Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
This action is in response to the amendment filed 11/5/2025. Applicant has amended claim 11 and cancelled claims 6-7, 15, 17 and 21. Claims 1-5 and 8-10 are withdrawn. Accordingly, claims 11-14, 16 and 18-20 are pending for examination.
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 11-14, 16 and 18-20 are 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.
Claim 11 recites the abstract idea of “completing transaction via transfer of values between consumer accounts”, which is grouped under “Certain Methods of Organizing Human Activity” such as “fundamental economic principles or practices” (managing financial information or transactions) (MPEP 2016.04(a)). Specifically, claim 11 recites “an exchange between consumers”, “maintaining…a first consumer account which is usable by a first consumer and a second consumer account which is useable by a second consumer”, “receiving…information from…that a first consumer desires to exchange a first….appearing in the first consume account for a value…”, “receiving…from the first consumer, a description of the first … and the value desired by the first consumer for the first …, wherein prior to receiving the information … the first…..for purchases from at least one retailer of goods or services and wherein the first consumer is not the at least one retailer”, “…display to consumers ……….of the value desired by the first consumer for the first…”, “completing….the gift card transaction immediate via a transfer of values between the first consumer account and the second consumer account, wherein immediately means when the value desired by the first consumer for the first …is available to the first consumer, and wherein the transfer of values comprises …transferring the value desired by the first consumer into the first consumer account”, “…a second …to the second consumer account maintained and ….the first…”. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP 2106.04II), the additional elements of claim 11 such as “by the enterprise infrastructure”, “via the one or more processors executing the executable instructions”, “network terminal”, “causing…display on a personal computer, laptop, handheld device, mobile phone or any other display device” and “digitally” represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular technological environment or field of use. With respect to “physical gift card has been enabled”, “issuing a second gift card”, “cancelling the first gift card” and “at least one of the applications operating on the electronic data farm serves is configured to transform binary data into digital data”, the claim lacks detail regarding what “issuing”, “cancelling”, “enabling” and “configured” comprise (MPEP 2106.05(f)(1)) and do not provide a practical application. Furthermore, the claimed “applications operating on the electronic data interchange farm servers increase efficiency in data processing and storage via directly accessing a database of the enterprise infrastructure” describes only the result “increase efficiency in data processing and storage” but not how efficiency is increased other than to say “via directly accessing a database of the enterprise infrastructure”. Therefore, as Applicant has neither placed a restriction on how “issuing”, “cancelling”, “enabling”, “configuring (configured to)” and “accessing” are performed nor describe how the functions are accomplished the limitations do not integrate the abstract idea into a practical application as they are no more than “apply it” (MPEP 2106.05(f)(1)).
When analyzed under step 2B (MPEP 2106.04II), because the additional elements do no more than represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use, they do not provide an improvement to computer functionality, or an improvement to another technology or technical field and, therefore, do not amount to significantly more than the judicial exception itself (MPEP 2106.05(I)(A)(f)&(h)).
Hence, claim 11 is not patent eligible.
Depending claims 12-14, 16 and 18-20 further recite “providing…the first consumer an option to cancel the transaction prior to transferring the value of the first…to the second consumer account (claim 12)”, “verifying…a balance associated with the first … (claim 13)”, “making…a determination that the value of the first…can be transferred…. and based upon such determination, transferring…. the value of the first …. to the second consumer account (claim 14)”, “wherein the value desired by the first consumer is less than the balance associated with the first …. (claim 16)”, “transmitting…. data regarding one or more offers relating to the transaction (claim 18)”, “transmitting…data regarding the transaction to at least one retailer (claim 19)” and “wherein said displaying is through an … program (claim 20)”, which is grouped under “Certain Methods of Organizing Human Activity” such as “fundamental economic principles or practices” (managing financial information or transactions) (MPEP 2016.04(a)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP 2106.04II), the additional elements of claims 12-14, 16 and 18-20, such as “by the enterprise infrastructure via the one or more processors executing the executable instructions (claim 12, 13, 14, 18, 19)”, “gift card” (claims 12, 13, 14)”, “electronically (claim 13, 14)” and “online web based (claim 20) represent the use of a computer as a tool to perform an abstract idea and /or does no more than generally link the abstract idea to a particular field of use.
When analyzed under step 2B (MPEP 2106.04II), because the additional elements do no more than represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use, they do not provide an improvement to computer functionality, or an improvement to another technology or technical field and, therefore, do not amount to significantly more than the judicial exception itself (MPEP 2106.05(I)(A)(f)&(h)).
Hence, depending claims 12-14, 16 and 18-20 are not patent eligible.
Claim Rejections - 35 USC § 112
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.
Claims 11-14, 16 and 18-20 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. More specifically, independent claim 11 recites “at least one of the applications operating on the electronic data interchange farm serves is configured to transform binary data into digital data” but the specification does not sufficient describe how the application is configured to achieve the result (how is the binary data transformed using the application?). Claims 11 also recites “the applications …. increase efficiency in data processing and storage via directly accessing a database” but the specification does not sufficiently describe how efficiency in data processing and storage is achieved. All claims dependent from claim 11 inherit the same rejections under 35 U.S.C. 112, 1st paragraph.
The claimed invention, considered as a whole, is not taught by the prior arts (effective filing date 7/27/2006) found in Examiner’s search, therefore no 102/103 rejections is provided.
Related But Not Relied Upon
Relevant prior art cited but not applied: Thomson et al. US 2005/0278188 A1, directed to account card management.
Response to Arguments
Applicant's arguments filed 11/5/2025 have been fully considered but they are not persuasive.
Applicant argues that the claims are statutory under 35 U.S.C. 101 because 1) similar to Enfish, the claims directed to improvement in computer-related technology 2) cancel a first gift card results in significantly reducing system’s memory requirements 3) the computer system is improved because the claims recite “increase efficiency in data process and storage” 4) the claims are not directed to abstract idea 5) the claim are “utilized by humans” and require “network terminal”, “a physical card”, “a personal computer, laptop, handheld device, mobile phone or any other display device 6) the application is configured to transform binary data into digital data 7) all recited elements are not present in the prior art 8) the claimed limitations are not “well-understood, routine, and conventional in the field” 9) the claims are directed to improvement to technologies in the marketplace and address business challenge particular to the Internet. The Examiner disagrees. In response to applicant’s argument that the claims are similar to Enfish, it is noted that in Enfish, the distinction to reject the § 101 challenge at stage one was applied because the claims focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement—a particular database technique—in how computers could carry out one of their basic functions of storage and retrieval of data. Enfish, 822 F.3d at 1335–36; see Bascom, 2016 WL 3514158, at *5; cf. Alice, 134 S. Ct. at 2360 (noting basic storage function of computer). The present case is different: the focus of the claims is not on such an improvement in how computers could carry out one of their basic functions of storage and retrieval of data, but merely use computer as
tools to receive and retrieve data. The additional elements “by the enterprise infrastructure”, “via the one or more processors executing the executable instructions”, “network terminal”, “causing…display on a personal computer, laptop, handheld device, mobile phone or any other display device” and “digitally” represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular technological environment or field of use. In response to applicant’s argument that cancel a first gift card results in significantly reducing system’s memory requirements, it noted that the claims lack detail regarding what “cancelling” comprise (MPEP 2106.05(f)(1)) and do not provide a practical application. Since the claims do not describe how “reducing memory” is accomplished, the limitations do not integrate the abstract idea into a practical application as they are no more than “apply it” (MPEP 2106.05(f)(1)). In response to applicant’s argument that the claims recite “the claims recite “increase in data process and storage”, it is noted that the claims describe only the result “increase efficiency in data processing and storage” but not how efficiency is increased other than to say “via directly accessing a database of the enterprise infrastructure” and therefore the limitations do not integrate the abstract idea into a practical application as they are no more than “apply it” (MPEP 2106.05(f)(1)). In response to applicant’s argument that the claims are not directed to abstract idea, it is noted that the claims recite the abstract idea of “completing transaction via transfer of values between consumer accounts”, which is grouped under “Certain Methods of Organizing Human Activity” such as “fundamental economic principles or practices” (managing financial information or transactions) (MPEP 2016.04(a)). In response to applicant’s argument that the claims are utilized by humans and require “network terminal”, “a physical card”, “a personal computer, laptop, handheld device, mobile phone or any other display device, it is noted that these additional elements represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular technological environment or field of use (please see detailed 101 rejections above). In response to applicant’s argument that the applications are configured to transform binary data into digital data, the claim lacks detail regarding what “configuring” comprise and how the result (transform into digital data) is achieved (MPEP 2106.05(f)(1)) and do not provide a practical application. In response to applicant argument that since the Office Action itself does not reject the claims under 102 or 103 thus the claims are novel for 101, it is noted that this argument- sounding in 102 novelty- is beside the point for a 101 inquiry. See Amdocs (Isr.) Ltd v. Openet Telecom, Inc., No 1:10cv910 (LMB/TRJ), 2014 WL 5430956, at *11 (E.D. Va Oct. 24, 2014). In response to applicant’s argument the claims are not well-understood, routine or conventional, applicant is reminded that if an examiner had previously concluded under Step 2A that an additional element was insignificant extra-solution activity they should reevaluate such conclusion in Step B (please see at least MPEP 2106.05 (g)) and if such reevaluation indicates that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that an inventive concept is present. In this case, since the examiner has not concluded under Step 2A that any element is “insignificant extra-solution activity”, no reevaluation of whether the elements are “routine and conventional” is needed. Therefore, applicant’s arguments are not persuasive. In response to applicant’s argument that the claims address challenge particular to the internet, it is noted the claims do no more than represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use, they do not provide an improvement to computer functionality, or an improvement to another technology or technical field and, therefore, do not amount to significantly more than the judicial exception itself (MPEP 2106.05(I)(A)(f)&(h)) *please see detailed 101 rejection above. Therefore, applicant’s arguments are not persuasive.
Conclusion
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.
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/CHIA-YI LIU/Primary Examiner, Art Unit 3692