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 .
Application Status
This office action is in response to Applicant’s remarks received 08/19/2025.
Claim 8 has been cancelled.
Claim 9 has been added.
Claims 6 and 7 have been amended to depend upon new claim 9.
Claims 6, 7, and 9 are pending and have been examined.
Withdrawn Objections
The claim objection of claim 8 is withdrawn in light of the amendments received – the claim has been cancelled.
Withdrawn Rejections
The 35 U.S.C. § 112(b) rejections of claims 6-8 drawn to being hybrid claims is withdrawn in light of the amendments received – claim 8 has been cancelled.
The 35 U.S.C. § 112(b) rejections of claims 6-8 drawn antecedent basis issue corresponding to “…said payment infrastructure…” is withdrawn in light of the amendments received – claim 8 has been cancelled.
Claim Objections
Claim 7 is objected to for improper lack of apostrophes.
Claim Rejections
Claim 7 is rejected under 35 U.S.C. § 112(a) for issues pertaining to written description requirement.
Claims 6, 7, and 91 are rejected under 35 U.S.C. § 101 for being directed to an abstract idea without significantly more.
Claims 6,7, and 9 are rejected under 35 U.S.C. § 103 for being unpatentable in light of the following prior art of record:
US-2006017987-A1 (Ostergren).
Non-Patent Literature, “https://mypaydayplan.com” (MyPayDayPlan – 2012).
Acknowledgement of Issues Raised by Applicant
With respect to Applicant’s arguments drawn to the 35 U.S.C. § 101 rejections and § 112(a) rejection of claim 7, Examiner notes the arguments are cursory and do not provide any substantive underlying reasoning or rationale. Accordingly, Examiner respectfully disagrees with Applicant arguments in view of the rationales provided in the 101 and 112(a) rejections, further below.
Examiner’s Note
Based upon search results during examiner search, examiner notes the preexisting “MyPayDayPlan”2 website archived on the Internet Archive (i.e., “Wayback Machine”) appears to be the inventor’s (Eric Ostergren).
Claim Objections
Claim 7 is objected to because of the following informalities: improper lack of apostrophes. For example, with respect to clause line 3 of claim 7, they recite “…said lenders existing monthly payment infrastructure …”. However, this should recite lender’s instead of “…lenders…”, as it is clear the above disclosures are characterizing the payment infrastructure as that of the lender’s. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 7 is 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Written Description
Claim 7 recites: “integrating an agreement associated with the selected option with said lenders existing monthly payment infrastructure.”
Applicant Specification, paragraphs 14 and 16, disclose “Most all current loan repayment infrastructures lenders (loan, lease, etc.) are designed to only accept monthly payments. The present invention will allow those lenders to keep their existing infrastructures in place and offer our solution as an option. The lender sacrifices very little and benefits greatly. If the consumer defaults on the automated collection process, it simply reverts to the original monthly contract” and “1. The consumer would enroll in our Optional Partial Payment Agreement (“OPPA”) with the lender (payee) as a method for collecting Partial Payments (“PP”) on their existing (or proposed) monthly obligation (usually a loan or lease) towards the Full Monthly Payment Contract (“FMPC”)”, respectively.
Therefore, the Specification, at best supports, enrolling a consumer in an “Optional Partial Payment Agreement” as part of making collections on monthly obligations. Which is not sufficient for covering the claim as written which encompasses a broader class of agreements and integration into a monthly payment infrastructure beyond the disclosed “Optional Partial Payment Agreements” and “enrolling” (claimed “integrating an agreement associated with the selected option with said lenders existing monthly payment infrastructure”). See MPEP § 2163 II 3 (a) ii: “In LizardTech, claims to a generic method of making a seamless discrete wavelet transformation (DWT) were held invalid under 35 U.S.C. 112, first paragraph, because the specification taught only one particular method for making a seamless DWT and there was no evidence that the specification contemplated a more generic method. Id.; see also Tronzo v. Biomet, 156 F.3d at 1159, 47 USPQ2d at 1833 (Fed. Cir. 1998)(holding that the disclosure of a species in a parent application did not provide adequate written description support for claims to a genus in a child application where the specification taught against other species). Satisfactory disclosure of a “representative number” depends on whether one of skill in the art would recognize that the inventor was in possession of the necessary common attributes or features possessed by the members of the genus in view of the species disclosed. For inventions in an unpredictable art, adequate written description of a genus which embraces widely variant species cannot be achieved by disclosing only one species within the genus”.
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 6, 7, and 9 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.
As an initial matter, the relevant test is the Alice/Mayo test3. The following analysis provided in this section results from the instant application’s claims being examined within the scope of the Alice/Mayo test framework.
With respect to step 1 of the Alice/Mayo test, claims 6, 7, and 9 are all directed to a “…method…” (Step 1 of Alice/Mayo Test: YES).
In light of step 2A Alice/Mayo analysis performed on the instant claims4, claims 6, 7, and 9 have each been determined to be directed to an abstract idea of rescheduling payment obligations. The rationales for the aforementioned determination are explained further below.
When analyzed under prong I of revised step 2A, claims 6, 7, and 9 each recite an abstract idea of rescheduling payment obligations, which is grouped under “Certain Methods of Organizing Human Activity”, and more specifically under “Commercial Interactions” (MPEP §§ 2106.04(a), (a)(2) II, & (a)(2) II B), as independent claim 9 recites:
“9. A method for meeting monthly payment obligations said method comprising:
A) providing an obligation to an obligatee, said obligation selected from the group consisting of i) a mortgage, and ii) an installment loan;
B) enrolling said obligatee in an optional payment agreement as a method for collecting partial payments;
C) collecting reduced monthly payments from said obligatee selected from the group consisting of:
a) weekly,
b) biweekly, and,
c) twice-monthly;
D) when sufficient funds are collected, a full monthly payment is satisfied.”
Under broadest reasonable interpretation consistent with the specification, the above claim limitations recite commercial and/or legal interactions of rescheduling payment obligations on shorter intervals, including steps of: (A) providing an obligation to an obligatee, said obligation selected from the group consisting of i) a mortgage, and ii) an installment loan, (B) enrolling said obligatee in an optional payment agreement as a method for collecting partial payments; (C) collecting reduced monthly payments from said obligatee selected from the group consisting of: a) weekly, b) biweekly, and, c) twice-monthly, and (D) when sufficient funds are collected, a full monthly payment is satisfied. (Step 2A Prong I of Alice/Mayo Test: Yes, 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 § 2106.04 II), claim 9 does not have any additional elements, of which are required for any integration into a practical application or amounting to significantly more – see MPEP § 2106.04 II B: “… if the claim does not recite any additional element, … then the claim should be considered ineligible.”
Therefore, claim 9 is determined to be directed to an abstract idea under step 2A, as there is nothing else that the claims could be directed to; there are no additional elements to analyze under prong II of step 2A, only the abstract idea (Step 2A: The claims are directed to an abstract idea).
When analyzed under step 2B5, claim 9 does not include additional elements, of which are required for amounting to significantly more – see MPEP § 2106.04 II B: “… if the claim does not recite any additional element, … then the claim should be considered ineligible.” (Step 2B – The claims do not amount to significantly more).
Hence, claim 9 is not patent eligible.
With respect to the dependent claims, they have each been given the full Alice/Mayo analysis, including analyzing the additional elements both individually and as an ordered combination (if any). The dependent claims are also held patent ineligible under 35 U.S.C. § 101 because of the same reasoning as above, and because the claim limitations of the dependent claims fail to establish that the claims are integrated into a practical application or amount to significantly more. The rationales for the aforementioned determinations are explained further below.
Dependent claim 6 further describes the abstract commercial interactions/agreements, as it recites “collecting said smaller payments …”. The additional elements of “Automated Clearing House” and “other electronic payment processing system” merely represent the use of computers as tools to perform the abstract idea, and do no more than merely limit the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)). Therefore, claim 6 does not improve the functioning of a computer, or to any other computer, technology, or technical field, does not integrate the judicial exception into a practical application, and do not amount to significantly more. Claim 6 is not eligible under 35 U.S.C. § 101, when analyzed under the Alice/Mayo test.
Dependent claim 7 further describes the abstract commercial interactions/agreements, as it recites “integrating an agreement associated with the selected option with said [lender] …”. The additional element of “monthly payment infrastructure” represents the use of a computer as a tool to perform the abstract idea and does no more than merely limit the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)), and therefore, does not improve the functioning of a computer, or to any other computer, technology, or technical field, does not integrate the judicial exception into a practical application, and does not amount to significantly more. Claim 7 is not eligible under 35 U.S.C. § 101, when analyzed under the Alice/Mayo test.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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 6, 7, and 9 are rejected under 35 U.S.C. §103 as being unpatentable over United States Patent Application Publication No. US-2006017987-A1 (Ostergren), in further view of Non-Patent Literature, “https://mypaydayplan.com” (MyPayDayPlan – 2012).
Claim 9
With respect to claim 9, Ostergren discloses:
A method for meeting monthly payment obligations (Title; abstract) said method comprising:
(A) providing an obligation to an obligatee (¶8: “According to an embodiment of the invention, there is disclosed a method for re-amortizing a borrower's monthly payments for collection and payment to a lender”; See also ¶38 in further view of Fig. 4, ref 506),
said obligation selected from the group consisting of
i) a mortgage (¶4), and
ii) an installment loan (At least abstract: “…a borrower’s monthly payments…”);
B) enrolling said obligatee in an optional payment agreement as a method for collecting partial payments; (Fig. 5, refs 512, 518, 520, 524; ¶18; ¶¶38-41)
C) collecting reduced monthly payments from said obligatee selected from the group consisting of: (Fig. 6; refs 608, 612; ¶¶43,44)
a) weekly, (Fig. 6; ¶43)
b) biweekly, and, (Fig. 6; ¶43; See also Fig. 3 and ¶11)
…
D) when sufficient funds are collected, a full monthly payment is satisfied. (Fig. 6, refs 612,620 (Yes), 622; ¶¶44, 45)
While the examiner respectfully maintains that:
The i) a mortgage and ii) an installment loan limitations are alternatives (i.e., claim 9 only requires one, and that prior art teaching either reads upon the alternative claim limitation).
Ostergren discloses an installment loan (i.e., one of the alternatives, as mapped above).
Examiner, arguendo, for sake of compact prosecution, notes Ostergren fails to expressly teach that the obligations used in their method corresponds to a mortgage, despite mentioning mortgage obligations in their disclosure (e.g., see at least ¶4), and the method generally corresponding to smaller payments of obligations (e.g., title, abstract).
However, MyPayDayPlan – 2012 expressly teaches the obligations may include those of:
i) a mortgage (See page 2/86: “Additionally, mortgages that don’t include an escrow payment can also be processed. Virtually any type of loan or structured monthly payment can be processed by MyPaydayPlan.”)
Accordingly, it would have been rendered obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that the system of Ostergren could perform the loan process on a mortgage, as disclosed by MyPayDayPlan – 2012, in order to advantageously provide the smaller payment collection for monthly mortgage payments, as they are typically large recurring expenses.
Furthermore, While Examiner respectfully maintains that the a) … b) … and c)… limitations are alternatives, and that Ostergren discloses two of the alternatives ( a) and b) ), Examiner, Arguendo, for sake of compact prosecution, notes Ostergren fails to expressly teach a twice-monthly payment collection option (i.e., limitation c)).
However, MyPayDayPlan – 2012 additionally discloses a reduced monthly payment option corresponding to: c) twice-monthly (Page 2/37).
Accordingly, it would have been rendered obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the system of Ostergren in view of MyPayDayPlan – 2012 to include a third option for payment scheduling (twice-monthly), as obvious in light of MyPayDayPlan – 2012, in order to advantageously increase the number of potential users that can match their own employer’s payment schedule. For further explanation on rationale, see the 94% metric of MyPayDayPlan – 2012 for the three weekly, bi-weekly, and twice-a-month payment schedules8, in further view of the two options of Ostergren corresponding to a lower 85% metric9 – i.e., the advantage of incorporating the third monthly payment option of twice-monthly in the method of Ostergren is that the method of Ostergren in view of MyPayDayPlan – 2012 resultantly enables a higher proportion of potential clients in the United States being able to advantageously synchronize their income from their employer with the collection process of Ostergren, at roughly a ~9% increase (statistically speaking).
Claim 6
With respect to claim 6, Ostergren in view of MyPayDayPlan – 2012 renders obvious the method of claim 9. Furthermore, Ostergren discloses:
collecting said smaller payments via Automated Clearing House or other electronic payment processing system. (¶26 in further view of ¶¶43-44 and Fig. 6, ref 612;)
While the Examiner respectfully submits Ostergren discloses the entirety of the claim limitations of claim 6, Examiner notes reasonable minds may disagree as to whether Ostergren expressly discloses those smaller payments are collected via ACH; it is certainly clear they are collected at least by EFTs. However, arguendo, MyPayDayPlan – 2012 discloses that all EFT payments are made through an ACH system (Last FAQ on Page 2/810).
Accordingly, it would have been rendered obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have all the EFT payments of Ostergren made through an ACH system as already implied by Ostergren, made more explicit in MyPayDayPlan – 2012, in order to advantageously utilize a conventional and readily available form of electronic payment, rather than having to utilize a customized solution requiring more time and resources to create.
Claim 7
With respect to claim 7, Ostergren in view of MyPayDayPlan – 2012 renders obvious the method of claim 9. Ostergren further discloses:
integrating an agreement associated with the selected option (Fig. 5, refs 512, 524, in further view of Fig. 6, refs 524, 602, 608, 612, 620, 622 and ¶¶39-40) with said lenders existing monthly payment infrastructure. (¶26 in further view of at least ¶¶29, 37-39).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
The following prior art is pertinent to Applicant’s disclosure:
Non-Patent Literature, “How & Why it Works – It’s Just Smart Math” (MyPayDayPlan – 2019). MyPayDayPlan – 2019 discloses that their integration for automated payments (like Ostergren’ s and Applicant’s) works with existing billing systems of service providers (e.g., merchants, analogous in Ostergren’s disclosure)11: “…No need to modify your existing billing system because we actually enhance it…” (page 1). Examiner notes MyPayDayPlan – 2012 corresponds to the same domain as MyPayDayPlan – 2019, but are archived at different points in time.
US 4974878 A (Josephson), disclosing a fund transfer transaction originating from ACH and further disclosing generation of a file of payment data to be used by payee’s accounts receivable system or loan accounting system to automatically update each customer’s record with the payment data (Column 6, lines 2-10).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK A MALKOWSKI whose telephone number is (313)446-6624. The examiner can normally be reached Monday - Friday, 9:00AM - 5:00PM ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Gart can be reached at (571) 272-3955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/M.A.M./Examiner, Art Unit 3696
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696
1 I.e., the subject matter claimed.
2 See PTO-892 entries U and V.
3 See MPEP § 2106 I.
4 See MPEP §§ 2106.04 I, II, (d) I.
5 See MPEP §§ 2106.04 II, 2106.05.
6 Page 2 of PDF supplied.
7 Page 10 of PDF supplied.
8 See Page 2/3 of MyPayDayPlan – 2019 (Page 10 of PDF).
9 See ¶3 of Ostergren.
10 Page 2 of PDF supplied.
11 See also MyPayDayPlan reference disclosing most lenders accept EFT payments on the bottom of page 4/8.