DETAILED ACTION
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 12/30/2025 have been fully considered but they are not entirely persuasive.
The 35 USC 101 and 102 rejections remain outstanding as the applicant’s arguments are not persuasive.
Applicant’s representative argues that claims 1-20 do not recite an abstract idea because the claims do not recite “functions of organizing human activities such as performing commercial or legal interactions.
In response, it has been clearly enumerated that claims directed to an abstract idea are patent-ineligible. Abstract ideas are characterized as concepts identified by the courts which include (1) mathematical concepts, (2) mental processes and (3) certain methods of organizing human activity.
Among those concepts performed as being identified in the category of “Certain Methods of Organizing Human Activity” are “commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).
Here, the claimed concept falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in MPEP 2106. 04(a}2)UD, because they amount to limitations specifying steps of forwarding a payment to a merchant using a payment network.
The BRI of the claimed limitations describe functions of :
“generating a payment request representing the scheduled transaction, the payment request comprising the network identifier for the recipient and a participant identifier for the recipient, and forwarding the payment request to a global transaction router of a global transaction router or supernetwork that is configured to route the payment request from the first payment network to the second payment network”.
Therefore the claims recite a commercial or legal interaction as such is an abstract concept.
Each of these independent claims uses generic computer technology (such as a generic mobile device and a computing system) for generating and determining forwarding data or information, and providing the data to a computing system, as such do not recite an improvement to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F .3 d 1299, 1314-1315 (Fed. Cir. 2016) ( finding claims not abstract because they "focused on a specific asserted improvement in computer animation").
As such, claims 1, 9 and 16 recite determining and generating data or information, and forwarding the data as these functions are not a technological implementation or improvement of a technological field.
Applicant is to be reminded that a system, apparatus, machine or method for performing business, however, novel, useful, or commercially successful, is not patentable apart from the means for making the system practically useful or carrying it out. The applicant is making use of generic devices to finally provide from a user input received via a screen display and to a computing system, a second portion of identifying information in response to the request to correct the one or more errors, wherein the second portion of identifying information corrects the one or more errors in the first portion of identifying information.
Accordingly, the additional elements (such as a generic mobile device and a computing system) do not improve (1) the processor or database and user interface, or (2) another technology or technical field. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)). Rather, the above-noted additional elements merely (1) apply the abstract idea on a computer; (2) include instructions to implement the abstract idea on a computer (computing device or system) ; or (3) use the computer as a tool to perform the abstract idea. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05. Therefore, the recited additional elements do not integrate the abstract idea into a practical application when reading the claims.
None of the steps, functions and/or elements recited in the claims provides, and nowhere in the applicant’s shows any description or explanation as to how the claimed computing device or mobile device are intended to provide: (1) a “solution . . . necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks,” as explained by the Federal Circuit in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014); (2) “a specific improvement to the way computers operate,” as explained in Enfish, 822 F.3d at 1336; or (3) an “unconventional technological solution ... to a technological problem” that “improve[s] the performance of the system itself,” as explained in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1299-1300 (Fed. Cir. 2016).
Accordingly, claims 1-20 are directed to an abstract idea.
Applicant’s representative then states that the Applicant has claimed a specific technical solution that solves specific technical problems. The present application describes a specific technical problem related to "when a first financial institution that is a member of a payment network wants to make a payment to a second financial institution that is not a member of the payment network," as stated in paragraph [0012]. Applicant’s representative argues that claims 1-20 recite additional elements that integrate the alleged Judicial Exception into a practical application.
In response, the claims still fail to recite technological implementation details of how the claimed functions are being realized. Claims of this nature are almost always found to be ineligible for patenting under Section 101." Beteiro, LLC V. DraftKings Inc., 104 F.4th 1350, 1356 (Fed. Cir. 2024). The specification does not even provide details of a specific architecture or means or structures or specific computer executed modules for performing the claimed functions. Taken claim 1 as an example, claim 1 now recites an improvement to the business of:
Forwarding a providing a payment from a first payment network to a second payment network.
The claims "do[es] not improve the functioning of the computing device having a processor and a memory or the global transaction router or supernetwork or make it operate more efficiently, or solve any technological problem." Trading Techs. Int'l, Inc. V. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019). "Nothing in the claim[s], understood in light of the specification, calls for anything but preexisting computers and displays, programmed using techniques known to skilled artisans, to present the new arrangement of information." Brumfield V. IBG LLC, 97 F Ath 854, 868 (Fed. Cir. 2024). The claims also do not show a technical improvement in the architecture of the computing device with the processor and memory or using a computing logic of the computing device or global router. The recited functions involve generic or conventional functions and setup of a basic computer device.
The mere recitation of a generic computing device with a processor and memory, a payment network and router cannot transform a patent-ineligible abstract idea into a patent-eligible invention as stated in Alice Corp., 134S.Ct. at 2358; DDR Holdings, LLC V. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cri. 2014) ("And after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible. (citation omitted)). Thus, if a patent's recitation of a computer amounts to a mere instruction to 'implement' an abstract idea 'on a computer', that addition cannot impart patent eligibility." Alice Corp., 134 S. Ct. at 2358 (internal citation omitted). The claimed computing device and network and router are merely a field of use that attempts to limit the abstract idea to a particular technological environment.
Each of the independent claims uses generic computer technology (such as a generic computing device and a payment network or router) for routing or providing payment from a first payment network to another payment network, as such do not recite an improvement to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F .3 d 1299, 1314-1315 (Fed. Cir. 2016) ( finding claims not abstract because they "focused on a specific asserted improvement in computer animation").
The claims are void of anything significantly more than the abstract idea itself.
Applicant’s representative then argues that claims 1-20 amount to significantly more than the alleged Judicial Exception.
Applicant respectfully then submits that it is not "routine, conventional activity" to "determine for a scheduled transaction for a first payment network that a recipient of the scheduled transaction is associated with a second payment network based at least in part on a network identifier for the recipient," "generate a payment request representing the scheduled transaction, the payment request comprising the network identifier for the recipient and a participant identifier for the recipient, and "forward the payment request to a global transaction router of a supernetwork that is configured to route the payment request from the first payment network to the second payment network." Therefore, Applicant submits that Step 2B also favors eligibility for claim 1.
In response, all the cited prior art provide the structural means or structures for performing the claimed invention or the functions as recited in at least the independent claims.
The additional elements when considered both individually and as a combination do not amount to significantly more than the abstract idea. The additional elements of a computing device and a first and second network and taken individually or as a whole is seen as general purpose computer or a computerized system (see the applicant’s specification). These claimed devices are noted to perform routine computer functions such as receiving data, determining data, and displaying data on a computer screen or graphical user interface.
The claimed computing device with a processor and memory, and the payment networks are seen as a generic computer performing generic functions without an inventive concept as such does not amount to significantly more. These devices are simply a field of use that attempts to limit the abstract idea to a particular environment. The type of data being manipulated does not impose meaningful limitations. Looking at the elements as a combination does not add anything more than the elements analyzed individually. Therefore the claims do not amount to significantly more than the abstract idea itself. The claims are not patent eligible.
Furthermore, in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., the Courts held that claims to a method for making websites easier to navigate on a small-screen device were not directed to an abstract idea. 880 F.3d 1356, 1363 (Fed. Cir. 2018). Here, the claims are not drafted in the format CoreWireless. Rather than providing a technical solution that improves the way the computing device, the applicant is merely using alternate ways of using a computer for allowing a user to make a purchase based on favorable actions taken by a user.
The judicial exception is not integrated into a practical application. In particular, the claims merely recite a generic computing device with a processor and memory, and a payment network to perform the claimed functions. These types of functions are functions that a generic computer may achieve and they are also functions which similarly the Courts found to be abstract. The claimed “processor” in a network is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of ranking information based on a determined amount of use) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Applicant’s remarks and the Examiner’s response regarding the 35 USC 103 rejection.
Applicant’s representative argues that claims 1, 2, 5-9, 12-16, 19 and 20 are patentable over Dickelma and Law. Applicant’s representative specifically states that “The account selection processor of Dickelman appears to operate within a single transaction processing system (in referring to account selection processor 150 with the system 100 of figure 1A of Dickelman).., and that the account selection processor of Dickelman does not appear to be configured to route the payment request from the first payment network to the second payment network”.
In response, Dickelman et al disclose a system and method for facilitating electronic payments between disparate autonomous payment networks respectively having network-specific payment processing protocols. See column 3, lines 1-28 of Dickelman. Diuckelman further states that a network selector is used to select which of a plurality of payment networks to send payment transaction data to. Accordingly, Dickelman on column 3, line 56 to column 4, line 13 states:
“According to various embodiments of the present disclosure, a processor-readable non-transitory storage medium is provided with instructions stored thereon for performing steps to facilitate electronic payment between disparate autonomous payment networks respectively having network-specific payment processing protocols, the steps including receiving, for each transaction, electronic point-of-sale transaction data from a remote point-of-sale device; electronically communicating with associated payment networks using protocols specific to the associated payment network to which communications are sent; and for each transaction and point-of-sale transaction data received therefor, using the point-of-sale transaction data to identify participant ID data for at least one participant in the transaction, retrieving business rules data electronically associated with the participant ID data, identifying, from the retrieved business rules, a rewards goal associated with one or more of the associated payment networks, using the identified rewards goal to select one of the payment network interface modules to process electronic payment for the transaction, and controlling the selected payment network interface module to electronically communicate payment data for the transaction data to the module's associated payment network, using protocols specific to the associated payment network, to facilitate payment for the transaction”.
Applicant’s representative is also referred to column 7, lines 19-42 for a similar teaching.
Accordingly, the applicant’s arguments are not persuasive.
The double patenting rejection and the prior 35 USC 101 and 103 rejections are repeated below.
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 1-20 remain 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.
Subject Matter Eligibility Standard
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
Specifically, claims 1 and 15 are directed to a system. Claim 8 is directed to a method. Each of the claims falls under one of the four statutory classes of invention.
If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea).
The claims when the bolded limitations are removed recite the following limitations:
Claim 1 recites:
A system, comprising:
a computing device comprising a processor and a memory; and
machine-readable instructions stored in the memory that, when executed by the processor, cause the computing device to at least:
determine for a scheduled transaction for a first payment network that a recipient of the scheduled transaction is associated with a second payment network based at least in part on a network identifier for the recipient;
generate a payment request representing the scheduled transaction, the payment request comprising the network identifier for the recipient and a participant identifier for the recipient;
forward the payment request to a global transaction router of a supernetwork that is configured to route the payment request from the first payment network to the second payment network.
Claim 2 recites:
receive a payment response for the payment request from the global transaction router, the payment response representing a payment acceptance message; and
adjust a participant account balance for a participant account of a participant system associated with a creator of the scheduled payment.
Claim 3 recites:
send a payment acceptance message to the participant system associated with the creator of the scheduled payment.
Claim 4 recites:
receive a payment response for the payment request from the global transaction router, the payment response representing a payment rejection message; and
send an error message to a participant system associated with a creator of the scheduled payment.
Claim 5 recites:
determine that a trigger has occurred for the scheduled transaction for the first payment network; and
determine that the recipient of the scheduled transaction is associated with the second payment network in response to a determination that the trigger has occurred.
Claim 6 recites:
the schedule specifies a trigger event for the scheduled transaction; and
the event specifies payment information for the scheduled transaction.
Claim 7 recites:
determine that a trigger has occurred for the scheduled transaction for the first payment network; and
identify the network identifier for the recipient and the participant identifier for the recipient in response to a determination that the trigger has occurred.
Claim 8 recites: A method, comprising:
determining for a scheduled transaction for a first payment network that a recipient of the scheduled transaction is associated with a second payment network based at least in part on a network identifier for the recipient;
generating a payment request representing the scheduled transaction, the payment request comprising the network identifier for the recipient and the participant identifier for the recipient;
forwarding the payment request to a global transaction router of a supernetwork that is configured to route the payment request from the first payment network to the second payment network.
Claim 9 recites:
receiving a payment response for the payment request from the global transaction router, the payment response representing a payment acceptance message; and
adjusting a participant account balance for a participant account of a participant system associated with a creator of the scheduled payment.
Claim 10 recites:
sending a payment acceptance message to the participant system associated with the creator of the scheduled payment.
Claim 11 recites:
receiving a payment response for the payment request from the global transaction router, the payment response representing a payment rejection message; and
sending an error message to a participant system associated with a creator of the scheduled payment.
Claim 12 recites:
determining that a trigger has occurred for the scheduled transaction for the first payment network; and
determining that the recipient of the scheduled transaction is associated with the second payment network in response to determining that the trigger has occurred.
Claim 13 recites: wherein the scheduled transaction comprises a schedule and an event, wherein: the schedule specifies the trigger event for the scheduled transaction; and
the event specifies payment information for the scheduled transaction.
Claim 14 recites:
determining that a trigger has occurred for the scheduled transaction for the first payment network; and
identifying the network identifier for the recipient and the participant identifier for the recipient in response to determining that the trigger has occurred.
Claim 15 recites:
determine for a scheduled transaction for a first payment network that a recipient of the scheduled transaction is associated with a second payment network based at least in part on a network identifier for the recipient;
generate a payment request representing the scheduled transaction, the payment request comprising the network identifier for the recipient and the participant identifier for the recipient;
forward the payment request to a global transaction router of a supernetwork that is configured to route the payment request from the first payment network to the second payment network.
Claim 16 recites:
receive a payment response for the payment request from the global transaction router, the payment response representing a payment acceptance message; and
adjust a participant account balance for a participant account of a participant system associated with a creator of the scheduled payment.
Claim 17 recites:
send a payment acceptance message to the participant system associated with the creator of the scheduled payment.
Claim 18 recites:
receive a payment response for the payment request from the global transaction router, the payment response representing a payment rejection message; and
send an error message to a participant system associated with a creator of the scheduled payment.
Claim 19 recites:
determine that a trigger has occurred for the scheduled transaction for the first payment network; and
determine that the recipient of the scheduled transaction is associated with the second payment network in response to a determination that the trigger has occurred.
Claim 20 recites: wherein the scheduled transaction comprises a schedule and an event, wherein: the schedule specifies the trigger event for the scheduled transaction; and the event specifies payment information for the scheduled transaction.
Here, the claimed concept falls into the category of functions of organizing human activities such as performing commercial or legal interactions (including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, business relations) because it amounts to the concept of forwarding a payment to a merchant using a payment network.
The BRI of the claimed limitations describe functions of :
“generating a payment request representing the scheduled transaction, the payment request comprising the network identifier for the recipient and a participant identifier for the recipient, and forwarding the payment request to a global transaction router of a supernetwork that is configured to route the payment request from the first payment network to the second payment network”.
Step 2A, Prong Two: The judicial exception is not integrated into a practical application, In particular, the clams recite the above bolded limitations understood to be the additional limitations.
Performing steps by a generic machine, or server computing device with a memory merely limit the abstraction to a computer field by execution by generic computers. See MPEP 2106.05(1).
As noted in MPEP 2106.04(d), limitations which amount to instructions to implement an abstract idea on a computer or merely using a computer as a tool, limitations which amount to
insignificant extra-solution activity, and limitations which amount to generally linking to a particular technological environment do not integrate a practical exception into a practical application.
Generating data and forwarding data to a router to route data are similar to Alappat, which as noted in MPEP 2106. 05(b)(1) is superseded, and the correct analysis is to look whether the added elements integrate the exception into a practical application or provide significantly more than the judicial exception. The claims in the instant application are performed by one processor or computing device which merely queries for populating a template with data. The claimed payment networks are not performing any functions. The supernetwork performs its expected function which is to route data.
Consideration of these steps as a combination does not change the analysis as it does not add anything compared to when the steps are considered separately. The claims recite a particular sequence of functions of forwarding payment to a merchant using a payment network.
Performance of these steps or functions technologically may present a meaningful limit to the scope of the claim does not reasonably integrate the abstraction into a practical application.
Step 2B: The elements discussed above with respect to the practical application in Step 2A, prong 2 are equally applicable to consideration of whether the claims amount to significantly more. Accordingly, the claims fail to recite additional elements which, when considered individually and in combination, amount to significantly more. Reconsideration of these elements identified as insignificant extra-solution activity as part of Step 2B does not change the analysis.
Positively reciting a “processor” with “memory”, a “first and second payment network” and a “supernetwork” does not change the analysis as these aspects are properly considered as additional elements which amount to instructions to apply it with a computer.
These claimed elements also as found in the dependent claims are also recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using a generic component.
In processing the claims, it is noted that the recitation of these additional elements does not impact the analysis of the claims because these elements in combination are noted only to be one or more of a general purpose computer for performing basic or routine computer functions. The claimed processor is noted to a be a generic computer for querying a remote system or aggregator and for performing known computer functions therein. These additional elements do not overcome the analysis as these elements are merely considered as additional elements which amount to instructions to be applied to the generic computer.
The judicial exception is not integrated into a practical application. In particular, the claimed “processor”, “memory”, “global transaction router”, “system” and payment network” are recited at a high level of generality such they amount to no more than mere instructions to apply the exception using generic components. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Accordingly, claims 1, 8 and 15 are directed to an abstract idea.
The dependent claim(s) when analyzed and each taken as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea.
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.
Claim(s) 1-2, 5-9, 12-16 and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dickelman (US Patent No. 9,141,948 B2) and Law et al ( US Pub. No. 20130085936 A1).
As per claims 1, 8 and 15, Dickelman discloses a system and method for allowing a buyer to
purchase goods/services, and make payment to a desired seller or merchant. The seller or merchant may set a desired payment network automatically or using their profiles to facilitate payments. See the abstract of Dickelman. Accordingly, Dickelman teaches or discloses:
A system, comprising: a computing device comprising a processor and a memory (see figures
1 and 2 of Dickelman; and
machine-readable instructions stored in the memory that, when executed by the processor, cause the computing device to at least:
determine for a scheduled transaction for a first payment network that a recipient of the scheduled transaction is associated with a second payment network based at least in part on a network identifier for the recipient (using a user profile of either or both the buyer and seller to select a desired payment network) see column 9, lines26-64 of Dickelman) (the bolded language is not specifically stated in Dickelman);
generate a payment request representing the scheduled transaction, the payment request comprising the network identifier for the recipient and a participant identifier for the recipient (see column 11, lines 32-53, column 16m, lines 23-63 and column 15, lines 25-63) of Dickelman;
(the scheduled transaction is not specifically stated in Dickelman)
forward the payment request to a global transaction router of a supernetwork that is configured to route the payment request from the first payment network to the second payment network.
See column 11, lines 32-53, column 16m, lines 23-63 and column 15, lines 25-63) of Dickelman;
The supernetwork functions similarly to the account selector of Dickelman.
Dickelman does not explicitly discuss making a scheduled payment to a merchant or seller.
Making scheduled payments to merchants and sellers is old and well-practiced in the art. Law et al. disclose a system and method for scheduling payments to a merchant. See paragraphs [0031] - [0036] of Law et al.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the
invention to incorporate the teachings of Law et al into the system and method of Dickelman in order to allow a user to make a future or reoccurring payment to a merchant thus improving the manner of attracting consumers into a business system or facility.
As per claims 2, 9 and 16, Dickelman teaches or discloses:
wherein the machine-readable instructions, when executed by the processor, further cause the computing device to at least:
receive a payment response for the payment request from the global transaction router, the payment response representing a payment acceptance message;
(See column 11, lines 32-53, column 16m, lines 23-63 and column 15, lines 25-63) of Dickelman);
and adjust a participant account balance for a participant account of a participant system associated with a creator of the scheduled payment. See column 11, lines 32-53, column 16m, lines 23-63 and column 15, lines 25-63) of Dickelman and paragraphs [0031 - [0036] of Law et al.
The payment scheduled is discussed above.
As per claims 5, 12 and 19, the teachings of Dickelman and Law et al are discussed above. The combined teaching does not explicitly state:
determine that a trigger has occurred for the scheduled transaction for the first payment network; and
determine that the recipient of the scheduled transaction is associated with the second payment network in response to a determination that the trigger has occurred.
The Examiner interprets “a trigger has occurred for the scheduled transaction” to be among a plurality of interpretation to be “the time and date or amount, merchant” involved in the transaction.
Since the payment is set for a given date or time or amount, upon arrival at that time payment would have been initiated or triggered to be made in the combination of Dickelman and Law et al using a first and a second payment network found in the user profiles.
As per claims 6, 13 and 20 the teachings of Dickelman and Law et al are discussed above. The combination does not explicitly state:
the schedule specifies a trigger event for the scheduled transaction; and
the event specifies payment information for the scheduled transaction.
The Examiner interprets “a trigger has occurred for the scheduled transaction” to be among a plurality of interpretation to be “the time and date or amount, merchant” involved in the transaction.
Since the payment is set for a given date or time or amount, upon arrival at that time payment would have been initiated or triggered to be made in the combination of Dickelman and Law et al using a first and a second payment network found in the user profiles.
As per claims 7 and 14, the teachings of Dickelman and Law et al are discussed above. The combination does not explicitly state:
determine that a trigger has occurred for the scheduled transaction for the first payment network; and identify the network identifier for the recipient and the participant identifier for the recipient in response to a determination that the trigger has occurred.
The Examiner interprets “a trigger has occurred for the scheduled transaction” to be among a plurality of interpretation to be “the time and date or amount, merchant” involved in the transaction.
Since the payment is set for a given date or time or amount, upon arrival at that time payment would have been initiated or triggered to be made in the combination of Dickelman and Law et al using a first and a second payment network found in the user profiles.
Claim(s) 3-4, 10-11 and 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dickelman (US Patent No. 9,141,948 B2) and Law et al (US Pub.No. 20130085936 A1) as applied to claims 1-2, 8-9 and 19 above, and further in view of McNair Bruce W. (US 10382882 B2).
As per claims 3-4, 10-11 and 17-18, the teachings of Dickelman et al and Law et al are discussed above. Payment confirmation or message is not explicitly stated by the combination of Dickelman and Law et al.
Dickelman and Law et al also do not explicitly state:
send a payment acceptance message to the participant system associated with the creator of the scheduled payment and/or
receive a payment response for the payment request from the global transaction router, the payment response representing a payment rejection message, and send an error message to a participant system associated with a creator of the scheduled payment.
It is well known in the art when a payment is made or scheduled to be made and/or accepted by a merchant, payment confirmation and/or acceptance should be made to all involved parties.
McNair Bruce W. (US 10382882 B2 ) describes interactions between a buyer and seller/merchant for the acceptance or denial of a financial payment transaction. See paragraphs [0020] - [0021] of McNair Bruce W.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to incorporate the teachings of McNair Bruce W. into the combination of Dickelman in order to confirm payment status of all involved parties in a financial transaction.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970);and, In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 remain rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,093,909. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-20 of the instant application are directed to a similar subject matter contained in claims 1-20 of the '909 patent. The only difference between the instant application and the '909 patent is merely a labeling difference. It is noted that all the features of claims 1-20 are contained in claims 1-20 of the '909 patent.
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANTZY POINVIL whose telephone number is (571)272-6797. The examiner can normally be reached M-Th 7:00AM to 5:30PM.
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/FRANTZY POINVIL/Primary Examiner, Art Unit 3693
January 29, 2026