DETAILED ACTION
Acknowledgements
This Office Action is in response to Applicant’s response/application filed on 04/23/2025.
The Examiner notes that citations to United States Patent Application Publication paragraphs are formatted as [####], #### representing the paragraph number.
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 .
Status of Claims
Claims 1-20 are currently pending and have been examined.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “verification engine” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
Claim(s) 1-7, 9-12, 17, 18, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nix (WO 2006004794), in view of Bueche (US 11900755).
Regarding claim(s) 1, Nix discloses:
a) generating, at least in part by a verification engine comprising a hash function, payment instrument verification system (PIVS) data, wherein the hash function outputs a unique string of characters for a payment instrument associated with a payor; (By disclosing, “It is common to use hash functions in digital signature schemes in a "hash and sign" manner. To create a digital signature in this way, the sender of a message applies a hash function to the message, thus computing a message digest or hash value for the message. The sender then applies his private key to the hash value to obtain his digital signature for that message….In a typical electronic check [(payment instrument)] payment scheme, a user pays a merchant tor a transaction by providing a digital signature to a piece of data that identifies the transaction.” (Page 52 paragraph 4-6; Page 91 paragraph 2));
(b) detecting, from payment instrument data received from a payee, a subset of information associated with a payment instrument associated with the payee; (By disclosing, “In a typical electronic check payment scheme, a user pays a merchant tor a transaction by providing a digital signature to a piece of data that identifies the transaction. The data may identify, among other things, the user, the user's bank account number, the merchant, the amount to be paid, the time of the transaction, and/or the information, services, or merchandise that has been purchased. Typically, the merchant deposits the electronic check that he receives from the user by sending the check to the bank.” (Page 52, paragraph 5-6));
(c) processing the data received from the payee to determine authenticity of the payment instrument associated with the payee; (By disclosing, “The authenticity of the digital signature, as well as the integrity of the contents of the message, can be verified using the sender's public key and the hash function that was used to create the signature. The receiver can verify that the message was indeed signed by the sender by recomputing the hash value for the message, and then applying a verification procedure that takes as inputs this hash value and the sender's public key. The verification procedure might say, for example, to use the sender's public key as a decryption key and to accept the signature as valid if the decryption yields the recomputed hash value of the message.” (Page 52 paragraph 6)); and
(d) blocking a transfer of funds from the payor to the payee upon determining a lack of authenticity of the payment instrument associated with the payee. (By disclosing, “The bank at its discretion and/or according to its policies, may refuse to pay for a check under certain circumstances, such as when the user's account is in arrears, when the user's certificate is revoked, or when the merchant or user is suspected of attempted fraud of some sort.” (Page 70 paragraph 4; Page 51 paragraph 3 – Page 52 paragraph 6)).
Nix does not disclose, but Bueche teaches:
processing the data received from the payee using at least a PIVS database comprising the PIVS data (By disclosing, “Each user may have a separate account stored locally on the user computing device, at a financial institution server, or in cloud storage that stores previously captured checks and images from that user that is used to build a history for that user and that may be used to train a machine learning/artificial intelligence-type model to profile the user for authentication and fraud prevention in future remote deposit transactions.” (Col 25 lines 53-65 of Bueche)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Nix in view of Bueche to include techniques of processing the data received from the payee using at least a PIVS database comprising the PIVS data. Doing so would result in an improved invention because this would allow the system to verify the authenticity of the check based on previous valid checks, thus improve the security of the claimed invention.
Regarding claim(s) 2, Nix discloses:
generating the PIVS data based at least in part on the unique string of characters and a payor's private key. (By disclosing, “It is common to use hash functions in digital signature schemes in a "hash and sign" manner. To create a digital signature in this way, the sender of a message applies a hash function to the message, thus computing a message digest or hash value for the message. The sender then applies his private key to the hash value to obtain his digital signature for that message.” (Page 52 paragraph 5-6)).
Regarding claim(s) 3, Nix discloses:
comparing a portion of the PIVS data that was generated by the hash function to the subset of information received from the payee. (By disclosing, “The authenticity of the digital signature, as well as the integrity of the contents of the message, can be verified using the sender's public key and the hash function that was used to create the signature. The receiver can verify that the message was indeed signed by the sender by recomputing the hash value for the message, and then applying a verification procedure that takes as inputs this hash value and the sender's public key. The verification procedure might say, for example, to use the sender's public key as a decryption key and to accept the signature as valid if the decryption yields the recomputed hash value of the message. If verification succeeds, the receiver may be confident that the sender actually signed the message and that the message was not altered since it was signed.” (Page 52 paragraph 5-6)).
Regarding claim(s) 4, Nix discloses:
wherein the subset of information comprises the PIVS data, payor name, payor address, payment amount, date, routing number, account number, check number, or electronic signature. (By disclosing, “In a typical electronic check payment scheme, a user pays a merchant tor a transaction by providing a digital signature to a piece of data that identifies the transaction. The data may identify, among other things, the user, the user's bank account number, the merchant, the amount to be paid, the time of the transaction, and/or the information, services, or merchandise that has been purchased. Typically, the merchant deposits the electronic check that he receives from the user by sending the check to the bank.” (Page 52, paragraph 5-6)).
Regarding claim(s) 5, Nix discloses:
wherein the payment instrument comprises a check, and wherein payment instrument data comprises one or more of payor's information, payee's information, date, amount, account information, check number, or a check memorandum section. (By disclosing, “In a typical electronic check payment scheme, a user pays a merchant tor a transaction by providing a digital signature to a piece of data that identifies the transaction. The data may identify, among other things, the user, the user's bank account number, the merchant, the amount to be paid, the time of the transaction, and/or the information, services, or merchandise that has been purchased. Typically, the merchant deposits the electronic check that he receives from the user by sending the check to the bank.” (Page 52, paragraph 5-6)).
Regarding claim(s) 6, Nix does not disclose, but Bueche teaches:
prior to (a), generating an image of the check based at least in part on the payment instrument associated with the payor. (By disclosing, “The encoding process may be a perceptual hash (or pHash) technique 1100 that transforms original check image 1102 into a hashed representation that allows for a family of slight variations in the appearance of a check (e.g., different lighting, folds, tears, etc.) to be clustered in a node representing the variations of a learnt check 1104 that allows for a more robust comparison of an input check to prior check information.” (Col 13 lines 1-27 of Bueche)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Nix in view of Bueche to include techniques of prior to (a), generating an image of the check based at least in part on the payment instrument associated with the payor. Doing so would result in an improved invention because this would allow the user to submit the check data easily by capturing only an image of the check.
Regarding claim(s) 7, Nix does not disclose, but Bueche teaches:
wherein the image comprises a scanned copy of a physical check comprising the check, wherein the physical check is handwritten or printed. (By disclosing, “Similarly, the techniques and systems described herein are contemplated for and may be used with any form or document whose image may be captured with a scanner, camera, or other imaging device for subsequent storage and/or processing.” (Col 5 lines 42-60 of Bueche)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Nix in view of Bueche to include techniques of wherein the image comprises a scanned copy of a physical check comprising the check, wherein the physical check is handwritten or printed. Doing so would result in an improved invention because this would allow the user to submit the check data easily even if the check is a physical check.
Regarding claim(s) 9, Nix does not disclose, but Bueche teaches:
wherein the image comprises a digitally generated image without a physical check or a scanned copy thereof. (By disclosing, “Also at 1303, a deposit request is initiated. The deposit request may include selecting an account in which to deposit the check. In an implementation, the user may select a “deposit check” option provided on a graphical user interface (GUI) displayed on the computing device 109. The user may also input one or more of the following check information through the GUI: check amount, date, the account the check funds should be deposited in, comments, routing number, or other check data.” (Col 17 lines 42-50 of Bueche)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Nix in view of Bueche to include techniques of wherein the image comprises a digitally generated image without a physical check or a scanned copy thereof. Doing so would result in an improved invention because this would allow the user to generate a digital check without a physical check.
Regarding claim(s) 10, Nix does not disclose, but Bueche teaches:
wherein the digitally generated image comprises the PIVS data on the image. (By disclosing, “For example, a signature or a memo line entry on a check may overlap the MICR information (which contains routing or account number information).” (Col 12 lines 20-22 of Bueche)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Nix in view of Bueche to include techniques of wherein the digitally generated image comprises the PIVS data on the image. Doing so would result in an improved invention because this would allow the system to authenticate the check based on the PIVS data.
Regarding claim(s) 11, Nix does not disclose, but Bueche teaches:
wherein the PIVS data does not overlap the payment instrument data on the check. (By disclosing, the MICR data does not overlap the other payment instrument data on the check (Fig. 2 of Bueche)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Nix in view of Bueche to include techniques of wherein the PIVS data does not overlap the payment instrument data on the check. Doing so would result in an improved invention because this would allow the system to extract all the check data from the check image.
Regarding claim(s) 12, Nix does not disclose, but Bueche teaches:
transmitting the image of the check to the payee. (By disclosing, “Within the technological field of remote deposit, a payor may present a check, either in paper or electronic versions, to a payee for deposit.” (Col 2 lines 39-41 of Bueche)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Nix in view of Bueche to include techniques of transmitting the image of the check to the payee. Doing so would result in an improved invention because this would allow the payee to store the check image for future reference.
Regarding claim(s) 17, Nix discloses:
wherein the payment instrument comprises a digital negotiable instrument (DNI), and wherein payment instrument data comprises one or more of a version of a DNI data structure, a version of a DNI record, an identification of the payee using a public key associated with the payee, an identification of the payor using a public key associated with the payor, an amount of the DNI, a creation day or time, an update day or time, a digital signature of the payor, a digital signature of the payee, a number of permissible transactions, a duration of time to negotiate or settle the DNI, a negotiable indicator, a funds guarantee indicator, an identification of a financial entity, a status of the DNI, optional data associated with processing of the DNI, or one or more types of metadata associated with the financial obligation. (By disclosing, “After verifying the digital signature on an electronic check, the bank may credit the merchant with an appropriate amount, and may debit the user with an appropriate amount. ” (Page 53 paragraph 2-3 of Nix)).
Regarding claim(s) 18, Nix does not disclose, but Bueche teaches:
wherein the payment instrument comprises a digital draft, and wherein payment instrument data comprises one or more of a version of a digital draft data structure, a version of a digital draft record, an identification of the payee using a public key associated with the payee, an identification of the payor using a public key associated with the payor, an amount of the digital draft, a creation day or time, a digital signature of the payor, a digital signature of the payee, a number of permissible transactions, a duration of time to negotiate or settle the digital draft, a negotiable indicator, a funds guarantee indicator, an identification of a financial entity, a status of the digital draft, optional data associated with processing of the digital draft, or one or more types of metadata associated with the financial obligation. (By disclosing, “A money order is a trusted financial instrument that is a payment order for a pre-specified amount of money. It is a more trusted method of payment than a personal check because the funds for the amount shown on the money order must be prepaid.” (Col 4 line 57 – Col 5 line 6 of Bueche)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Nix in view of Bueche to include techniques of wherein the payment instrument comprises a digital draft, and wherein payment instrument data comprises an amount of the digital draft. Doing so would result in an improved invention because this would enlarge the functionality of the claimed invention.
Regarding claim(s) 20, Nix does not disclose, but Bueche teaches:
transmitting to one or both of a payor device or a payee device a notification of a failed transaction, and displaying the notification in real-time. (By disclosing, “Application of the duplicate check detection model 1000 will allow the remote server receiving the check image for the mobile computing device to cease check processing and send a rejection message to the mobile computing device for display on the mobile computing device” (Col 13 lines 10-15 of Bueche)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Nix in view of Bueche to include techniques of transmitting to one or both of a payor device or a payee device a notification of a failed transaction, and displaying the notification in real-time. Doing so would result in an improved invention because this would allow the user to acknowledge the result of the transaction in real-time.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nix (WO 2006004794), in view of Bueche (US 11900755), further in view of Brown (US 8020756).
Regarding claim(s) 8, Nix does not disclose, but Brown teaches:
after generating the image, electronically augmenting or superimposing the PIVS data over the image of the check. (By disclosing, superimposing a digital signature on a check image (Claim 9, Col 3 line 33- Col 4 line 8 of Brown)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Nix and Bueche, in view of Brown to include techniques of after generating the image, electronically augmenting or superimposing the PIVS data over the image of the check. Doing so would result in an improved invention because this would allow the system to authenticate the check based on the superimposed data.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nix (WO 2006004794), in view of Bueche (US 11900755), further in view of Santacesaria (WO 2014102707).
Regarding claim(s) 13, Nix does not disclose, but Santacesaria teaches:
wherein the image comprises a QR code that reveals the PIVS data when scanned. (By disclosing, “The procedure then comprises a transformation step 23, in which the signed basic information 2a is transformed into a machine legible format, more in particular into a format easily legible by a machine by means of an image, more in particular a barcode and even more in particular a barcode of the QR type.” (Page 9 lines 9-12, Fig. 1 of Santacesaria)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Nix and Bueche, in view of Santacesaria to include techniques of wherein the image comprises a QR code that reveals the PIVS data when scanned. Doing so would result in an improved invention because this would allow the system to encrypt more information of the check in the QR code.
Claim(s) 14, 15, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nix (WO 2006004794), in view of Bueche (US 11900755), further in view of Carlton (US 20140236820).
Regarding claim(s) 14, Nix does not disclose, but Carlton teaches:
after (d), receiving an image of the check from the payee to validate the check. (By disclosing, “In some embodiments, a soft decline may indicate that mobile device 201 may attempt the deposit request again, and/or that the consumer may consider alternate options for initiating the transaction.” ([0046] of Carlton); and “Upon receipt of the message, processor platform 207 may, in some embodiments, send a message to mobile device 201, indicating that the image usability analysis process failed, and that mobile device 201 can attempt the deposit request again after capturing a new check image.” ([0112] of Carlton)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Nix and Bueche, in view of Carlton to include techniques of after (d), receiving an image of the check from the payee to validate the check. Doing so would result in an improved invention because this would allow the system to better extract the check data from the check image.
Regarding claim(s) 15, Nix does not disclose, but Bueche teaches:
after receiving the image of the check, extracting the subset of information associated with the payment instrument associated with the payee. (By disclosing, “At 1405, the institution system 205 identifies the check image from the digital image file based on the selected edge coordinates. From the identified check image, the check data contained within the check image may be extracted.” (Col 20 line 35-50 of Bueche)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Nix and Carlton, in view of Bueche to include techniques of after receiving the image of the check, extracting the subset of information associated with the payment instrument associated with the payee. Doing so would result in an improved invention because this would allow the system to authenticate the check based on the extracted information.
Regarding claim(s) 16, Nix does not disclose, but Bueche teaches:
after extracting the subset of information, providing the additional payment instrument data to the PIVS database to re-assess the authenticity of the check. (By disclosing, “At 1407, after retrieving the financial information from the check in an electronic data representation form, the institution system 205 determines whether the financial information is valid.” (Col 20 line 35-Col 21 line 4 of Bueche)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Nix and Carlton, in view of Bueche to include techniques of after extracting the subset of information, providing the additional payment instrument data to the PIVS database to re-assess the authenticity of the check. Doing so would result in an improved invention because this would allow the system to double check the authenticity of the check to increase the accuracy of the authentication.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nix (WO 2006004794), in view of Bueche (US 11900755), further in view of Price (US 7068832).
Regarding claim(s) 19, Nix does not disclose, but Price teaches:
wherein the PIVS database comprises a table or array that links the PIVS data to the payment instrument associated with the payor . (By disclosing, “The check images are then stored on an image file server 175 and the check images are linked to their respective check data record in database 170.” (Col 5 lines 27-29 of Price)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Nix and Bueche, in view of Price to include techniques of wherein the PIVS database comprises a table or array that links the PIVS data to the payment instrument associated with the payor. Doing so would result in an improved invention because this would allow the system to retrieve the PIVS data associated with the payment instrument more efficiently.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20060112013 to Maloney for disclosing determine a first hash value for an electronic check image, with the check image operable to generate an image replacement document. The hash value is associated with the electronic check image. The electronic check image and the associated hash value is communicated to a recipient for processing.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DUAN ZHANG whose telephone number is (571)272-4642. The examiner can normally be reached Mon - Fri 10 AM-5 PM.
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, Neha Patel can be reached at 571-270-1492. 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.
/DUAN ZHANG/Primary Examiner, Art Unit 3699