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 .
Claim Rejections - 35 USC §101
1. 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.
2. Claims 1, 3-8, 10-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Subject Matter Eligibility Standard
3. The examiner contends that, under the judicial exceptions enumerated in the MPEP 2106, to determine the patent-eligibility of an application, a two- part analysis has to be conducted.
Part 1: 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. See MPEP 2106.03
Part 2A: Prong 1: (1) Determine if the claims are directed to an abstract idea or one of the judicial exceptions. Examples of abstract ideas referenced in Alice Corp. include:
1. Certain method of organizing human activity such as Fundamental Economic Practices, Commercial and Legal Interactions, or Managing Personal Behavior or Relationships or Interactions Between People.
2. A mental process.
3. Mathematical relationships/formulas.
Part 2A: Prong 2: determine if the claim as a whole integrates the judicial exception into a practical application.
Part 2B: determine if the claim provides an inventive concept.
Analysis
4. Under Step 1 of the analysis, it is found that the claim indeed recites a series of steps and therefore, is a process - one of the statutory categories.
Under Step 2A (Prong 1), using claim 8 as the representative claim, it is determined that apart from generic hardware and extra-solution activities discussed in Step 2A, Prong 2 below, the claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language is directed to “loading a prepaid card with funds,” which is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. Also, the limitations “receiving…prepaid card identification data; receiving…a unique identifier; receiving…position data; determining… whether the prepaid card identification data and the unique identifier correspond to stored profile data for prepaid card authorization; determining…whether the position data correlates to stored location data; and transmitting…an authorization code can be performed in the human mind. Any process that can be performed in the human mind falls into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Under Step 2A (Prong 2), the examiner contends that the claim recites a combination of additional elements including “computer processor, data memory device, global positioning system and position detecting device, and mobile device.” Further, independent claim 1 recites a prepaid card management system and a remote card loading system. These additional elements, considered in the context of claim 8 as a whole, do not integrate the abstract idea into a practical application because they are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, they are caused to perform the steps. Also, these devices, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Furthermore, the claimed step “wherein position data is generated by a global positioning system device comprising a position detecting device” is recited to simply further narrow the scope of the abstract idea. Thus, it is determined that claim 8 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and that is directed to a judicial exception.
Under Step 2B, it is determined that, taken alone, the additional elements in the clam amounts to no more than mere instructions to apply the exception using a generic computer processor-— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional systems beyond the abstract idea of claim 8 are the generically recited “mobile device, computer processor, data memory device, global positioning system and position detecting device, mobile device, prepaid card management system and a remote card loading system.” The applicant does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional, hardware components or systems being applied in their ordinary manner to the abstract idea. The specification substantiates this, for instance at paras 0012. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the imitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself. Note: The analysis above applies to all statutory categories of invention. As such, the independent claims otherwise styled as a computer-readable medium encoded to perform specific tasks, machine or manufacture, for example, would be subject to the same analysis. For instance, claim 19 recites additional limitations beyond what are recited in the independent claims 1 and 8, such as determining... whether the prepaid card identification data and the unique identifier correspond to stored profile data for prepaid card authorization; determining whether the position data correlates to a stored location data; generating one or more user controls to allow a user to specify one or more prepaid loading parameters for the mobile device; generating one or more user controls to allow a user to identify a location associated with the prepaid card that is stored on the prepaid card: reading the location from the prepaid card: determining whether the location from the prepaid card is associated with the position data; determining whether the authorized location data is located within the image data; determining whether the authorized location data is located within the one or more field, These additional limitations comprise the analyses of data, which are nothing but the automation of mental tasks. See Benson, Bancorp and Cyberphone. Also see Electric Power, 830 F.3d at 1354 ([W]e have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes”). Furthermore, the limitations in the dependent claims are thus subject to the same analysis as in claim 8 and are rejected using the same rationale as in claim 8 above. More specifically, dependent claims 3-7, 10-18 recite additional elements, but these additional elements are mere data gathering steps considered to be insignificant extra-solution activities. See In re Bilski, S45 F 3d at 963 (characterizing data gathering steps as insignificant extra-solution activity}. Also see Electric power, 830 P.3d at 1354-56.
Response to Arguments
5. Applicant's arguments filed on 10/28/25 have been fully considered but they are not persuasive.
In response to applicant’s argument that the rejection does not comply with Step 2A, prong One of the Mayo Test, the examiner disagrees. The examiner contends that the claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language is directed to “loading a prepaid card with funds,” which is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. Also, the limitations “receiving…prepaid card identification data; receiving…a unique identifier; receiving…position data; determining… whether the prepaid card identification data and the unique identifier correspond to stored profile data for prepaid card authorization; determining…whether the position data correlates to stored location data; and transmitting…an authorization code can be performed in the human mind. Any process that can be performed in the human mind falls into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
In response to applicant’s argument that the claims integrate the alleged abstract idea into a practical application, the examiner disagrees. The examiner contends that the claim recites a combination of additional elements including “computer processor, data memory device, global positioning system and position detecting device, and mobile device.” Further, independent claim 1 recites a prepaid card management system and a remote card loading system. These additional elements, considered in the context of claim 8 as a whole, do not integrate the abstract idea into a practical application because they are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, they are caused to perform the steps. Also, these devices, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Furthermore, the claimed step “wherein position data is generated by a global positioning system device comprising a position detecting device” is recited to simply further narrow the scope of the abstract idea. Thus, it is determined that claim 8 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and that is directed to a judicial exception.
Regarding the applicant’s argument that the recited “mobile device,” “global positioning system device,” “position detecting device,” “computer processors,” are integral to the claim because the methods and systems disclosed cannot be performed with the aforementioned systems/devices, the examiner disagrees. The examiner contends that the recited “mobile device,” “global positioning system device,” “position detecting device,” “computer processors are nothing but well-understood, routine, and conventional, hardware components or systems being applied in their ordinary manner to the abstract idea. The devices are merely being applied to the abstract idea to carry out the abstract idea.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OJO O OYEBISI whose telephone number is (571)272-8298. The examiner can normally be reached on Monday-Friday, 9am-7pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Behncke can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OJO O OYEBISI/Primary Examiner, Art Unit 3695