DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application is being examined under the pre-AIA first to invent provisions.
Status of the Claims
Claims 1-20 are presented for examination. Applicant filed a response to non-final Office action on 02/18/2026 amending independent claims 1, 11, and 20; and canceling dependent clams 21-23. In light of Applicant’s amendments, Examiner has withdrawn the previous § 101 rejection. Examiner has, however, established new § 101 rejection for claims 1-20 in the instant Office action. Since the new § 101 rejection was necessitated by Applicant’s amendments, the instant rejection of claims 1-20 is FINAL rejection of the claims.
Examiner’s Remarks
Patent Eligibility under § 101: Applicant is stating in page 13 of Applicant’s Remarks:
[I]nstant claims integrate the alleged abstract idea into a practical applications under Step 2A - Prong 2 because Applicant's claims have now been amended to recite in detail and specifically how the application programming interface directs the fabricator to convert a virtual transaction credit into a physical transaction credit.
Examiner disagrees that this amendment renders instant claims patent eligible under § 101 because there is still a lack of specifics and details regarding the conversion of data inputs by API, i.e., how are the data/inputs converted by API so that the fabricator delivers fabricated transaction credit. As such, instant claims 1-20 remain rejected as unpatentable under § 101. Applicant is invited to set up an interview with Examiner to discuss this issue further and to bring the matter at conclusion.
Prior Art under § 102 and § 103: Examiner has withdrawn the prior art rejection of the instant claims based on the Patent Trial and Appeal Board (PTAB) decision dated 08/21/2018 where the PTAB decided that the prior art reference of record Erikson (US 2007/0228153 A1) fails to teach the limitation:
. . . wherein the reception, decision, and response processors interface with each other to coincidentally receive a user request, determine approval of the request, create a transaction credit account, and distribute the approved transaction credit to a user or third party.
The PTAB elaborated in page 13 of the PTAB decision:
While Erikson explains that credit transactions can be approved and that computer system 300 includes one or more processors, Erikson is silent with respect the function of each individual processor.
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 are rejected under 35 U.S.C. § 101 because they are directed to non-statutory subject matter. The rationale for this finding is explained below.
The Supreme Court in Mayo laid out a framework for determining whether an applicant is seeking to patent a judicial exception itself or a patent-eligible application of the judicial exception. See Alice Corp., 134 S. Ct. at 2355,110 USPQ2d at 1981 (citing Mayo, 566 U.S. 66, 101 USPQ2d 1961). This framework, which is referred to as the Mayo test or the Alice/Mayo test (“the test”), is described in detail in Manual of Patent Examining Procedure (”MPEP”) (see MPEP § 2106(III) for further guidance). The step 1 of the test: It need to be determined whether the claims are directed to a patent eligible (i.e., statutory) subject matter under 35 USC § 101. Step 2A of the test: If the claims are found to be directed to a statutory subject matter, the next step is to determine whether the claims are directed to a judicial exception i.e., law of nature, natural phenomenon, and abstract idea (Prong 1). If the claims are found to be directed to an abstract idea, it needs to be determined whether the claims recite additional elements that integrate the judicial exception into a practical application (Prong 2). Step 2B of the test: If the claims are directed to a judicial exception, the next and final step is to determine whether the claims recite additional elements that amount to significantly more than the judicial exception.
Step 1 of the Test:
When considering subject matter eligibility under 35 USC § 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. Here, the claimed invention of claims 1-10 is a system and, thus, one of the statutory categories of invention. Further, the claimed invention of claims 11-19 is a series of steps, which is method (i.e., a process), which is also one of the statutory categories of invention. Still further, the claimed invention of claim 20 is a computer storage which is also one of the statutory categories of invention.
Conclusion of Step 1 Analysis: Therefore, claims 1-20 are statutory under 35 USC § 101 in view of step 1 of the test.
Step 2A of the Test:
Prong 1: Claims 1-20, however, recite an abstract idea of providing transaction credit. The creation of a system, method, and computer readable medium providing transaction credit as recited in the independent claims 1, 11, and 20, belongs to certain methods of organizing human activity (i.e., commercial interactions – sales activities) that are found by the courts to be abstract ideas. The limitations in independent claims 1, 11, and 20, which sets forth or describes the recited abstract idea, are found in the following steps:
“authenticating the customer by its phone number, address, password, credit, banking, purchase information history, or combinations thereof” (claims 1, 11, and 20);
“determining to approve the request for transaction credit” (claims 1, 11, and 20);
“determining approval of the transaction credit request” (claims 1, 11, and 20);
“creating a transaction credit account” (claims 1, 11, and 20); and
“fabricating a physical form transaction credit, wherein fabricate comprises printing, stamping, or a combination thereof, a visible coding, a tactile coding, or combinations thereof onto an article, or encoding machine readable data onto an article, wherein the article is understood or accepted as representing a negotiable credit, and wherein fabricate comprises an output of the response processor transmitted as a virtual transaction credit via at least a second application programming interface as a command to a fabricator in an email, a uniform resource locator format, an alternative message, or combination thereof to convert the virtual transaction credit into the physical form transaction credit” (claims 1, 11, and 20).
Prong 2: In addition to abstract steps recited above in Prong 1, independent claims 1, 11, and 20, recite additional limitations:
“the computer system comprising a reception processor, a decision processor, a response processor, and one or more sets of instructions encoded on a non-transitory computer-readable medium” (claims 1 and 11);
“a non-transitory computer-readable medium containing one or more sets of encoded instructions which, when executed by a computer system's computer processors, the computer system comprising a reception processor, a decision processor, a response processor” (claim 20);
“a first application programming interface” (claims 1, 11, and 20);
“an accessible resource encoded in the non-transitory computer-readable medium to interface with the reception processor, the decision processor, and the response processor of the system” (claims 1, 11, and 20); and
“the reception, decision, and response processors interfacing with each other” (claims 1, 11, and 20).
These additional elements are recited at a high level of generality (i.e., as a generic processor performing a generic computer functions) such that they amount to no more than mere instructions to apply the exception using a generic computer component. Also, the following additional limitations recite insignificant extra solution activity (for example, data gathering):
“receiving a transaction credit request from a customer” (claims 1, 11, and 20);
“distributing an approved transaction credit, an alternate message, or combinations thereof to the customer or a third party, wherein the transaction credit request is an activation or redemption transaction associated with a product” (claims 1, 11, and 20);
“receiving a user request, wherein the user request may comprise the transaction credit request” (claims 1, 11, and 20);
“distributing the approved transaction credit to the customer or the third party” (claims 1, 11, and 20); and
“distributing the physical form transaction credit, wherein the transaction credit is associated with the product in a catalog of products available in the accessible resource” (claims 1, 11, and 20).
These additional limitations do not integrate the abstract idea into a practical application because they do not impose a meaningful limit on the judicial exception. The additional elements/limitations of independent claims 1, 11, and 20, here do not render improvements to the functioning of a computer or to any other technology or technical field (see MPEP § 2106.05(a)), nor do they integrate the abstract idea into a practical application under MPEP § 2106.05(b) (particular machine); MPEP § 2106.05(c) (particular transformations); or MPEP § 2106.05(e) (other meaningful limitations). Further, the combination of these additional elements/limitations is no more than mere instructions to apply the exception using a generic device. Accordingly, even in combination, these additional elements/ limitations do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Conclusion of Step 2A Analysis: Therefore, independent claims 1, 11, and 20, are non-statutory under 35 USC § 101 in view of step 2A of the test.
Step 2B of the Test: The additional elements of independent claims 1, 11, and 20, (see above under Step 2A – Prong 2) are well-understood, routine, and conventional elements that amount to no more than implementing the abstract idea with a computerized system. Applicant’s Specification describes these additional elements in following terms.
[0052] Turning now to FIG. 1, an embodiment of a system 100 for accepting at least one request 102 for determining approval of and distributing at least one transaction credit (TC) and/or at least one alternate message 136 is disclosed. An alternate message may include a distribution that is not a TC, or that is a rejection or an error message(s) related to a request, as well as messages supplementary or complimentary to distributing a TC, such as but not limited to greeting cards, product information, special offers or advertisements. In an embodiment, the system 100 comprises a processor 106 configured to accept a request 102 which may be received through an application programming interface 104. The request 102 may be received through at least one application programming interface 104 enabled to facilitate access, communication, interface, interaction, and/or use of at least one component, function, element and/or aspect, etc. of at least one processor 106 and/or at least one application 116, as disclosed herein, service and/or resource. The at least one application programming interface 104 may, without limiting its composition or functionality, set rules, conventions, and/or specifications for routines, data structures, object classes, and/or protocols, or their like as may be known in the art. The application programming interface 104 may facilitate interaction with a user, such as but not limited to a client or a customer software program. The at least one processor 106 is configured to interface with a memory unit 114, and may be portioned to comprise a reception processor 108, a decision processor 110, and a response processor 112 configured to interface with each other, alternatively the processor 106 may be configured to perform the functions of the reception processor 108, the decision processor 110, and the response processor 112 sans pardoning. The memory unit 114 may store the at least one application 116. The memory unit 114 may store a message application 118 and an account application 120 associated with the reception processor 108. The account application 120 may create and/or store in the reception processor 108 memory unit 114, a customer account 126. The memory unit 114 may store an evaluation application 122 associated with the decision processor 110. The evaluation application 122 may create and/or store in the decision processor 110, at least one transaction credit (TC) account 128. The memory unit 114 may store an output application 124 associated with the response processor 112. Any application of the system may interface with an accessible resource 130, which is capable of storing and providing all information, data, records, templates, forms, images, or the like as needed by any application of the system. Output of the response processor 112 is transmitted through at least one application programming interface 132 as a virtual TC in email or uniform resource locator 134 format, as an alternate message 136, or as a command to a fabricator 138. The fabricator 138 produces a TC in a physical format for carrier delivery. The at least one application programming interface 132 is enabled to transmit, communicate, interface, interact, and/or output at least one component, function, element, product, and/or aspect, etc. of at least one processor 106 and/or at least one application 116, as disclosed herein, service and/or resource. The at least one application programming interface 132 may, without limiting its composition or functionality, set rules, conventions, and/or specifications for routines, data structures, object classes, and/or protocols, or their like as may be known in the art. The application programming interface 132 may facilitate interaction with user, such as but not limited to a client or a customer software programs.
[0053] Each processor 106-112 and each application 116-124 of the system 100 as embodied by FIG. 1 is capable to interface with any other processor or application of the system to coincidentally receive a user request, create a customer account, issue a user token verify sufficient prepayment or account credit line for requested a TC, approve and distribute a TC, and notification of same, to at least one user or third party. The processors 108-112 and applications 116-124 of the disclosed system 100 may be directly adjacent and physically connected in any manner known in the art, such as but not limited to interconnected hardware modules, integrated circuits, programmable logic arrays, or other devices. The processors 108-112 and applications 116-124 of the disclosed system 100 may be joined as an integrated network of physically separated components integrally functioning via but not limited to distributed, component/object distributed, or parallel processing through Ethernet, Cloud, or other known protocols as may be known in the art.
This is a description of a general-purpose computer. Thus, individually, the additional elements of independent claims 1, 11, and 20, are well-understood, routine, and conventional elements that amount to no more than implementing the abstract idea with a computerized system. Further, the additional limitations of “receiving” and “distributing” information amount to no more than mere instructions to apply the exception using generic computer components. For the same reason these additional limitations are not sufficient to provide an inventive concept. The additional limitations of “receiving” and “distributing” information were considered as insignificant extra-solution activity in Step 2A - Prong 2. Re-evaluating here in Step 2B, they are also determined to be well-understood, routine, and conventional activity in the field. Similarly to OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network), and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network), the additional limitations of independent claims 1, 11, and 20, “receive” and “distribute” information over a network in a merely generic manner. Further, taken as combination, the additional elements/limitations add nothing more than what is present when the elements are considered individually. There is no indication that the combination provides any effect regarding the functioning of the computer or any improvement to another technology.
Conclusion of Step 2B Analysis: Therefore, independent claims 1, 11, and 20, are non-statutory under 35 USC § 101 in view of step 2B of the test.
Dependent Claims: Dependent claims 2-10 depend on independent claim 1; and dependent claims 12-19 depend on independent claim 11. The elements in dependent claims 2-10 and 12-19 which set forth or describe the abstract idea, are:
“the reception processor is configured to receive the request from a third party communicating with the system through a communication network of a client to the system that is authorized to communicate with the system” (claims 2 and 12: insignificant extra solution activity);
“the transaction credit request can be made via selection from a catalog of products available in the system accessible resource” (claim 3: further narrowing the recited abstract idea);
“the accessible resource has not previously contained information about the third party requesting the transaction credit” (claims 4, 13, and 14: further narrowing the recited abstract idea);
“the response processor distributes the approved transaction credit as an email message or uniform resource locator (URL)” (claims 5 and 15: further narrowing the recited abstract idea);
“the response processor distributing the email message of the approved transaction credit also generates and sends a notification to the transaction credit recipient’s social media device” (claims 6 and 16: further narrowing the recited abstract idea);
“the response processor distributes the transaction credit for tangible delivery via output to a fabricator” (claims 7 and 17: further narrowing the recited abstract idea);
“the reception processor is configured to receive a request for customized formatting of the approved transaction credit, the alternate message, or combinations thereof to the recipient of the transaction credit, the decision processor is configured to approve the request, and the response processor is configured to distribute customized formatting of the approved transaction credit, the alternate message, or combinations thereof to the recipient of the transaction credit” (claims 8 and 18: further narrowing the recited abstract idea);
“the requested or distributed customized formatting of the transaction credit, the alternate message, or combinations thereof may be retained in the accessible resource for future access by any processor of the system” (claim 9: further narrowing the recited abstract idea); and
“a single request can be processed to distribute transaction credits for more than one recipient” (claims 10 and 19: further narrowing the recited abstract idea).
Conclusion of Dependent Claims Analysis: Dependent claims 2-10 and 12-19 do not correct the deficiencies of independent claims 1 and 11and they are, thus, rejected on the same basis.
Conclusion of the 35 USC § 101 Analysis: Therefore, claims 1-20 are rejected as directed to an abstract idea without “significantly more” under 35 USC § 101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Gehman, Chuck. "Challenges and Opportunities in Web-To-Print Workflow for Production Digital Printing." NIP & Digital Fabrication Conference. Vol. 24. Society of Imaging Science and Technology, 2008.
Applicant's amendment necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRPI H. KANERVO whose telephone number is 571-272-9818. The examiner can normally be reached on Monday – Friday, 10 am – 6 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Abhishek Vyas can be reached on 571-270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VIRPI H KANERVO/Primary Examiner, Art Unit 3691