throbber
VIA eFILE
`
`JENS C. JENKINS
`OFFICE DIRECT: 801-321-8937
`
`EMAIL: jjenkins@WNLAW.COM
`
`PATENT APPLICATION
`Docket No. 18756.8.1.1.1
`
`IN THE UNITED STATES PATENT AND TRADEMARKOFFICE
`
`In re application of
`
`Michael A. Liberty
`
`Serial No.:
`
`13/964,707
`
`Filed:
`
`August 12, 2013
`
`Conf. No.:
`
`4347
`
`)
`
`Art Unit
`) 3691
`)
`
`For:
`
`MONETARY TRANSACTION SYSTEM
`
`Examiner:
`
`EDWARD CHANG
`
`Customer No.:
`
`22913
`
`AMENDMENT “B” AND RESPONSE
`AFTER NON-FINAL WITH TWO (2) MONTH EXTENSION OF TIME
`
`VIA eFILE AMENDMENT
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`DearSir:
`
`In response to the Non-Final Office action mailed July 10, 2014 (paper no. 20140703),
`
`please amendthe above-identified application as follows:
`
`Amendments to the Claimsare reflected in the listing of claims which begins on page 2
`
`of this paper.
`
`Remarks/Arguments begin on page 17 of this paper.
`
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`Application No. 13/964,707
`Amendment “B”
`Reply to Non-Final Office Action mailed July 10, 2014
`
`AMENDMENTS TO THE CLAIMS
`
`Thislisting of claims replacesall pr
`
`10r Versions
`
`, andlistings, of cla
`
`ims in
`
`the appl
`
`ication
`
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`
`funds at an agent branch us
`
`ei
`
`agent branch over one of a plurality of channels connected to the
`
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`ystem comprising
`
`a mob
`
`ile device configured to run a monetary transact
`
` +
`
`8
`
`aySeRYeh
`
`rer
`
`2SSE
`Sain
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`tks.
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`
`that performs one or more transact
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`aine
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`op
`
`subscr
`
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`Application No. 13/964,707
`Amendment “B”
`Reply to Non-Final Office Action mailed July 10, 2014
`
` ge
`a
`the
`system,
`indicating that the subscriber desires to deposit a specified amount of funds into
`
`communication
`
`the subscriber's mobile wallet account;
`
` 1validating the status of the subscriber's mobile
`
`wallet account;
`4h
`TF
` : determining if the agent branch is authorized to
`
`receive subscriber-deposited money;
`
`with the specified amount of funds when the agent bank is authorized to receive
`
`: crediting the subscriber's mobile wallet account
`
`the subscriber-deposited money;
`
`
`“system of claim 1,
`
`2notifying the subscriber that the specified amount of
`
`funds was deposited in the subscriber's mobile wallet account over at least one of
`
`the plurality of channels connected to the ses system.
`
`2.
`
`COMPUTINS
`
`sey
`
`postpaid phone.
`
`4.
`
`(Currently Amended) The « system of claim 1,
`
`wherein notifying the subscriber that the specified amount of funds was deposited in the
`
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`Application No. 13/964,707
`Amendment “B”
`Reply to Non-Final Office Action mailed July 10, 2014
`
`subscriber's mobile wallet account over at least one of the plurality of channels connected to the
`
`
`5.
`
`(Currently Amended) The «
`
`‘an-system of claim 4,
`
`wherein the digital receipt is presented to the subscriber within the monetary transaction system
`
`application.
`
`6.
`
`(Currently Amended) The “a-system of claim 1,
`
`wherein validating the status of the subscriber's mobile wallet account comprises determining
`
`that at least one account associated with the subscriber has sufficient funds to perform a funds
`
`transfer.
`
`7.
`
`(Currently Amended) The cor
`
`wherein notifying the subscriber that the specified amount of funds was deposited in the
`
`subscriber's mobile wallet account over at least one of the plurality of channels connected to the
`
`monetary transaction system comprises sending an email or text message to the subscriber.
`
`8.
`
`ce
`(Currently Amended) The co
`
`
`2 Monetaryassschar-system of claim 7,
`
`
`wherein the email message or text message includes a transaction receipt that identifies at least
`
`one of the amount deposited and the identity of the agency bank.
`
`9.
`
`(Currently Amended) The
`
`
`
` fary-isansactas-system of claim 1,
`
`further comprising authenticating the subscriber including:
`
`sending a request for a unique identifier to the subscriber;
`
`receiving the unique identifier from the subscriber; and
`
`upon receiving the unique identifier from the subscriber, authenticating the subscriber to
`
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`Application No. 13/964,707
`Amendment “B”
`Reply to Non-Final Office Action mailed July 10, 2014
`
`10.
`
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`system comprising
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`
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`
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`
`that performs one or more transact
`
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`
`whe
`
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`
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`funds at an agent branch using
`
`subscriber over one of a plurality of channels connected to the
`
`ic communication indicating that the
`
`Oo
`
`ommunication from the
`
`subscriber desires
`
`to withdraw a specified amount of funds from the subscriber's
`2
`
`mobile wallet account at the agent branch
`
`wallet account
`
`2
`
`13>
`
`dating
`
`the status of the subscriber's mobile
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`

`Application No. 13/964,707
`Amendment “B”
`Reply to Non-Final Office Action mailed July 10, 2014
`
`
`
`mobile wallet account is sufficient to accommodate the requested withdrawal for
`
`the specified amount of funds;
`
` _returning a secure, perishable withdrawal code to
`
`the subscriber over at least one of the plurality of channels connected to the
`
`monetary transaction system;
`
`
`
` g ‘receiving subsequent agent branch communication
`
`over at
`
`least one of the plurality of channels connected to the monetary
`
`transaction system,
`
`the
`
`agent branch communication indicating that
`
`the
`
`withdrawal code has been presented to the agent branch;
`
`
`
`‘adebiting the subscriber's mobile wallet account by
`
`the specified amount of funds;
`
`
`
`funds was withdrawn from the subscriber's mobile wallet account over at least
`
`one of the channels connected to the s3¢
`
`11.
`
`(Currently Amended) The: s-system of claim 10,
`
`wherein notifying the subscriber that the specified amount of funds was withdrawn from the
`
`subscriber's mobile wallet account over at least one of the plurality of channels connected to the
`
`4en-system comprises sending a digital receipt to the subscriber.
`
`
`
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`

`Application No. 13/964,707
`Amendment “B”
`Reply to Non-Final Office Action mailed July 10, 2014
`
`
`
` 13. (Currently Amended) The ¢ menctastussackes-system of claim 10,
`
`
`
`wherein validating the status of the subscriber's mobile wallet account comprises determining
`
`that at
`
`least one account associated with the subscriber has sufficient funds to make a
`
`withdrawal.
`
`14.
`
`
`
`(Currently Amended) The ce sacties-system of claim 10,
`
`wherein notifying the subscriber that the specified amount of funds was withdrawn from the
`
`subscriber's mobile wallet account over at least one of the plurality of channels connected to the
`
`uan-system comprises sending an email or text message to the
`
`
`subscriber.
`
`15.
`
`(Currently Amended) The eonwat transaction-system of claim 14,
`
`wherein the email message or text message includes a transaction receipt that identifies at least
`
`one of the amount deposited and the identity of the agency bank.
`
`16.
`
`(Currently Amended) The sain a-system of claim 10,
`
`further comprising authenticating the subscriber including:
`
`sending a request for a unique identifier to the subscriber;
`
`receiving the unique identifier from the subscriber; and
`
`upon receiving the unique identifier from the subscriber, authenticating the subscriber to
`
`
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`

`

`Application No. 13/964,707
`Amendment “B”
`Reply to Non-Final Office Action mailed July 10, 2014
`
`SC»S°c5PgosySocmES8E5-©68&5>=3~83ralS°saa2&sa4
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`
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`1om&2>aSt8=+OoéSQaSe<a5p3ao°¢ov¢"Osw&%&‘o4oOoO2ossOoee~QQ°aOo¢gS8oo=sgeZ>#5£Re=€&@“os£83sofooO3xZnSE&caFs
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`Application No. 13/964,707
`Amendment “B”
`Reply to Non-Final Office Action mailed July 10, 2014
`
`
`
`ORY
`
` ri_debiting the specified payment method by
`
`the specified amount of funds;
`
`
`specified recipient over at least one
`
`the
`
`
`of
`
`channels
`
`connected
`
`to
`
`notifying the subscriber that the specified
`
`amountof funds wastransferred to the specified recipient over at least one
`
`of
`
`the
`
`plurality
`
`of
`
`channels
`
`connected
`
`to
`
`the monetary 18.
`
`(Currently Amended) The:
`
`POS iEe:
`
`ea-system of claim 17,
`
`wherein validating the status of the specified recipient comprises performing a check on the
`
`specified recipient to comply with the office of foreign assets control.
`
` tem system of claim 18, 19.
`(Currently Amended) The co:
`wherein the moneyis transferred internationally between the mobile wallets.
`
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`Application No. 13/964,707
`Amendment “B”
`Reply to Non-Final Office Action mailed July 10, 2014
`
`
`
` 20. (Currently Amended) The ¢ ai-system of claim 17,
`
`
`
`further comprising performing one or more of a limit check and a velocity check on the
`
`subscriber's mobile wallet account.
`
`21-24. (Cancelled).
`
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`Application No. 13/964,707
`Amendment “B”
`Reply to Non-Final Office Action mailed July 10, 2014
`
`25.
`
`(New) One or more computer-readable hardware storage devices having stored
`
`computer-executable instructions which, when executed by one or more processors of a
`
`computing system, implement a method for method for facilitating a deposit of funds at an agent
`
`branch using a subscriber mobile wallet account,
`
`wherein the computing system includes:
`
`a mobile device configured to run a monetary transaction system
`
`application;
`
`a database storing a subscriber profile for a subscriber, the database also
`
`storing a subscriber mobile wallet account that is credited through at least one
`
`agent entity that accepts cash from the subscriber in exchange for transmitting
`
`electronic information to the computing system that is adequate to credit the
`
`mobile wallet account of the subscriber;
`
`the one or more processors,
`
`including at
`
`least a transaction system
`
`processor that performs one or more transactions specified by the subscriber
`
`through one or more computer interfaces; and
`
`the one or more computer-readable hardware storage devices; and
`
`wherein the method includes:
`
`the computing system receiving an electronic communication from an
`
`agent branch over one of a plurality of channels connected to the computing
`
`system, the electronic communication indicating that the subscriber desires to
`
`deposit a specified amount of funds into the subscriber's mobile wallet account;
`
`the computing system validating the status of the subscriber's mobile
`
`wallet account;
`
`the computing system determining if the agent branch is authorized to
`
`receive subscriber-deposited money;
`
`the computing system crediting the subscriber's mobile wallet account
`
`with the specified amount of funds when the agent bank is authorized to receive
`
`the subscriber-deposited money;
`
`the computing system debiting an electronic account associated with the
`
`agent branchin the specified amount;
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`Application No. 13/964,707
`Amendment “B”
`Reply to Non-Final Office Action mailed July 10, 2014
`
`the computing system returning a notification to the agent branch
`
`confirming the deposit; and
`
`the computing system notifying the subscriber that the specified amount of
`
`funds was deposited in the subscriber's mobile wallet account over at least one of
`
`the plurality of channels connected to the computing system.
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`Application No. 13/964,707
`Amendment “B”
`Reply to Non-Final Office Action mailed July 10, 2014
`
`26.
`
`(New) One or more computer-readable hardware storage devices having stored
`
`computer-executable instructions which, when executed by one or more processors of a
`
`computing system, implement a method for method for facilitating a withdrawal of funds at an
`
`agent branch using a mobile wallet account of a subscriber,
`
`wherein the computing system includes:
`
`a mobile device configured to run a monetary transaction system
`
`application;
`
`a database storing a subscriber profile for a subscriber, the database also
`
`storing a subscriber mobile wallet account comprised of an eMoneybalance that
`
`is credited through at least one of an employer bank account, a government bank
`
`account or an agent entity that accepts cash from the subscriber in exchange for
`
`transmitting electronic information to the computing system that is adequate to
`
`credit the mobile wallet account of the subscriber;
`
`the one or more processors,
`
`including at
`
`least a transaction system
`
`processor that performs one or more transactions specified by the subscriber
`
`through one or more computer interfaces; and
`
`the one or more computer-readable hardware storage devices; and
`
`wherein the method includes:
`
`the computing system receiving an electronic communication from the
`
`subscriber over one of a plurality of channels connected to the computing system,
`
`the electronic communication indicating that the subscriber desires to withdraw a
`
`specified amount of funds from the subscriber's mobile wallet account at the agent
`
`branch;
`
`the computing system validating the status of the subscriber's mobile
`
`wallet account;
`
`the computing system determining if the eMoney balance of the
`
`subscriber's mobile wallet account is sufficient to accommodate the requested
`
`withdrawalfor the specified amount of funds;
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`Application No. 13/964,707
`Amendment “B”
`Reply to Non-Final Office Action mailed July 10, 2014
`
`the computing system returning a secure, perishable withdrawal code to
`
`the subscriber over at least one of the plurality of channels connected to the
`
`monetary transaction system;
`
`the computing system receiving subsequent agent branch communication
`
`over at
`
`least one of the plurality of channels connected to the monetary
`
`transaction system,
`
`the
`
`agent branch communication indicating that
`
`the
`
`withdrawal code has been presented to the agent branch;
`
`the computing system debiting the subscriber's mobile wallet account by
`
`the specified amount of funds;
`
`the computing system crediting an electronic account associated with the
`
`agent branchin the specified amount;
`
`the computing system returning a notification to the agent branch
`
`confirming the withdrawal; and
`
`the computing system notifying the subscriber that the specified amount of
`
`funds was withdrawn from the subscriber's mobile wallet account over at least
`
`one of the channels connected to the computing system.
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`Application No. 13/964,707
`Amendment “B”
`Reply to Non-Final Office Action mailed July 10, 2014
`
`27.
`
`(New) One or more computer-readable hardware storage devices having stored
`
`computer-executable instructions which, when executed by one or more processors of a
`
`computing system, implement a method for method for facilitating a transfer of money from a
`
`mobile wallet account of a subscriber,
`
`wherein the computing system includes:
`
`a mobile device configured to run a monetary transaction system
`
`application;
`
`a database storing a subscriber profile for a subscriber, the database also
`
`storing a subscriber mobile wallet account comprised of an eMoneybalance;
`
`the one or more processors,
`
`including at
`
`least a transaction system
`
`processor that performs one or more transactions specified by the subscriber
`
`through one or more computer interfaces; and
`
`the one or more computer-readable hardware storage devices; and
`
`wherein the method includes:
`
`the computing system receiving an electronic subscriber communication
`
`over one of a plurality of channels connected to the computing system,
`
`the
`
`electronic subscriber communication indicating that an subscriber desires to
`
`transfer a specified amount of funds to a specified recipient using the subscriber's
`
`mobile wallet;
`
`the computing system validating the status of the subscriber’s mobile
`
`wallet account;
`
`the computing system determining if the eMoney balance of the
`
`subscriber's mobile wallet account is sufficient to accommodate the requested
`
`withdrawalfor the specified amount of funds;
`
`the computing system validating the status of the specified recipient to
`
`determine whether the specified recipient also has a valid mobile wallet account;
`
`and
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`Application No. 13/964,707
`Amendment “B”
`Reply to Non-Final Office Action mailed July 10, 2014
`
`wherein if it is determined that the specified recipient does have a valid
`
`mobile wallet account,
`
`the method further
`
`includes the computing system
`
`performing the following:
`
`the computing system debiting the Money balance by the specified
`
`amountof funds;
`
`the computing system transferring the specified amount of funds to
`
`the valid mobile wallet account of the specified recipient over at least one
`
`of the plurality of channels connected to the computing system; and
`
`the computing system notifying the subscriber that the specified
`
`amountof funds wastransferred to the specified recipient over at least one
`
`of the plurality of channels connected to the computing system, and
`
`wherein if it is determined that the specified recipient does not
`
`have a valid mobile wallet account,
`
`the method further includes the
`
`computing system generating and sending a notification to the specified
`
`recipient with instructions on how to obtain the transferred money.
`
`28.
`
`(New) The computing system of claim 1, wherein the subscriber is an unbanked
`
`subscriber, the unbanked subscriber being a subscriber that does not have access to a bank
`
`account or credit union account.
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`Application No. 13/964,707
`Amendment “B”
`Reply to Non-Final Office Action mailed July 10, 2014
`
`REMARKS
`
`The Non-Final Office Action, mailed July 10, 2014, considered and rejected all of the
`
`claims, 1-24, based on a 35 U.S.C. §101 rejection for purported abstractness.
`
`By this paper, claims 1-20 have been amended, claims 21-24 have been cancelled, and
`
`new claims 25-28 have been added, such that claims 1-20 and 25-28 are now pending. Claims1,
`
`10, 17 and 25-27 are the independent claims at issue. Support for the claim amendments is
`
`found throughout the originally filed application and claims, including the disclosure presented
`
`in at least paragraph [0038], [0057] - [0058] and disclosure related to Figures 1, 3, 4 and 5A-5B,
`
`as discussed during the recent in person interview.
`
`Personal Interview
`
`Applicant expresses appreciation to the Examiner for the courtesies extended during the
`
`in person interview held on September 2, 2014. The claim amendments and remarks submitted
`
`in this paper are consistent with the amendments and remarks presented during the course of the
`
`interview and which should be found to overcomethe existing rejections of record. Accordingly,
`
`entry of this amendment and favorable reconsideration of the pending claims is respectfully
`
`requested.
`
`35 U.S.C. §101 Rejections
`
`The only rejections to the claims are 101 rejections. However, for at least the reasons
`
`discussed during the interview, for the reasons referenced below, and in view of the clarifying
`
`amendments that have been made to the pending claims, it is respectfully submitted that all of
`
`the 101 rejections are now moot.
`
`The 101 rejections to the claims are based on the assertion that the claims are directed
`
`towards an abstract idea.
`
`In particular, the Office has indicated that the claims are abstract
`
`because they are related to ‘conducting monetary transactions’ and because the claims ‘do not
`
`include limitations that are “significantly more” than the abstract idea because the claims do not
`
`include an improvement
`
`to another technology or technical field, an improvement
`
`to the
`
`functioning of the computeritself, or meaningful limitations beyond generally linking the use of
`
`an abstract idea to a particular technological environment.’ (OA p. 2)
`
`Applicant respectfully disagrees with this rejection.
`
`Page 17 of 19
`
`IPR2022-00976
`Fintiv Ex. 2016 | Page 17 of 19
`
`IPR2022-00976
`Fintiv Ex. 2016 | Page 17 of 19
`
`

`

`Application No. 13/964,707
`Amendment “B”
`Reply to Non-Final Office Action mailed July 10, 2014
`
`Initially, it is noted that all of the claims are directed to specific embodiments for the
`
`utilization of mobile wallets. While mobile wallets can be used to conduct financial transactions,
`
`there are many technical difficulties associated with conducting certain financial transactions
`
`(even electronically) that require technical solutions (such as those that are now claimed). By
`
`way of example, there are instances in whichit is not practical to utilize a credit card (e.g.,
`
`transferring money between two individuals).
`
`In some instances, a participant may not have
`
`access to a regular bank accountor a credit card (e.g., an unbanked subscriber, as recited in claim
`
`28). In these instances, it can be difficult to conduct financial transactions.
`
`The present invention, while it is not limited to either of the foregoing examples, provides
`
`computing systems and corresponding hardware storage devices that can be usedto facilitate the
`
`transfer of funds, deposit funds and withdrawal funds with a user’s mobile wallet account, even
`
`whenthe subscriber/participant is an unbanked subscriber that does not have access to a regular
`
`bank accountor credit union (claim 28).
`
`There are currently six independent claims that are all related to the use of a mobile
`
`wallet. Claims 1 and 25, for example, recite embodiments for facilitating the deposit of funds
`
`using mobile wallets. Claims 10 and 26 recite embodiments for facilitating the withdrawal of
`
`funds using mobile wallets. Claims 17 and 27 recite embodiments for facilitating a transfer of
`
`funds using mobile wallets.
`
`There are currently two different types of claims,
`
`including
`
`computing systems (claims 1, 10 and 17) and corresponding hardware storage devices (claims
`
`25-27).
`
`Each of these claims includes computing hardware that is specifically configured to
`
`facilitate the use of mobile wallets by storing and interfacing with the corresponding mobile
`
`wallet accounts. The claims also require that the mobile wallet accounts are credited through at
`
`least one agent entity that accepts cash from a subscriber in exchange for transmitting electronic
`
`information to the claimed computing systems in such a wayas to credit the mobile wallet
`
`accounts of the subscribers.
`
`These claimed systemsfor facilitating the use of mobile wallets cannot be performed by
`
`any generic computer, as asserted by the Office.
`
`Instead, the claims can only be performed on
`
`computing systems that are specifically configured with the specified hardware that is now
`
`claimed,to facilitate the storing and interfacing of the mobile wallet accounts.
`
`Page 18 of 19
`
`IPR2022-00976
`Fintiv Ex. 2016 | Page 18 of 19
`
`IPR2022-00976
`Fintiv Ex. 2016 | Page 18 of 19
`
`

`

`Application No. 13/964,707
`Amendment “B”
`Reply to Non-Final Office Action mailed July 10, 2014
`
`The foregoing is particularly relevant for situations, like claim 28, which requires that the
`
`subscriber with the mobile wallet is an unbanked subscriber, and for the situations, like claim 20,
`
`which requires the processing of a limit check and/or a velocity check, as discussed during the
`
`interview.
`
`Forat least the foregoing reasons, it is respectfully submitted that the rejections of record
`
`are now mootand that the pending claimsare in immediate condition for allowance.
`
`In the event that the Examiner finds remaining impediment to a prompt allowanceofthis
`
`application that may be clarified through a telephone interview, the Examiner is requested to
`
`contact the undersigned attorney at 801-533-9800.
`
`The Commissioner is hereby authorized to charge paymentof any of the following fees
`
`that may be applicable to this communication, or credit any overpayment, to Deposit Account
`
`No. 23-3178:
`
`(1) any filing fees required under 37 CFR § 1.16; (2) any patent application and
`
`reexamination processing fees under 37 CFR § 1.17; and/or (3) any post issuance fees under 37
`
`CFR § 1.20. In addition, if any additional extension of time is required, which has not otherwise
`
`been requested, please consider this a petition therefore and charge any additional fees that may
`
`be required to Deposit Account No. 23-3178.
`
`Dated this 10th day of December, 2014.
`
`Respectfully submitted,
`
`/Jens C. Jenkins/
`
`JOHN C. STRINGHAM
`Registration No. 40,831
`JENS C. JENKINS
`Registration No. 44,803
`WORKMAN | NYDEGGER
`Attorneys for Applicant
`Customer No. 22913
`
`JCS:JCI:ae
`48935461
`
`Page 19 of 19
`
`IPR2022-00976
`Fintiv Ex. 2016 | Page 19 of 19
`
`IPR2022-00976
`Fintiv Ex. 2016 | Page 19 of 19
`
`

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