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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/30/2025 has been entered.
Claim Status
The claims filed 10/30/2025 have been entered.
Claims 1, 5-7, 9-12, and 15-24 are pending.
Claims 1, 12, and 19 are independent.
Claims 1, 12, and 19 are currently amended.
Claims 5-7, 9-10, 15-17, and 20-24 are previously presented.
Claims 11 and 18 are original.
Response to Arguments
Applicant's arguments filed 10/30/2025 have been fully considered but they are not persuasive.
35 U.S.C. 101
Regarding representative claim 1, Applicant argues the limitations drawn to modification to the funding of the financial element and providing information to the giver that the gifted financial instrument has been used. Applicant argues that these limitations are two additional elements which are outside the scope of normal operation of the financial instrument because they do not modify any aspect of the fundamental use and/or operation of the financial instrument; and that by providing a “lifetime connection” the elements enable a new and novel way to determine funding and providing redemption information of the instrument (see Remarks, pp. 14-16).
The argument is not persuasive. With regards to Applicant’s argument that the claimed invention is new and novel, the Supreme Court’s decisions make it clear that judicial exceptions need not be old or long-prevalent, and that even newly discovered or novel judicial exceptions are still exceptions. For example, the mathematical formula in Flook, the laws of nature in Mayo, and the isolated DNA in Myriad were all novel or newly discovered, but nonetheless were considered by the Supreme Court to be judicial exceptions because they were “‘basic tools of scientific and technological work’ that lie beyond the domain of patent protection.” Myriad, 569 U.S. 576, 589, 106 USPQ2d at 1976, 1978 (noting that Myriad discovered the BRCA1 and BRCA1 genes and quoting Mayo, 566 U.S. 71, 101 USPQ2d at 1965); Flook, 437 U.S. at 591-92, 198 USPQ2d at 198 (“the novelty of the mathematical algorithm is not a determining factor at all”); Mayo, 566 U.S. 73-74, 78, 101 USPQ2d 1966, 1968 (noting that the claims embody the researcher's discoveries of laws of nature). The Supreme Court’s cited rationale for considering even “just discovered” judicial exceptions as exceptions stems from the concern that “without this exception, there would be considerable danger that the grant of patents would ‘tie up’ the use of such tools and thereby ‘inhibit future innovation premised upon them.’” Myriad, 569 U.S. at 589, 106 USPQ2d at 1978-79 (quoting Mayo, 566 U.S. at 86, 101 USPQ2d at 1971). See also Myriad, 569 U.S. at 591, 106 USPQ2d at 1979 (“Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry.”). The Federal Circuit has also applied this principle, for example, when holding a concept of using advertising as an exchange or currency to be an abstract idea, despite the patentee’s arguments that the concept was “new”. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15, 112 USPQ2d 1750, 1753-54 (Fed. Cir. 2014). Cf. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) (“a new abstract idea is still an abstract idea”) (emphasis in original). Here, Examiner respectfully disagrees with Applicant’s characterization of the limitations “placing a hold…”, “value of said short-term certificate is not charged…”, “is not charged…”, “receiving… a redemption event…”, “charging…said monetary amount…”, and “removing… said monetary amount” as additional elements. These limitations are part of the abstract ideas as they describe or set forth provision and management of the financial instrument, i.e. “short-term certificate”. The claim implements this abstract idea on generic computer components regardless of whether the abstract idea is novel. Moreover, the argued novelty does not constitute a technological improvement but at best an improvement to the abstract idea itself. Here, the additional limitations do not provide a technical solution to a technical problem and instead merely automate the abstract idea which is independently abstract.
As stated in the prior Office action, providing a gift card giver with information regarding the redemption of a gift card (if it was redeemed, when it was redeemed, and the amount redeemed) is at best an improvement to the abstract idea itself. An improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology (see MPEP 2106.05(a)). Furthermore, the specification at paras. 0062-0063 describes providing redemption information/details relating to the gift card at a high level of generality in a manner which does not convey a technical improvement to one of ordinary skill in the art. Here, providing a redemption report when the financial instrument is redeemed is not a technical improvement but an improvement to a process involving a financial instrument which lies entirely within the abstract realm.
Likewise, a gift card that does not reduce funds until used (e.g. allocating credit using a hold) is not a technical improvement but an improvement to a financial instrument which lies entirely within the abstract realm. An improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology (see MPEP 2106.05(a)).
Applicant further argues that the claims should be found eligible in view of Koninklijke. However, the argument is not persuasive as Koninklijke is directed to a technical improvement in the way error detection systems are able to reliably detect systematic errors. Here, the claim does not recite any analogous technical improvement but merely implement a financial arrangement on generic computing elements.
For the above reasons, the rejection of claim 1 is maintained herein.
Applicant’s arguments with regards to claims 5-7, 9-12, and 15-24 rely upon the arguments presented with regards to claim 1 and are similarly unpersuasive.
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, 5-7, 9-12, and 15-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claims 1, 5-7, 9-12, and 15-24 are directed to a method (process), non-transitory computer-readable medium (product), or system (machine), which are/is one of the statutory categories of invention. (Step 1: YES).
Step 2A Prong 1
The Examiner has identified independent method claim 1 as the claim that represents the claimed invention for analysis and is similar to independent product claim 12 and independent system claim 19. Claim 1 recites:
1. (Currently Amended) A method comprising:
receiving, [at a credit account management system], a request for a short-term certificate to be provided from a first party to a second party,
the request comprising:
a value of the short-term certificate, and
an identifier for the second party;
allocating, [at said credit account management system], a part of a credit account of said first party, said allocating comprising:
placing a hold on said value of said short-term certificate, wherein said hold reduces a credit limit of said credit account by said value of said short- term certificate;
generating, [at said credit account management system], said short-term certificate [in a digital format], wherein said value of said short-term certificate is not charged to said credit account of the said first party when said short-term certificate is generated;
[electronically] transmitting said short-term certificate [from said credit account management system] to [a mobile device of] said second party, wherein said value of said short-term certificate is not charged to said credit account of said first party when said short-term certificate is transmitted,
receiving, [at said credit account management system], a redemption event when said short-term certificate is used to make a purchase, said redemption event comprising a monetary amount spent with said short-term certificate;
charging, [at said credit account management system], said monetary amount spent to said credit account of said first party;
removing, [at said credit account management system], said monetary amount spent from said value of said short-term certificate on said hold to establish a remainder value of said short-term certificate; and
providing, [from said credit account management system], an indicator to said first party when said redemption event is received, said indicator comprising: an indication of a use of said short-term certificate.
These limitations, under their broadest reasonable interpretation, cover performance of the limitations as “Certain Methods of Organizing Human Activity”. The claim limitations pertain to provision and management of a financial instrument, i.e. “short-term certificate”, which is a fundamental economic practice. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. The additional limitations drawn to “credit account management system”, “digital format”, “mobile device”, “digital wallet” in Claim 1 is just applying generic computer components to the recited abstract limitations. The recitation of generic computer components in a claim does not necessarily preclude that claim from reciting an abstract idea. Claims 12 and 19 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims recite an abstract idea)
Step 2A Prong 2
This judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements of:
Claim 1: credit account management system, digital format, mobile device, digital wallet
Claim 12: non-transitory computer-readable medium, one or more processors, credit account management system, digital format, mobile device, digital wallet
Claim 19: memory, storage, one or more processors, credit account management system, digital format, mobile device, digital wallet
The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. Therefore, claims 1, 12, and 19 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware 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. See Applicant’s specification para. [00127] about implementation using general purpose or special purpose computing devices and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more. Accordingly, these additional elements, do not change the outcome of the analysis, when considered separately and as an ordered combination. Thus, claims 1, 12, and 19 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent Claims
Dependent claims 5-7, 9-11, 15-18, and 20-24 further define the abstract idea that is present in their respective independent claims 1, 12, and 19 and thus correspond to “Certain Methods of Organizing Human Activity” and hence are abstract for the reasons presented above. The dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the dependent claims are directed to an abstract idea without significantly more.
Thus, claims 1, 5-7, 9-12, and 15-24 are not patent-eligible.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 5-7, 11-12, 15, 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Isaacson ‘611 (US 2012/0150611 A1).
Regarding claims 1 and 12, Isaacson ‘611 discloses a method and associated non-transitory computer-readable medium (see para. 0042), comprising:
receiving, at a credit account management system, a request for a short-term certificate to be provided from a first party to a second party (see para. 0052), the request comprising:
a value of the short-term certificate (see para. 0052), and
an identifier for the second party (see para. 0049);
allocating, at said credit account management system, a part of a credit account of said first party (see para. 0052, 0114), said allocating comprising:
placing a hold on said value of said short-term certificate, wherein said hold reduces a credit limit of said credit account by said value of said short- term certificate (see para. 0052);
generating, at said credit account management system, said short-term certificate in a digital format (see para. 0052), wherein said value of said short-term certificate is not charged to said credit account of the said first party when said short-term certificate is generated (see para. 0114);
electronically transmitting said short-term certificate from said credit account management system to a mobile device of said second party (see para. 0054), wherein said value of said short-term certificate is not charged to said credit account of said first party when said short-term certificate is transmitted (see para. 0114),
receiving, at said credit account management system, a redemption event when said short-term certificate is used to make a purchase, said redemption event comprising a monetary amount spent with said short-term certificate (see para. 0078, 0114);
charging, at said credit account management system, said monetary amount spent to said credit account of said first party (see para. 0078, 0114);
removing, at said credit account management system, said monetary amount spent from said value of said short-term certificate on said hold to establish a remainder value of said short-term certificate (see para. 0078, 0114); and
providing, from said credit account management system, an indicator to said first party when said redemption event is received, said indicator comprising: an indication of a use of said short-term certificate (see para. 0086).
Regarding claim 5, Isaacson ‘611 discloses where the identifier of the second party is an email address and the short-term certificate is sent to the email address of the second party (see para. 0054, 0069).
Regarding claim 6, Isaacson ‘611 discloses where the identifier of the second party is a mobile phone number and the short-term certificate is sent via an SMS to said mobile device of the second party (see para. 0069).
Regarding claims 7 and 15, Isaacson ‘611 discloses wherein said indicator further comprises: a location where the short-term certificate was redeemed (see para. 0086).
Regarding claims 11 and 18, Isaacson ‘611 discloses wherein the short-term certificate is a single use certificate (see para. 0051).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 9-10, 16-17, and 19-24 are rejected under 35 U.S.C. 103 as being unpatentable over Isaacson ‘611 (US 2012/0150611 A1) in view of Isaacson ‘698 (US 2011/0106698 A1).
Regarding claim 19, the claim recites similar functional limitations as independent claims 1 and 12. The limitations are disclosed by Isaacson ‘611 as described above.
Isaacson ‘611 further discloses a memory, a storage, and one or more processors (see para. 0042).
Isaacson ‘611 does not explicitly disclose, but Isaacson ‘698 teaches:
provide an expiration date for the single use short-term certificate (see paras. 0130, 0154).;
provide an active short-term certificate reminder to the second party, the active short-term certificate reminder provided a pre-defined amount of time after said active short-term certificate is received at said mobile device, the active short-term certificate reminder indicating that the short-term certificate is still active (see paras. 0130, 0154);
provide an expiration date with the short-term certificate (see paras. 0130, 0154);
provide an expiration reminder to the second party, the expiration reminder provided a pre-defined amount of time before the expiration date of the short-term certificate (see paras. 0130, 0154).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method and product of Isaacson ‘611 to include the features of Isaacson ‘698.
One of ordinary skill in the art would have been motivated to make the modification to provide a safety mechanism so that the funds are never “lost” or remain unused (see Isaacson ‘698, para. 0154).
Regarding claim 20, Isaacson ‘611 discloses the request for the single use short-term certificate to be generated is received at an application of the credit account operating on a first party's mobile device; and wherein the single use short-term certificate is provided to another application of the credit account operating on said mobile device of said second party (see paras. 0049-0052, 0114).
Regarding claims 22 and 24, Isaacson ‘611 does not explicitly disclose, but Isaacson ‘698 teaches providing an expiration date with the short-term certificate; and providing an expiration reminder to the second party, the expiration reminder provided a pre-defined amount of time before the expiration date of the short-term certificate (see para. 0154).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method and product of Isaacson ‘611 to include the features of Isaacson ‘698.
One of ordinary skill in the art would have been motivated to make the modification to provide a safety mechanism so that the funds are never “lost” or remain unused (see Isaacson ‘698, para. 0154).
Regarding claim 9, the combination set forth with regards to base claim 22 teaches: deactivating the short-term certificate after a passing of the expiration date; and removing said hold from said credit account after said short-term certificate is deactivated (see Isaacson ‘611, paras. 0052, 0114; Isaacson ‘698 paras. 0130, 0154).
Regarding claim 10, Isaacson ‘698 teaches: the expiration reminder indicating that the short-term certificate is still valid (see paras. 0130, 0154).
Regarding claims 21 and 23, Isaacson ‘611 does not explicitly disclose, but Isaacson ‘698 teaches where the one or more instructions further cause the one or more processors to: provide an active short-term certificate reminder to the second party, the active short- term certificate reminder provided a pre-defined amount of time after said active short-term certificate is received at said mobile device, the active short-term certificate reminder indicating that the short-term certificate is still active (see para. 0154).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method and product of Isaacson ‘611 to include the features of Isaacson ‘698.
One of ordinary skill in the art would have been motivated to make the modification to provide a safety mechanism so that the funds are never “lost” or remain unused (see Isaacson ‘698, para. 0154).
Regarding claim 16, the combination set forth with regards to base claim 23 teaches where the one or more instructions further cause the one or more processors to: deactivate the short-term certificate on the expiration date; and remove said hold from said credit account after said short-term certificate is deactivated (see Isaacson ‘611, paras. 0052, 0114; Isaacson ‘698 paras. 0130, 0154)..
Regarding claim 17, Isaacson ‘698 teaches where the expiration reminder indicates that the short-term certificate is still active (see paras. 0130, 0154).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Baradoy (US 2014/0222591 A1) discloses a post-payment gift card system in which the benefactor pays the value of the gift card at the time that the recipient redeems the gift card with the merchant. In some cases, the benefactor may create a gift card campaign using a gift card system. In some cases, the gift card system may include a user account. The user account may include attributes such as user identification information, user contact information, one or more user payment methods, payment method information, a user account good status indicator, and a user account trust indicator.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC T WONG whose telephone number is (571)270-3405. The examiner can normally be reached 9am-5pm M-F.
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, Michael W Anderson can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC T WONG/Primary Examiner, Art Unit 3693
ERIC WONG
Primary Examiner
Art Unit 3693