DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Acknowledgements/Notice to Applicant
This non-Final Office Action is in reply to Applicant’s response filed 4/7/2026 (“Amendment”).
Claims 1, 10, 12, and 21 have been amended.
Claim 14 had been canceled.
Claims 1–13 and 15–21 are pending and have been examined.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/7/2026 has been entered.
Specification Objection
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: “unfunded single-use virtual stored-value card application” in claims 2 and 13.
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 1-13 and 15-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Per claim 1, the claim recites in part receiving, by a first provider from a user, a purchase specific, single-use virtual stored-value card issue request for a purchase transaction, wherein the purchase specific, single-use virtual stored- value card issue request comprises user identification information and user location information, wherein user identification information comprises identification of a particular user’s application or smart chip.
The applicant points to the under identification information that is included in the purchase specific, single-use virtual stored- value card issue request to be that of App ID number 1015 (see page 21 of the Amendment: “Applicant respectfully submits that one of ordinary skill in the art, after reading paragraphs [0006] and [0032] of the Specification, see id, would understand that, at least, paragraphs [0006] and [0032] of the Specification support the claimed element of "receiving, by the first provider from the user via a merchant point of sale, a first authorization request for the purchase transaction, wherein the first authorization request comprises the user identification information [App ID number 1015].")
The claim is rejected as the term “user identification information” in the context of receiving, by a first provider from a user, a purchase specific, single-use virtual stored-value card issue request for a purchase transaction is a genus term but the specification only show insufficient numbers of species, rather discloses only the App ID number 1015, i.e., received by the first provider from a user, a purchase specific, single-use virtual stored-value card issue request, to be either the identification of the particular user’s application or the smart chip.
The other independent claims 10, 12, and 21 are rejected similarly as they include the same deficiency as described above for claim 1.
The dependent claims are rejected as they depend on claim(s) above.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2 and 13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 recites in part wherein the purchase specific, single-use virtual stored-value card issue request comprises information identifying a user's unfunded single-use virtual stored-value card application, wherein the user's unfunded single-use virtual stored-value card application is utilized by the processor of the first provider to associate the user with any unfunded purchase specific, single-use virtual stored-value card issued to the user by the processor of the first provider.
In light of the Specification absent of expression user's unfunded single-use virtual stored-value card application, it is unclear what the expression refers to as. For example, [0032] describes App 1011 sending the stored-value card issuer a request for a new stored-value card by sending one or more request identifiers, including at least, a unique App ID number 1015 identifying the particular user’s App 1011 [i.e., the application or the smart chip]. In light of the disclosure in the paragraph, one of ordinary skill in the art would appreciate that the user’s unfunded single-use virtual stored-value application to be the App ID number. The claim, however, recites in parent claim 1 receiving, by a first provider from a user, a purchase specific, single-use virtual stored-value card issue request for a purchase transaction, wherein the purchase specific, single-use virtual stored- value card issue request comprises user identification information and user location information, wherein the user identification information comprises identification of a particular user's application or smart chip. Here, one of ordinary skill in the art would appreciate that the App ID number that is sent as part of the request is identification of a particular user’s application or smart chip. As such, one of ordinary skill would not be able to ascertain what the expression user's unfunded single-use virtual stored-value card application refers to in the claim in view of the Specification.
Claim 13 is rejected as the claim is significantly similar to claim 2.
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 1-13 and 15-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does not fall within at least one of the four categories of patent eligible subject matter 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.
MPEP 2106 provides step(s) in determining eligibility under 35 U.S.C. § 101. Specifically, 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. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any additional elements in the claim must integrate the judicial exception into a practical application. If not, the inquiry continues to see whether any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include mathematical concepts, mental processes, and certain methods of organizing human activities.
Under Step 1, claims 1-9 (group I) are directed to a method (i.e., process), claims 10-11 (group II) are directed to a method (i.e., process), claims 12-13 and 15-20 (group III) are directed to a system, while claim 21 (group IV) is directed to a method (i.e. process). Thus, the claimed inventions are directed towards one of the four statutory categories under 35 USC § 101. Nevertheless, the claims also fall within the judicial exception of an abstract idea without significantly more.
Group I: Claims 1-9
Step 2A, 1st prong:
Claim 1 recites: A computer implemented method for conducting a purchase specific, single-use virtual stored-value card transaction, performed by computer comprising one or more processors and programming instructions encoded on a non-transitory computer-readable medium which, when the program instructions are executed by the one or more processors, transforms the computer into a particular machine and causes the particular machine to perform the method comprising:
a) receiving, by a first provider from a user, a purchase specific, single-use virtual stored-value card issue request for a purchase transaction, wherein the purchase specific, single-use virtual stored- value card issue request comprises user identification information and user location information, wherein the user identification information comprises identification of a particular user's application or smart chip;
b) providing, by the first provider to the user, when the user location information is recognized by the first provider, a purchase specific, single-use virtual stored-value card, wherein the purchase specific, single-use virtual stored-value card is unfunded and configured for funding via receipt of a first amount of funds from a first third party funding source for the purchase transaction and funding via receipt of a second amount of funds from a second third party funding source for the purchase transaction, wherein providing comprises the purchase specific, single-use virtual stored-value card is instantly issued and delivered to a user's mobile application, and wherein the purchase specific, single-use virtual stored-value card is only used for the purchase transaction;
c) receiving, by the first provider from the user via a merchant point of sale, a first authorization request for the purchase transaction, wherein the first authorization request comprises the user identification information; information identifying the purchase specific, single-use virtual stored- value card; and information identifying a purchase amount;
d) transmitting, by the first provider to a second provider, a second authorization request; wherein the second authorization request comprises at least a portion of the user identification information and a first redemption amount, wherein the second provider maintains a first user redemption account associated with the user and the second provider, wherein the first user redemption account is funded at a time of the purchase transaction by the first third party funding source for the purchase transaction and the second third party funding source for the purchase transaction;
e) receiving, by the first provider from the second provider, an authorization for the purchase specific, single-use virtual stored-value card, wherein the authorization for the purchase specific, single-use virtual stored-value card indicates the purchase specific, single-use virtual stored-value card will be funded for the purchase transaction; and
f) transmitting, by first provider, an authorization response to the merchant point of sale; wherein the authorization response comprises information that the first redemption amount is funded from the first user redemption account.
(Emphasis added on the additional element(s))
The claim under the broadest reasonable interpretation recites a process of b) providing a purchase specific, single-user stored-value card (i.e., payment account) to a user based on a) receiving the card request that comprises user identification information and user location information and based on recognition of the user location information; c) receiving from the user via a merchant a first authorization request for the purchase transaction, the request including user identification information, information identifying the card, and purchase amount; d) transmitting a second authorization request that comprises at least a portion of the user identification information and a first redemption amount to a second provider; e) receiving an authorization for the card from the second provider; and f) transmitting an authorization response indicating that the first redemption amount is funded from the first user redemption account to the merchant. In other word, the claim recites a process in which a payment account that is configured to be funded by two sources is provided to the user and the use of the card account number in a transaction with a merchant in receiving authorization request, sending authorization request to another entity that manages user redemption account, receiving of authorization associated with the authorization request, and transmitting to the merchant of authorization response that indicates funding of the payment account (i.e., card). As such, the claim recites a certain method of organizing human activity, i.e., commercial activity as in sales and/or fundamental economic activity.
The claim further recites functions of the second provider (i.e., not limiting the positively recited step(s)), particularly that the second provider maintains the user redemption account that is funded at a time of the purchase transaction by the first third party funding source and the second third party funding source. However, the concept of funding payment account by entities is also an abstract idea, i.e., i.e., commercial activity as in sales and/or fundamental economic activity. As such claim 1 recites an abstract idea.
Under the Step 2A (prong 2), this judicial exception is not integrated into a practical application. Specifically, the additional elements in the claim(s), i.e. computer-implement, computer, one or more processors, virtual, programming instructions, non-transitory computer-readable medium, particular machine (computer executing the instructions), application, smart chip, instantly, mobile application, and point of sale, are no more than mere instructions to implement the abstract idea, and/or merely uses a computer (i.e., system including a processor and a memory) as a tool to perform an abstract idea – see MPEP 2106.05(f). These limitation, e.g. abstract idea as described above, do not represent: Improvements to the functioning of the computer comprising one or more processors and programming instructions encoded on a non-transitory computer readable medium or to any other technology or technical field - see MPEP 2106.05(a).
The examiner submits that the particular machine merely refers to the computer comprising one of more processor executing computer instructions encoded in a non-transitory computer-readable medium.
Under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e. whether the additional elements amount to significantly more than the exception itself). Here, the claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Specifically, the claims as a whole, taken individually and in combination, do not provide an inventive concept. As explained above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed judicial exception amount to no more than mere instructions to implement the abstract idea on a computer or computer components, and/or merely uses a computer as a tool to perform an abstract idea. Mere instructions to implement the abstract idea on a computer, or merely using the computer as a tool to perform an abstract idea to apply the exception using a generic computer component cannot provide an inventive concept. Looking at the limitations as a combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of the elements improves the functioning of the recited computer system or its components individually or in combination.
Dependent claim 2 further expands on the abstract idea. The additional element of “application” is recited in terms of what the request comprises, i.e., non-functional descriptive material, and intended use by the first provider in associating card to the information.
Dependent claim 3 further expands on the abstract idea without reciting further additional elements identified in the parent claim(s).
Dependent claim 4 further expands on the abstract idea. The additional element of database amounts to no more than mere instructions to implement the abstract idea on a computer or computer components, and/or merely uses a computer as a tool to perform an abstract idea. The claim does not include an inventive concept.
Dependent claims 5-6 further expand on the abstract idea without reciting further additional elements identified in the parent claim(s).
Dependent claims 7-9 further expand on the abstract idea without reciting further additional elements identified in the parent claim(s).
Accordingly, it is determined that claims 1-9 (group I) are directed to non-statutory subject matter under 35 U.S.C. § 101 and are ineligible.
Group II: Claims 10-11
Step 2A, 1st prong:
Claim 10 recites: A computer implemented method for conducting a purchase specific, single-use virtual stored-value card transaction, performed by computer comprising one or more processors and programming instructions encoded on a non-transitory computer-readable medium which, when the program instructions are executed by the one or more processors, transforms the computer into a particular machine and causes the particular machine to perform the method comprising:
a) receiving, by a first provider from a user, a purchase specific, single-use virtual stored-value card issue request for a purchase transaction, wherein the purchase specific, single-use virtual stored- value card issue request comprises user identification information and user location information, wherein the user identification information comprises identification of a particular user's application or smart chip;
b) issuing, by the first provider to the user, when the user location information is recognized by the first provider, a purchase specific, single-use virtual stored-value card, wherein the purchase specific, single-use virtual stored-value card is unfunded and configured for funding via receipt of a first amount of funds from a first third party funding source for the purchase transaction and funding via receipt of a second amount of funds from a second third party funding source for the purchase transaction, wherein the purchase specific, single-use virtual stored-value card is instantly issued and delivered to a user's mobile application, wherein the single-use virtual stored-value card is funded at a time of the purchase transaction by the first third party funding source for the purchase transaction and the second third party funding source for the purchase transaction, and wherein the purchase specific, single-use virtual stored-value card is only used for the purchase transaction.
(Emphasis added on the additional element(s))
The claim under the broadest reasonable interpretation recites a process that recites two steps, i.e., a) receiving a purchase specific, single-user stored-value card (i.e., payment account) request that comprises user identification information and user location information and b) issuing when the user location information is recognized the card to the user. As such, the claim recites a certain method of organizing human activity, i.e., commercial activity as in sales and/or fundamental economic activity.
The claim further recites multiple wherein statements that recite description of data, intended use, intended result, and claim expression(s) that do not affect the positively recited steps of receiving the request and issuing of the card (payment account) to the user. Even if these non-limiting claimed expressions are considered, the expressions recites funding aspect of the card (payment account), i.e., funding via receipt of a first amount of funds from a first third party funding source for the purchase transaction and funding via receipt of a second amount of funds from a second third party funding source for the purchase transaction and the card is funded at a time of the purchase transaction and that the card is only used for the purchase transaction. As such, the claim recites a certain method of organizing human activity, i.e., commercial activity as in sales and/or fundamental economic activity.
Under the Step 2A (prong 2), this judicial exception is not integrated into a practical application. Specifically, the additional elements in the claim(s), i.e. computer-implement, computer, one or more processors, virtual, programming instructions, non-transitory computer-readable medium, particular machine (computer executing the instructions), application, smart chip, instantly, and mobile application, are no more than mere instructions to implement the abstract idea, and/or merely uses a computer (i.e., system including one or more processor and a memory such as non-transitory computer-readable medium storing instructions) as a tool to perform an abstract idea – see MPEP 2106.05(f). These limitation, e.g. abstract idea as described above, do not represent: Improvements to the functioning of the computer comprising one or more processors and programming instructions encoded on a non-transitory computer readable medium or to any other technology or technical field - see MPEP 2106.05(a).
Under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e. whether the additional elements amount to significantly more than the exception itself). Here, the claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Specifically, the claims as a whole, taken individually and in combination, do not provide an inventive concept. As explained above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed judicial exception amount to no more than mere instructions to implement the abstract idea on a computer or computer components, and/or merely uses a computer as a tool to perform an abstract idea. Mere instructions to implement the abstract idea on a computer, or merely using the computer as a tool to perform an abstract idea to apply the exception using a generic computer component cannot provide an inventive concept. Looking at the limitations as a combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of the elements improves the functioning of the recited computer system or its components individually or in combination.
Dependent claim 11 further expands on the abstract idea of receiving a first authorization request (comprising the user identification information, information identifying the issued card, and purchase amount) for the purchase transaction from a merchant, transmitting a second authorization message (comprising at least a portion of the user identification information and a first redemption amount) to a provider that maintains the user redemption account associated with the user, receiving a response to the second authorization request that indicated that the card will be funded for the purchase transaction, and transmitting to the merchant an authorization response (comprising that the first redemption is funded from the user redemption account) as the recitations recite certain method of organizing human activity, i.e., commercial activity as in sales and/or fundamental economic activity.
The additional element of point of sale amount to no more than mere instructions to implement the abstract idea, and/or merely uses a computer (i.e., system including a processor and a memory) as a tool to perform an abstract idea without improvements to the functioning of the computer. The claim also does not include inventive concept.
Accordingly, it is determined that claims 10-11 (group II) are directed to non-statutory subject matter under 35 U.S.C. § 101 and are ineligible.
Group III: Claims 12-13 and 15-20
Step 2A, 1st prong:
Claim 12 recites: A purchase specific, single-use virtual stored-value card transaction system comprising:
a) a funding provider computer comprising a funding provider processor for executing funding provider computer executable instructions stored on funding provider tangible computer readable storage medium, wherein the funding provider executable instructions transform the funding provider computer into a second particular machine and cause the funding provider computer
a1) to establish a first user redemption account with a user and a funding provider; and
b) an issuer provider computer comprising an issuer provider processor for executing issuer provider computer executable instructions stored on issuer provider tangible computer readable storage medium, wherein the issuer provider executable instructions transform the issuer provider computer into a first particular machine and cause the issuer provider computer to:
b1) receive, from the user, a purchase specific, single-use virtual stored-value card issue request for a purchase transaction, wherein the purchase specific, single-use virtual stored-value card issue request comprises user identification information and user location information, wherein the user identification information comprises identification of a particular user's application or smart chip;
b2) issue, to the user, when the user location information is recognized by the issuer provider computer, a purchase specific, single-use virtual stored-value card, wherein the purchase specific, single-use virtual stored-value card is unfunded and configured for funding via receipt of a first amount of funds from a first third party funding source for the purchase transaction and funding via receipt of a second amount of funds from a second third party funding source for the purchase transaction, wherein the purchase specific, single-use virtual stored-value card is instantly issued and delivered to a user's mobile application, and wherein the purchase specific, single-use virtual stored- value card is only used for the purchase transaction;
b3) receive, from the user via a merchant point of sale, a first authorization request for the purchase transaction, wherein the first authorization request comprises the user identification information; information identifying the purchase specific, single-use virtual stored-value card; and information identifying a purchase amount;
b4) transmit, to the funding provider, a second authorization request; wherein the second authorization request comprises at least a portion of the user identification information and a first redemption amount, wherein the funding provider maintains the first user redemption account associated with the user and the funding provider, wherein the first user redemption account is funded at a time of the purchase transaction by the first third party funding source for the purchase transaction and the second third party funding source for the purchase transaction;
b5) receive, from the funding provider, a response to the second authorization request, wherein the response to the second authorization request indicates the purchase specific, single-use virtual stored-value card will be funded for the purchase transaction; and
b6) transmit an authorization response to the merchant point of sale; wherein the authorization response comprises information that the first redemption amount is funded from the first user redemption account.
(Emphasis added on the additional element(s))
The claim under the broadest reasonable interpretation recites a functions of two entities, i.e., a) funding provider and b) an issuer provider, particularly the funding provider a1) to establish a first user redemption account with a user and the issuer provider b1) receive a purchase specific, single-use stored-value card (i.e. payment account) issue request that comprises user identification information and user location information; b2) issue when the user location information is recognized the card to the user by issuing and delivering the card wherein the card is only used for the purchase transaction; b3) receive from the user via a merchant a first authorization request for the purchase transaction, the request including user identification information, information identifying the card, and purchase amount; b4) transmit a second authorization request that comprises at least a portion of the user identification information and a first redemption amount to the funding provider; b5) receive a response (i.e., that the card will be funded for the purchase transaction) to the second authorization request from the funding provider; and b6) transmit an authorization response indicating that the first redemption amount is funded from the first user redemption account to the merchant. In other word, the claim recites a functions of two entities, i.e., funding provider and the issuer, in which a payment account that is configured to be funded by two sources is provided to the user and the use of the card account number in a transaction with a merchant in receiving authorization request, sending authorization request to another entity that manages user redemption account, receiving of authorization associated with the authorization request, and transmitting to the merchant of authorization response that indicates of the funding of the payment account. As such, the claim recites a certain method of organizing human activity, i.e., commercial activity as in sales and/or fundamental economic activity.
The claim further recites functions of the second provider (i.e., not limiting the positively recited step(s)), particularly that the funding provider maintains the user redemption account that is funded at a time of the purchase transaction by the first third party funding source and the second third party funding source. However, the concept of funding payment account by entities is also an abstract idea, i.e., i.e., commercial activity as in sales and/or fundamental economic activity. As such claim 12 recites an abstract idea.
Under the Step 2A (prong 2), this judicial exception is not integrated into a practical application. Specifically, the additional elements in the claim(s), i.e., computer, one or more processors, virtual, computer executable instructions, tangible computer-readable medium, particular machine(s) (computer executing the instructions), application, smart chip, instantly, mobile application, and point of sale, are no more than mere instructions to implement the abstract idea, and/or merely uses a computer (i.e., system including one or more processor and tangible computer readable storage media storing executable instructions) as a tool to perform an abstract idea – see MPEP 2106.05(f). These limitation, e.g. abstract idea as described above, do not represent: Improvements to the functioning of the computer comprising one or more processors and programming instructions encoded on a non-transitory computer readable medium or to any other technology or technical field - see MPEP 2106.05(a).
Under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e. whether the additional elements amount to significantly more than the exception itself). Here, the claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Specifically, the claims as a whole, taken individually and in combination, do not provide an inventive concept. As explained above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed judicial exception amount to no more than mere instructions to implement the abstract idea on a computer or computer components, and/or merely uses a computer as a tool to perform an abstract idea. Mere instructions to implement the abstract idea on a computer, or merely using the computer as a tool to perform an abstract idea to apply the exception using a generic computer component cannot provide an inventive concept. Looking at the limitations as a combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of the elements improves the functioning of the recited computer system or its components individually or in combination.
Dependent claim 13 further expands on the abstract idea. The additional element of “application” is recited in terms of what the request comprises, i.e., non-functional descriptive material, and intended use by the first provider in associating card to the information.
Dependent claim 15 further expands on the abstract idea. The additional element of database amounts to no more than mere instructions to implement the abstract idea on a computer or computer components, and/or merely uses a computer as a tool to perform an abstract idea. The claim does not include an inventive concept.
Dependent claims 16-19 further expand on the abstract idea without reciting further additional elements identified in the parent claim(s).
Dependent claim 20 further expands on the abstract idea. The additional element of the third provider computer comprising a third provider processor for executing third provider computer executable instructions stored on third provider tangible computer readable storage medium and particular machine amount no more than mere instructions to implement the abstract idea on a computer or computer components, and/or merely uses a computer as a tool to perform an abstract idea. The claim does not include an inventive concept.
Accordingly, it is determined that claims 1-13 and 15-20 (group III) are directed to non-statutory subject matter under 35 U.S.C. § 101 and are ineligible.
Group IV: Claim 21
Step 2A, 1st prong:
Claim 21 recites: A computer implemented method for conducting a purchase specific, single-use virtual stored-value card transaction, performed by computer comprising one or more processors and programming instructions encoded on a non-transitory computer-readable medium which, when the program instructions are executed by the one or more processors, transforms the computer into a particular machine and causes the particular machine to perform the method comprising:
a) receiving, by a first provider from a user for use at a merchant point of sale, a purchase specific, single-use virtual stored-value card request for a purchase specific, single-use virtual stored- value card of said merchant for use in a purchase transaction comprising user identification information, user location information; information identifying the purchase specific, single-use virtual stored-value card; information identifying a purchase amount, wherein the user identification information comprises identification of a particular user's application or smart chip, and wherein the single-use virtual stored-value card is configured for funding via receipt of a first amount of funds from a first third party funding source for the purchase transaction and funding via receipt of a second amount of funds from a second third party funding source for the purchase transaction;
b) transmitting, by the first provider to a second provider, when the user location information is recognized by the first provider, a second authorization request; wherein the second authorization request comprises at least a portion of the user identification information, an amount corresponding to the purchase amount, and merchant information, wherein the second provider maintains a user redemption account associated with the user;
c) receiving, by the first provider from the second provider, a response to the second authorization request, wherein the response to the second authorization request indicates the purchase specific, single-use virtual stored-value card will be funded for the purchase transaction;
d) transmitting, by first provider, an authorization response usable by the merchant point of sale; wherein the authorization response comprises information concerning the purchase specific, single-use virtual stored-value card of said merchant;
e) facilitating direct funding of the purchase specific, single-use virtual stored-value card with currency equivalent to the first redemption amount;
f) issuing, instantly, the purchase specific, single-use virtual stored-value card; and
g) delivering, instantly, the purchase specific, single-use virtual stored-value card to a user's mobile application, wherein the purchase specific, single-use virtual stored-value card is only used for the purchase transaction, and wherein a first user redemption account is funded from the first redemption amount, and wherein the first user redemption account is funded at a time of the purchase transaction by the first third party funding source for the purchase transaction and the second third party funding source for the purchase transaction.
(Emphasis added on the additional element(s))
The claim under the broadest reasonable interpretation recites a process of a) receiving from a user at a merchant a purchase specific, single-use stored-value card request for a purchase specific, single use stored-value card of the merchant (i.e., payment account honored by the merchant), the request that comprises user identification information and user location information; b) transmitting to a second provider, when the user location information is recognized, an authorization request comprising at least a portion of the user identification information, purchase amount, and merchant information; c) receiving from the second provider a response to the authorization request that indicates that the card will be funded for the purchase transaction; d) transmitting an authorization response that comprises information concerning the card; e) facilitating direct funding of the card with currency equivalent to a redemption amount; f) issuing the card; and g) delivering the card to the user wherein the card is intended only for use for the purchase transaction. As such, the claim recites a certain method of organizing human activity, i.e., commercial activity as in sales and/or fundamental economic activity.
The claim further recites functions of the second provider (i.e., not limiting the positively recited step(s)), particularly that the second provider maintains the user redemption account that is funded at a time of the purchase transaction by the first third party funding source and the second third party funding source (funding via receipt of a first amount of funds from a first third party source for the purchase transaction and funding via receipt of a second amount of funds from a second third party funding source for the purchase transaction). However, the concept of funding payment account by two sources is also an abstract idea, i.e., i.e., commercial activity as in sales and/or fundamental economic activity. As such claim 1 recites an abstract idea.
Under the Step 2A (prong 2), this judicial exception is not integrated into a practical application. Specifically, the additional elements in the claim(s), i.e. computer-implement, computer, one or more processors, virtual, programming instructions, non-transitory computer-readable medium, particular machine (computer executing the instructions), application, smart chip, instantly, mobile application, and point of sale, are no more than mere instructions to implement the abstract idea, and/or merely uses a computer (i.e., system including a processor and a memory) as a tool to perform an abstract idea – see MPEP 2106.05(f). These limitation, e.g. abstract idea as described above, do not represent: Improvements to the functioning of the computer comprising one or more processors and programming instructions encoded on a non-transitory computer readable medium or to any other technology or technical field - see MPEP 2106.05(a).
The examiner submits that the particular machine merely refers to the computer comprising one of more processor executing computer instructions encoded in a non-transitory computer-readable medium.
Under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e. whether the additional elements amount to significantly more than the exception itself). Here, the claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Specifically, the claims as a whole, taken individually and in combination, do not provide an inventive concept. As explained above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed judicial exception amount to no more than mere instructions to implement the abstract idea on a computer or computer components, and/or merely uses a computer as a tool to perform an abstract idea. Mere instructions to implement the abstract idea on a computer, or merely using the computer as a tool to perform an abstract idea to apply the exception using a generic computer component cannot provide an inventive concept. Looking at the limitations as a combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of the elements improves the functioning of the recited computer system or its components individually or in combination.
Accordingly, it is determined that claims 21 (group IV) is directed to non-statutory subject matter under 35 U.S.C. § 101 and are ineligible.
Claim Rejections - 35 U.S.C. § 103
The following is a quotation of pre-AIA 35 U.S.C. § 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claim 10 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Mendes (US 2013/0346305 A1), in view of Campos (US 2013/0304642 A1) , Vasten (US 8,781,962 B2) (“Vasten”), and Lim (US 2015/0106871 A1) (“Lim”).
As per claim 10, Mendes discloses a computer implemented method for conducting a purchase specific, single-use stored value card transaction, performed by computer comprising one or more processors and programming instructions encoded on a non-transitory computer-readable medium which, when the program instructions are executed by the one or more processors, transforms the computer into a particular machine and causes the particular machine to perform the method ([0070]–[0072]) comprising:
receiving, by a first provider from a user, a purchase specific, single-use stored-value card issue request for a purchase transaction, wherein the purchase specific, single-use virtual stored-value card issue request comprises user identification information
issuing, by the first provider to the user,
Mendes does not expressly disclose the issue request comprises user location information and that the issuing is when the user location is recognized by the first provider.
Campos teaches an issue request comprises user location information and issuing is when the user location is recognized by the first provider ([0048] [0046]).
It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to modify Mendes to include the user location elements of Campos. One would have been motivated to do so in order to reduce fraud (Campos [0046]).
Mendes/Campos does not expressly disclose the funding via receipt of a second amount of funds from a second third party funding source for the purchase transaction.
Vasten teaches funding via receipt of a first amount of funds from a first third party funding source and funding via receipt of a second amount of funds from a second third party funding source for the purchase transaction (col. 1, lines 60-64, funding from other sources; col. 2, lines 39-43, lines 45-46; col. 2, lines 50-55; col. 4, lines 65-67, multiple sources of funding).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to modify Mendes/Campos (i.e., the funding from a first third party funding source) to include the funding taught by Vasten (i.e., funding from both a first third party funding source and a second third party funding source) as the combination improves usability of Mendes/Campos by providing flexibility of funding the payment from multiple sources.
Mendes/Campos/Vasten does not specifically teach that the user identification comprises identification of a particular user’s application, smart chip, or a combination thereof.
Lim, however, teaches user identification comprises app ID (see abstract, app ID is transmitted as part of user information).
It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to include the technique of using app ID for authorizing a request as taught by Lim in order to ensure that the app is reliable (see abstract).
Furthermore, the description of what the user identification comprises is non-functional descriptive material as description does not affect the positively recited step(s) nor the functions of the positively recited structure.
The claim has been amended to recite that the second provider maintain a first user redemption account associated with the user and the second provider, wherein the first user redemption account is funded at a time of the purchase transaction by the first third party funding source for the purchase transaction and the second third party funding source for the purchase transaction. The description of the second provider, i.e., its function of maintaining of a first user redemption account and the description of the first user redemption account, does not move to distinguish over the prior art as the description does not affect the positively recited step(s) of receiving the virtual stored value card and issuing and delivering of the virtual stored value card in a manipulative sense. Furthermore, Vasten teaches funding from both a first third party funding source and a second third party funding source for the purchase transaction (col. 1, lines 60-64, funding from other sources; col. 2, lines 39-43, lines 45-46; col. 2, lines 50-55; col. 4, lines 65-67, multiple sources of funding) while Mendes discloses funding the account at a time of the purchase transaction ([0041], [0045], generate a new virtual caard and top up an amount on the card using payment source).
The applicant is reminded that the claim recites two positively recited steps, i.e., receiving, by a first provider from a user, a purchase specific, single-use virtual stored-value card issue request for a purchase transaction, wherein the purchase specific, single-use virtual stored- value card issue request comprises user identification information and user location information, wherein the user identification information comprises identification of a particular user's application or smart chip and issuing, by the first provider to the user, when the user location information is recognized by the first provider, a purchase specific, single-use virtual stored-value card, wherein the purchase specific, single-use virtual stored-value card is instantly issued and delivered to a user's mobile application.
The recitations of wherein the purchase specific, single-use virtual stored-value card is unfunded and configured for funding via receipt of a first amount of funds from a first third party funding source for the purchase transaction and funding via receipt of a second amount of funds from a second third party funding source for the purchase transaction does not move to distinguish over prior art as the description of the card, i.e., payment account, does not affect the positively recited step(s) in the claim. The applicant is advised to amend the claim to recite the description(s) into a positive step(s).
Furthermore, the recitation of wherein the single-use virtual stored-value card is funded at a time of the purchase transaction by the first third party funding source for the purchase transaction and the second third party funding source for the purchase transaction and wherein the purchase specific, single-use virtual stored-value card is only used for the purchase transaction does not move to distinguish over prior art as the intended use(s) of the card does not affect the positively recited step(s) in the claim. The applicant is advised to amend the claim to recite the description(s) into a positive step(s).
Claims 1–9, 11–13, and 15–21 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Mendes, Campos, Vasten, and Lim, in further view of Hammad (US 2009/0271262 A1).
As per claim 11, Mendes/Campos/Vasten/Lim teaches the computer implemented method for conducting the purchase specific, single-use virtual stored value card transaction of claim 10, further comprising:
receiving, by the first provider from the user via a merchant point of sale, a first authorization request for the purchase transaction (Mendes, [0061]), wherein the first authorization request comprises the user identification information (Mendes, [0061], 122); information identifying the purchase specific, single-use stored-value card (Mendes, [0061], 118); and information identifying a purchase amount (Mendes, [0061], 150; [0054], 150 includes “cost”);
[charging]
receiving, by the first provider from the second provider, a response
transmitting, by the first provider, an authorization response to the merchant point of sale; wherein the authorization response comprises information that the first redemption amount is funded from the first user redemption account (Mendes, [0067]).
Although arguably inherent to Mendes charging a credit card provider or bank for the redemption amount, Mendes/Campos/ Vasten/Lim does not expressly disclose the charging of the predefined payment source includes “transmitting … a second authorization request; wherein the second authorization request comprises at least a portion of the user identification information and [the] first redemption amount,” as claimed, and the receiving the response, which indicates the purchase specific, single-use stored-value card will be funded for the purchase transaction, includes “a response to the second authorization request,” as claimed.
Hammad teaches the well-known charging a predefined payment source by “transmitting … a second authorization request; wherein the second authorization request comprises at least a portion of [ ] user identification information and a first redemption amount” ([0057]; [0026] [0027] [0049] [0056]), as claimed, and receiving a response, which indicates the redemption amount will be funded for the purchase transaction, the response includes “a response to the second authorization request” ([0061]), as claimed.
It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to modify Mendes/Campos/Vasten/Lim to include charging the predefined payment source by transmitting a second authorization request (including a portion of user ID information, e.g., a PIN required by the payment source, as discussed by Mendes) to the payment source, and for the response to include a response to the second authorization request, as taught by Hammad, in order to implement the charging of a payment source in Mendes/Campos/Vasten/Lim using well-known authorization request/response protocols, that is to provide the payment source (e.g., a bank aside from the payment processor 132) with necessary transaction parameters over a network so that the payment source can authorize/validate/authenticate the parameters of the transaction (e.g., amount, PIN, etc.) and to provide the payment processor 132 with a response, over the network, from the payment source, as is well-known in this art, so that assurance of payment from the payment source can be given to the vendor.
Claims 1 and 12 contain language similar to claims 10–11 as discussed in the preceding paragraphs, and for reasons similar to those discussed above, claims 1 and 12 are also rejected under 35 U.S.C. § 103 as unpatentable over the cited references.
As per claim 2, Mendes/Campos/Vasten/Lim/Hammad teaches the computer implemented method for conducting the purchase specific, single-use stored value card transaction of claim 1 wherein the purchase specific, single-use stored-value card issue request comprises information identifying a user’s unfunded single-use stored-value card application, wherein the user’s unfunded single-use stored-value card application is utilized by the processor of the first provider to associate the user with any unfunded purchase specific, single-use stored-value card issued to the user by the processor of the first provider (Mendes, [0022]–[0023] [0033] [0057]; fig. 1, 136).
As per claim 3, Mendes/Campos/Vasten/Lim/Hammad teaches the computer implemented method for conducting the purchase specific, single-use stored value card transaction of claim 2 wherein the purchase specific, single-use stored-value card issue request further comprises information identifying the second provider (Mendes, [0022]–[0023] [0033] [0057]; fig. 1, 136).
As per claim 4, Mendes/Campos/Vasten/Lim/Hammad teaches the computer implemented method for conducting the purchase specific, single-use stored value card transaction of claim 1 wherein the first provider determines whether the first authorization request is a valid user transaction by comparing the user identification information and the information identifying the purchase specific, single-use stored-value card to data maintained in a first provider database (Mendes, at least [0062]).
As per claim 5, Mendes/Campos/Vasten/Lim/Hammad teaches the computer implemented method for conducting the purchase specific, single-use stored value card transaction of claim 1 wherein the purchase specific, single-use stored-value card issue request and the first authorization request are received by the processor of the first provider contemporaneously with a purchase request by the user (Mendes, [0022]; at least figs. 3–4 and description thereof).
As per claim 6, Mendes/Campos/Vasten/Lim/Hammad teaches the computer implemented method for conducting the purchase specific, single-use stored value card transaction of claim 1 wherein the purchase specific, single-use stored-value card issue request and the first authorization request are not received by the processor of the first provider contemporaneously with a purchase request by the user (Mendes, [0022]; at least figs. 3–4 and description thereof).
As per claim 7, Mendes/Campos/Vasten/Lim/Hammad teaches the computer implemented method for conducting the purchase specific, single-use stored value card transaction of claim 1 wherein the first provider is a purchase specific, single-use stored-value card issuer, a purchase specific, single-use stored-value card authorizer, a purchase specific, single-use stored-value card processor, a purchase specific, single-use stored-value card funding source, or combinations thereof (Mendes, 132).
As per claim 8, Mendes/Campos/Vasten/Lim/Hammad teaches the computer implemented method for conducting the purchase specific, single-use stored value card transaction of claim 1 wherein the second provider is a bank account, a credit card account, a stored-value account, an intermediary application or gateway linked to the bank account, the credit card account, the stored-value account, or combinations thereof (Mendes, at least [0031] predefined payment source, e.g., credit card account, provided by a bank or financing company).
As per claim 9, Mendes/Campos/Vasten/Lim/Hammad teaches the computer implemented method for conducting the purchase specific, single-use stored value card transaction of claim 1 further comprising: transmitting, by the processor of the first provider to a third provider, a third authorization request; wherein the third authorization request comprises at least a portion of the user identification information and a second redemption amount, wherein the third provider maintains a second user redemption account associated with the user and the third provider; receiving, by the processor of the first provider from the third provider, a response to the third authorization request; and transmitting, by the processor of the first provider, the authorization response to the merchant point of sale; wherein the authorization response comprises the second redemption amount and wherein the second user redemption account will be decremented in amount corresponding to the second redemption amount (Hammad, [0049] [0056] [0057] [0061]; [0026] [0027]).
Claims 13 and 15–21 contain language similar to claims 1–12 as discussed in the preceding paragraphs, and for reasons similar to those discussed above, claims 13 and 15–21 are also rejected under 35 U.S.C. § 103 as unpatentable over the cited references.
Response to Arguments
The claims are rejected under 112(a) and 112(b), claims 2 and 13 for 112(b), in light of further consideration(s).
In responding 112(a) rejections, the applicant alleges that the specification discloses sufficient numbers of specifies of term “user identification information” in pointing out paragraph [0028] that discloses various information concerning the user. In response, the applicant is reminded that the user identification information is recited in the claim(s) in the context of the receiving of the card request by the first provider. The specification does not particularly mention “user identification information” in describing the content of the request. Rather, the specification describes App 1011, either the application or the smart chip, sent as part of the request.
The applicant asserts that prior art does not teach wherein the single-use virtual stored-value card … configured for funding via receipt of a first amount of funds from a first third party funding source for the purchase transaction and funding via receipt of a second amount of funds from a second third party funding source for the purchase transaction (see page 26 of the Amendment).
The examiner respectfully disagrees. Mendes teaches a single-use stored-value card configured for, i.e., capable of, funding via receipt of a first amount of funds from a first third party funding source for the purchase transaction (see [0031], fund the virtual credit card; [0043]; [0044]; [0058]-[0059]; [0064], funds loaded onto the virtual credit card may be a user selected amount, amount needed to satisfy the transaction, or the like).
Mendes, however, does not teach the funding via receipt of a second amount of funds from a second third party funding source for the purchase transaction. Vasten, however, teaches a card configured to funding via receipt of a first amount of funds from a first third party funding source and funding via receipt of a second amount of funds from a second third party funding source for the purchase transaction (see col. 1, lines 52-54, other sources of funds for loading or for adding to the available balance of a card; col. 1, lines 60-64; col. 2, lines 39-43, lines 45-46; col. 2, lines 50-55; col. 4, lines 65-67, multiple sources of funding; col. 8, lines 4-12, provide funds from the alternate source or sources. Such alternate source or sources may include, but are not limited to, a funding loading network ((such as the Visa ReadyLink network or the Green Dot network), a money transfer network (such as Western Union), or an account of the cardholder (such as a direct deposit account (DDA), or a transfer of credit from one consumer account to another (OCT)); col. 9, lines 43-50, The alternate source of funding may include any suitable source or multiple sources that are requested by the consumer, including but not limited to, a fund loading network (such as the Visa Ready Link network or the Green Dot network), a money transfer network (such as Western Union), or an account of the consumer (such as a direct deposit account (DDA), or a transfer of credit from one account to another (OCT))).
As such, the combination of the prior art teaches the single-use stored-value card … configured for funding via receipt of a first amount of funds from a first third party funding source for the purchase transaction and funding via receipt of a second amount of funds from a second third party funding source for the purchase transaction.
In response to applicant's arguments against the references individually (i.e., Vasten is silent to funding at the time of a payment transaction to complete the payment transaction), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the action, Mendes was relied on funding at the time of a payment transaction to complete the payment transaction.
In regard to the claimed limitation of wherein the first user redemption account is funded at a time of the purchase transaction by the first third party funding source for the purchase transaction and the second third party funding source for the purchase transaction, the description is in the context of the second provider, i.e., that the second provider maintains a first user redemption account associated with the user and the second provider. The description of the second provider, i.e., its function of maintaining of a first user redemption account and the description of the first user redemption account, does not move to distinguish over the prior art as the description does not affect the positively recited step(s) of receiving the virtual stored value card and issuing and delivering of the virtual stored value card in a manipulative sense. Furthermore, Vasten teaches funding from both a first third party funding source and a second third party funding source for the purchase transaction (col. 1, lines 60-64, funding from other sources; col. 2, lines 39-43, lines 45-46; col. 2, lines 50-55; col. 4, lines 65-67, multiple sources of funding) while Mendes discloses funding the account at a time of the purchase transaction ([0041], [0045], generate a new virtual card and top up an amount on the card using payment source).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Patent Publication No. 20040111361 discloses stored value card account allowing funding by multiple sources.
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/STEVEN S KIM/Primary Examiner, Art Unit 3698
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