee who has been allocated compensation but does not have an active Payee-Directed Disbursement Account and works with said Payee to achieve a “Confirmed” and “Active” status. Present Invention's System is designed to facilitate compensation Payment Events, seeing to it that Payees connect with their Pay in a timely manner. Should a designated Payee have funds allocated but does not have a confirmed and active account, the System is designed to set up such an account and notify the Payee as to how to make the account active.”; Fig 15, [0091], FIG. 15 represents the steps required for a Payee to register with the Present Invention in order to receive compensation at the time of a Payment Event from a Payer. If a new Payee's Account has not yet been confirmed by Payee's having finished supplying necessary information and confirming the New Payee Account, the balance at 15002 will show as “Pending”, as in “Pending Confirmation”; Fig 16, [0092]-[0093], “FIG. 16 (elements 16000-16010) illustrates what an interface page of the present invention looks like whereby a Payee can privately and securely add a new Payee-Directed Disbursement Device (“PDDD”), which, in this illustration, is in the form of a reloadable credit or debit card. Present Invention's System immediately runs a verification process with the API of the issuing financial institution behind the added card to establish the card's validity as having been properly issued and verifying that the card can legitimately be reloaded. FIG. 17 (elements 17000-17032) illustrates what an interface page of the Present Invention looks like where a Payee can privately and securely edit preferences governing a new or existing PDDD—the one herein being illustrated being in the form of a reloadable credit or debit card—and set parameters that will govern its usage unless or until changed by Payee at a subsequent time. If the Edit Card Preferences window is not accessed automatically after the entry of a new card account number and expiry date (FIG. 16), the window/form is available to a Payee from a drop down menu selection from which the card's account number 17000 is available from a scrolling window of all cards/PDDDs already registered (or in progress of registration) within Payee's PDDD Account. Each PDDD has an “Active” “ON” or “OFF” toggle 17002. While Information can be added/edited at will by a Payee, only those that have been toggled as “ON” will be queued to receive funds at the time of a scheduled Payment/Disbursement Event.”)
the second circuit is further configured to execute a first disbursement to the third circuit using only a single settlement account; ([0077], “Once sufficient funds are tracked by and reported to Present Invention Server 01010 as having been credited to Payer's PCPA 01012, said Server takes over the execution of a compensation Payment Event whereby said compensation funds are discretely credited to Payee's Payee-Directed Disbursement Account (“PDDA”) 01014.”)
the third circuit is further configured to initiate a further disbursement using only a portion of the funds received via the first disbursement. ([0097], “Transferring funds to one or more Bank Accounts is still an option for Payees who do not have bank accounts where such bank account loadings can facilitate covering expenses such as rental payments, mortgage payments, tuition, or any other type of timed payment—all of which can be allocated and disbursed to such accounts as any other regular PDDD under the direct control of the Payee.”)
The original embodiment of Swanson does not explicitly teach:
wherein the first circuit and/or communication circuit is configured and/or programmed to transmit a first-time enrollment request to the second circuit and/or communication circuit, the first-time enrollment request includes initial identifying information of said first circuit and/or communication circuit;
However, Swanson teaches the technique of:
an entity transmitting a first-time enrollment request to the second circuit and/or communication circuit, the first-time enrollment request includes initial identifying information of said entity; ([0091], FIG. 15 represents the steps required for a Payee to register with the Present Invention in order to receive compensation at the time of a Payment Event from a Payer. If a new Payee's Account has not yet been confirmed by Payee's having finished supplying necessary information and confirming the New Payee Account, the balance at 15002 will show as “Pending”, as in “Pending Confirmation. At the email field 15004, Payee will input the email address by which Payee is to receive all electronic correspondence regarding Payment Event and Pay System issues. Current Password 15006 is the password by which Payee gains system access.”)
One of ordinary skill in the art would have recognized that applying the known technique of Swanson to the known original embodiment of Swanson would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such account enrollment features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the first circuit and/or communication circuit to transmit a first-time enrollment request to the second circuit and/or communication circuit, the first-time enrollment request including initial identifying information of said entity, results in an improved invention because applying said technique ensures that the first circuit is properly registered and verified, thus improving the overall security of the invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
United States Patent Application Publication No. 20180197167 to Ganesan discloses a person-to-person (P2P) payment system that provides payment from a payer to a payee without the payer identifying a payee payment receiving preference, such as the payee account into which funds are to be posted. The payment system includes a setup system for setting up payment between the payer and the payee and a messaging system for handling messages between the payer and the payment system and the payee and the payment system, including communications with the payee by way of a payee phone number or email address provided by the payer. A risk assessment system determines a risk score for the P2P transaction and, based on that score, the bank of the payer provides a guarantee to the bank of the payee.
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 JAY HUANG whose telephone number is (408)918-9799. The examiner can normally be reached 9:00a - 5:30p PT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Coupe can be reached on (571) 270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAY HUANG/Primary Examiner, Art Unit 3619