DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
Claims 1-20 filed January 21, 2026 are pending.
Claim Rejections - 35 USC § 101
3. 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.
4. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
5. Step 1 Statutory Category: Claims 1-7 are directed to a method, claims 8-14 are directed to a system, and claims 15-20 are directed to a non-transitory computer readable storage medium, all of which are statutory classes of invention.
6. Step 2A – Prong 1: Judicial Exception Recited: Nevertheless, independent claims 1, 8, and 15 recite an abstract idea of communicating purchases made using a gift card.
The independent claims 1, 8, and 15 recite the following limitations which fall under commercial or legal interactions:
…
…
…
receiving a request from a benefactor… to establish an electronic gift card account for a beneficiary, wherein the request includes authorization to fund the electronic gift card account with a designated sum of money… to receive the request from the benefactor and receive a request from the beneficiary to purchase an item using at least a portion of the account credit from the electronic gift card account;
in response to the request from the benefactor, creating an electronic gift card account record… wherein the electronic gift card account record stores an identifier of the beneficiary, an account credit equal to the designated sum of money, and contact information of the benefactor;
receiving the request from the beneficiary to purchase an item using at least a portion of the account credit from the electronic gift card account;
transforming electronically maintained data of the item into a perceptible digitized representation of the item;
and in response to the request from the beneficiary:
authorizing the requested purchase;
sending an electronic gift message to the benefactor using the contact information of the benefactor stored in the electronic gift card account record, wherein the electronic gift message includes the perceptible digitized representation of the item, includes the identifier of the beneficiary, and indicates that the beneficiary has used credit from the electronic gift card account to purchase the purchased item.
7. According to the MPEP, "Commercial interactions" or "legal interactions" include agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. Clearly, communicating purchases made using a gift card falls under sales activities, therefore commercial or legal interactions. If the claim limitations, under the broadest reasonable interpretation, covers performance of the limitations as a commercial or legal interaction but for the recitation of generic computer elements, then it falls within the “Commercial or Legal Interactions (Certain Methods of Organizing Human Activity)” grouping of abstract ideas. Accordingly, the claims recite an abstract idea.
8. Step 2A – Prong 2: Practical Application: This judicial exception is not integrated into a practical application because the claims as a whole merely describes the concept of communicating purchases made using a gift card using these generally recited computer elements such as a server computer, one or more processors, a memory, one or more programs, database, remote device, mobile device, telephony network, and Internet. These additional elements of a server computer, one or more processors, a memory, one or more programs, database, remote device, mobile device, telephony network, and Internet in these steps are recited at a high-level of generality such that it amounts to more than mere instructions to apply the exception using a generic computer component, and are merely invoked as tools to perform the communicating of purchases made using a gift card. Accordingly, these elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Simply implementing the abstract idea on a generic computing environment is not a practical application of the abstract idea, and does not take the claim out of the Commercial or Legal Interactions subgrouping of Certain Methods of Organizing Human Activity grouping. The claims are directed to an abstract idea.
9. Step 2B – Inventive Concept: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered individually and as an ordered combination, they do not add significantly more (also known as “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of a server computer, one or more processors, a memory, one or more programs, database, remote device, mobile device, telephony network, and Internet to perform these steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Accordingly, these additional elements, do not change the outcome of the analysis, when considered individually and as an ordered combination as there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The claims are not patent eligible.
10. Regarding dependent claims 2-3, 5-7, 9-10, 12-14, 16-17, and 19-20 the claims are directed to limitations which merely narrow the abstract idea of communicating purchases made using a gift card, and these claims neither integrate into a practical application nor contain additional elements which amount to significantly more than the abstract idea.
11. Regarding dependent claims 4, 11, and 18, the claims are directed to limitations which serve to limit by a digital camera and mobile device. Although the claims recite a generally recited mobile device and digital camera, these claims merely narrow the abstract idea of communicating purchases made using a gift card, and these claims neither integrate into a practical application nor contain additional elements which amount to significantly more than the abstract idea.
12. Therefore, the limitations of the inventions, when viewed individually and in ordered combination, are directed to ineligible subject matter.
Examiner Notes
13. Claims 1-20 are novel and unobvious over the prior art, however, there remains a pending 35 U.S.C. 101 rejection. Finally, the Examiner suggests incorporating more hardware from the Specification and any unique arrangements of hardware, unique hardware, or unique ways the hardware is communicating. The aforementioned claim suggestions, in combination together, is suggested to help advance prosecution forward, although further search, examination, and consideration is required.
14. After further search and consideration, the most pertinent U.S. prior art was found to be Isaacson et al (US 2012/0150729) and Wilen et al (US 2010/0017278). Isaacson et al (US 2012/0150729) is directed to processing group gift cards using a temporary, limited scope social networking entity. Wilen et al (US 2010/0017278) is directed to an interactive gifting system and method. Khoury et al (A Peer-to-Peer Collaborative Virtual Environment for E-Commerce, NPL) was found to be the most pertinent NPL prior art, and is directed to e-commerce using a peer-to-peer collaborative virtual environment.
15. However, both the most pertinent U.S. prior art and NPL fail to disclose all of the limitations particularly:
transforming electronically maintained data of the item into a perceptible digitized representation of the item;
sending an electronic gift message to the benefactor using the contact information of the benefactor stored in the electronic gift card account record, wherein the electronic gift message includes the perceptible digitized representation of the item, includes the identifier of the beneficiary, and indicates that the beneficiary has used credit from the electronic gift card account to purchase the purchased item.
16. No prior art cited here or in any previous Office Action neither fully anticipates nor supports a conclusion of obviousness with respect to the subject matter present in the independent claims, either alone or in combination. The limitations lacking in the prior art, in combination with the other limitations clearly claimed in the application, are novel and unobvious.
Response to Arguments
17. Applicant's arguments filed 1/21/26 have been fully considered and are not found to be convincing. As discussed previously, the applicant’s arguments with regarding the double patenting rejection is convincing as a terminal disclaimer has been filed as of March 5, 2023, therefore the double patenting rejection has been hereby withdrawn. With regards to the 35 U.S.C. 103 rejection, the rejection was withdrawn in the examiner’s answer on November 2, 2023.
a) Argument #1: Claims do not recite a judicial exception because it is not directed to “certain methods of organizing human activity” and therefore not an abstract idea
18. With regards to the 35 U.S.C. 101 rejection, the Examiner respectfully disagrees. First, the applicant argues that the claims are not directed to an abstract idea. The Examiner respectfully disagrees as the claims are related to communicating purchases using a gift card, which would fall under certain methods of organizing human activity of commercial or legal interactions. Purchasing items using a gift card is a commercial interaction. According to MPEP 2106.04(a)(2), "commercial interactions" or "legal interactions" include agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. Making purchases using a gift card is a form of marketing or sales activity or behavior, and is therefore an abstract idea.
b) Argument #2: Claims integrate into practical application under Step 2A Prong 2 by use of particular machine
19. Regarding particularity or generality of the elements of machine or apparatus, according to MPEP 2106.05(b) again: “It is important to note that a general purpose computer that applies a judicial exception, such as an abstract idea, by use of conventional computer functions does not qualify as a particular machine. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014). See also TLI Communications LLC v. AV Automotive LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (mere recitation of concrete or tangible components is not an inventive concept); Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623, 114 USPQ2d 1711, 1715 (Fed. Cir. 2015) (noting that Alappat’s rationale that an otherwise ineligible algorithm or software could be made patent-eligible by merely adding a generic computer to the claim was superseded by the Supreme Court’s Bilski and Alice Corp. decisions). Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 223-24, 110 USPQ2d 1976, 1983-84 (2014). See In re Alappat, 33 F.3d 1526, 1545, 31 USPQ2d 1545, 1558 (Fed. Cir. 1994); In re Bilski, 545 F.3d 943, 88 USPQ2d 1385 (Fed. Cir. 2008).” In this particular case, a server computer, one or more processors, a memory, one or more programs, database, remote device, mobile device, telephony network, and Internet in these steps are recited at a high-level of generality such that it amounts to more than mere instructions to apply the exception using a generic computer component, and are merely invoked as tools for communicating purchases using a gift card.
20. Regarding whether the machine or apparatus implements the steps of the method, again in MPEP 2106.05(b) it states that: “Integral use of a machine to achieve performance of a method may integrate the recited judicial exception into a practical application or provide significantly more, in contrast to where the machine is merely an object on which the method operates, which does not integrate the exception into a practical application or provide significantly more. See CyberSource v. Retail Decisions, 654 F.3d 1366, 1370, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) ("We are not persuaded by the appellant's argument that the claimed method is tied to a particular machine because it ‘would not be necessary or possible without the Internet.’ . . . Regardless of whether "the Internet" can be viewed as a machine, it is clear that the Internet cannot perform the fraud detection steps of the claimed method").” In this particular case, a server computer, one or more processors, a memory, one or more programs, database, remote device, mobile device, telephony network, and Internet are merely the objects on which the method operates.
21. Regarding whether its involvement is extra-solution activity or a field-of-use, again MPEP 2106.05(b) states: “Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the claim. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more. See Bilski, 561 U.S. at 610, 95 USPQ2d at 1009 (citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 197 (1978)), and CyberSource v. Retail Decisions, 654 F.3d 1366, 1370, 99 USPQ2d 1690 (Fed. Cir. 2011).” In this particular case, the a server computer, one or more processors, a memory, one or more programs, database, remote device, mobile device, telephony network, and Internet are merely data gathering, therefore is insignificant extra-solution activity.
22. The claims are not directed to any improvement in computer technology. The claims are directed to an abstract idea of communicating purchases using a gift card. The applicant must take into consideration that in order to view the claims as supplying an inventive concept the technological improvement must be present within the claims themselves (Accenture Global Servs., GmbH v. Guidewire Software, inc., 108 USPQ2d 1173 (Fed. Cir. 2013)), (Synopsys, inc. v. Mentor Graphics Corp... 120 USPQ2d 1473 (Fed. Cir. 2016). Additionally, the Specification does not provide any evidence that how the claims provide an improvement to functioning of computing systems or technology. The applicant failed to provide persuasive arguments supported by any necessary evidence to demonstrate that one of ordinary skill in the art would understand that the disclosed invention improves technology.
c) Argument #3: Applicant argues that the claim elements are significantly more than the abstract idea under Step 2B
23. Having determined under step one of the Mayo/Alice framework that claims 1, 8, and 15 are directed to an abstract idea, we next consider under Step 2B of the Guidance, the second step of the Mayo/Alice framework, whether the claims include additional elements or a combination of elements that provides an “inventive concept,” i.e., whether an additional element or combination of elements adds specific limitations beyond the judicial exception that are not “well-understood, routine, conventional activity” in the field (which is indicative that an inventive concept is present) or simply appends well-understood, routine, conventional activities previously known to the industry to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 56.
24. Under step two of the Mayo/Alice framework, the elements of each claim are considered both individually and “as an ordered combination” to determine whether the additional elements, i.e., the elements other than the abstract idea itself, “transform the nature of the claim” into a patent-eligible application. Alice Corp., 573 U.S. at 217 (citation omitted); see Mayo, 566 U.S. at 72-73 (requiring that “a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself’ (emphasis added) (citation omitted)).
25. Here the only additional elements recited in claims 1, 8, and 15 beyond the abstract idea are: a server computer, one or more processors, a memory, one or more programs, database, remote device, mobile device, telephony network, and Internet, i.e., generic computer components. See Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”). Applicant has not identified any additional elements recited in the claim that, individually or in combination, provides significantly more than the abstract idea.
26. Accordingly, there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself. The dependent claims do not resolve the deficiency of the independent claims and accordingly stand rejected under 35 U.S.C. 101 based on the same rationale.
Conclusion
27. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Khoury et al (A Peer-to-Peer Collaborative Virtual Environment for E-Commerce, NPL) is found to be the most pertinent NPL prior art.
28. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
29. 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.
30. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FAWAAD HAIDER whose telephone number is (571)272-7178. The examiner can normally be reached Mon-Fri 8 AM to 5 PM.
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/FAWAAD HAIDER/Primary Examiner, Art Unit 3627