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 .
Acknowledgement
The Amendment filed 07/22/2026 is acknowledged.
Status of Claims
Claims 1, 4, 8, 11, 15 and 18 are amended.
Claims 1-20 are pending
Response to Arguments
Double Patenting Rejection
The Applicant’s acknowledgment of the double patent rejection and consideration of filing a terminal disclaimer should the only remaining rejection be double patenting is noted.
35 U.S.C. 102 Rejection
The 35 U.S.C. 102(a)(1) rejection is withdrawn.
Claim Rejections - 35 USC § 112
7. 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.
8. Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for , “[0032] …The systems and methods described herein include a payment services computer system configured to receive a request associated with a payment transaction from a first payment network (e.g., a payment network that is not hosting the payment services) at a second payment network (e.g., a payment network that is hosting the payment services), … “ does not reasonably provide enablement for “…a first network, a first request data signal…”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims. The specification does not clearly enable a requestor computing device associated with a first network a first request data signal.
9. Claims 4, 11 and 18 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 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.
10. Claim 4 recites, “map…one or more service requests associated with the first format associated with the first network to the second format, the second format being associated with one or more second networks.”
11. According to the specification, “[0055]…In alternative embodiments, the translation may include, without limitation, an algorithm for mapping service requests from the first data file format to the second data file format…”
12. The specification does not sufficiently describe how the function is performed or the result is achieved. For example the algorithm or steps/procedure for mapping service requests are not explained are not explained in sufficient detail. In other words, the algorithm or steps/procedure taken to perform the function are not described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. [See MPEP 2161.01 and §§ 2163.02 and 2181, subsection IV].
Allowable Subject Matter
13. Claims 1, 8 and 15 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Conclusion
14. 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 DANIEL S FELTEN whose telephone number is (571)272-6742. The examiner can normally be reached Flex.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan D Donlon can be reached at 5712703602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL S FELTEN/Primary Examiner, Art Unit 3692
DANIEL S. FELTEN
Examiner
Art Unit 3692
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