DETAILED ACTION
This Non-Final Office action is in response to RCE filing on 11/24/2025. Claims 1-20 are pending; claims 1-13 are withdrawn; and, claims 14-20 are examined below. The effective filing date of the claimed invention is 07/27/2006.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 14-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
Step 1 – Claims 14-20 relate to the statutory class of process claims. Accordingly, step 1 is satisfied.
Step 2A, Prong 1 – Exemplary claim 14 recites abstract idea of
receiving, from a first party, card data that identifies a closed-loop stored-value instrument that is issued by a second party that is different than the first party, wherein the card data also comprises a desired card to acquire in a trade and in addition to the desired card to acquire that transaction data also comprises alternative trade options (see e.g. MPEP 2106.04(a)(2)(II)(B));
causing the card data to be submitted to an entity associated with the closed-loop stored-value instrument (see e.g. MPEP 2106.04(a)(2)(A) & (B) Another example of subject matter where the commercial or legal interaction is business relations includes: i. processing information through a clearing-house, where the business relation is the relationship between a party submitted a credit application (e.g., a car dealer) and funding sources (e.g., banks) when processing credit applications, Dealertrack v. Huber, 674 F.3d 1315, 1331, 101 USPQ2d 1325, 1339 (Fed. Cir. 2012));
after causing the card data to be submitted to the entity, receiving, from the entity, balance data that indicates a current balance associated with the closed-loop stored- value instrument (see e.g. MPEP 2106.04(a)(2)(III)(C)(2) & (D) A post office for receiving and redistributing email messages on a computer network – Symantec, 838 F.3d at 1316, 120 USPQ2d at 1359);
receiving an offer for the closed-loop stored-value instrument from a third party, wherein the offer is generated by the third party (see e.g. MPEP 2106.04(II)(A) & (B) making offer is fundamental economic practice);
communicating the offer for the closed-loop stored-value instrument, wherein the first party is a first consumer, and wherein the third party is a second consumer (see e.g. MPEP 2106.04(II)(A) & (B) making offer is fundamental economic practice; MPEP 2106.04(a)(2)(II)(C) citing IV I v. Capital One Bank where communicating a notification to the user via a device was found to be abstract idea.); and
sending the offer to the first party (see e.g. MPEP 2106.04(a)(2)(II)(A) vi. using a marking affixed to the outside of a mail object to communicate information about the mail object, i.e., the sender, recipient, and contents of the mail object, Secured Mail Solutions LLC v. Universal Wilde, Inc., 873 F.3d 905, 911, 124 USPQ2d 1502, 1506 (Fed. Cir. 2017) fundamental economic practice of sending offer); and
displaying to the first party a visibly understandable result of a communication concerning the offer for the closed-loop stored-value instrument from a third party (see e.g. MPEP 2106.04(a)(2)(II)(B) The patentee in Ultramercial claimed an eleven-step method for displaying an advertisement (ad) in exchange for access to copyrighted media, comprising steps of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad. 772 F.3d. at 715, 112 USPQ2d at 1754. The Federal Circuit determined that the "combination of steps recites an abstraction—an idea, having no particular concrete or tangible form" and thus was directed to an abstract idea, which the court described as "using advertising as an exchange or currency." Id.; and, MPEP 2106.04(a)(2)(C) Interval Licensing LLC, v. AOL, Inc., 896 F.3d 1335, 127 USPQ2d 1553 (Fed. Cir. 2018) The patentee claimed an attention manager for acquiring content from an information source, controlling the timing of the display of acquired content, displaying the content, and acquiring an updated version of the previously-acquired content when the information source updates its content.).
When these abstract ideas are viewed alone and in ordered combination, the examiner finds exemplary claim 14 to recite abstract idea.
Step 2A, Prong 2 – Claim 14 does not integrate the abstract idea into practical application. The claimed additional limitations are a first party, second party, and third party (each of which are claimed as respective consumers) and enterprise infrastructure; “card data that identifies a [gift card]”; a web server that receives and sends data; and the limitation(s) at the end of claim 14 that includes “wherein the method is performed by one or more computing devices, wherein the enterprise infrastructure comprises computer processors which execute executable instructions causing the enterprise infrastructure to perform the method.” (emphasis added). Claim 14 now recites “sending . . . as an electronic signal; converting the electronic signal into a visibly understandable result of a communication concerning the offer for the closed-loop stored-value instrument from a third party.” (emphasis added). These additional limitations are recited at a high level of generality and act as tools to implement the underlying abstract idea. In other words, adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f) is not sufficient to integrate with practical application.
Further, see MPEP 2106.05(f)(2) - Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015).
For the claimed “sending . . . as an electronic signal” and “converting the electronic signal into a visibly understandable result of a communication concerning the offer for the closed-loop stored-value instrument from a third party,” the examiner refers to MPEP 2106.05(h) referring to Affinity Labs, “A more recent example of a limitation that does no more than generally link a judicial exception to a particular technological environment is Affinity Labs of Texas v. DirecTV, LLC, 838 F.3d 1253, 120 USPQ2d 1201 (Fed. Cir. 2016). In Affinity Labs, the claim recited a broadcast system in which a cellular telephone located outside the range of a regional broadcaster (1) requests and receives network-based content from the broadcaster via a streaming signal [i.e. covering the claimed “as an electronic signal”], (2) is configured to wirelessly download an application for performing those functions, and (3) contains a display that allows the user to select particular content [i.e. covering the claimed, converting the signal into visible result that can be selected, viewed, etc.]. 838 F.3d at 1255-56, 120 USPQ2d at 1202. The court identified the claimed concept of providing out-of-region access to regional broadcast content as an abstract idea, and noted that the additional elements limited the wireless delivery of regional broadcast content to cellular telephones (as opposed to any and all electronic devices such as televisions, cable boxes, computers, or the like). 838 F.3d at 1258-59, 120 USPQ2d at 1204. Although the additional elements did limit the use of the abstract idea, the court explained that this type of limitation merely confines the use of the abstract idea to a particular technological environment (cellular telephones) and thus fails to add an inventive concept to the claims. 838 F.3d at 1259, 120 USPQ2d at 1204.” Accordingly, the examiner finds that sending something “as a signal” and then converting that signal into data that is viewable, selectable, etc. on a screen covers these limitations, and shows that the signal and converting aspects do not provide practical application.
Accordingly, when these additional limitations are viewed alone and in ordered combination the examiner finds that claim 14 is directed to abstract idea.
Step 2B – Claim 14 does not include significantly more. The additional limitation analysis from Step 2A, Prong 2 is equally applied here at Step 2B. Another consideration when determining whether a claim recites significantly more than a judicial exception is whether the additional element(s) are well-understood, routine, conventional activities previously known to the industry. This consideration is only evaluated in Step 2B of the eligibility analysis.
As for the well-understood, routine, and conventional Berkheimer evidence, the examiner refers to MPEP 2106.05(d)(II) ELEMENTS THAT THE COURTS HAVE RECOGNIZED AS WELL-UNDERSTOOD, ROUTINE, CONVENTIONAL ACTIVITY IN PARTICULAR FIELDS:
The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity.
i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) (“Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” (emphasis added));
iii. Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining “shadow accounts”); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
See further MPEP 2106.05(d)(II)
Below are examples of other types of activity that the courts have found to be well-understood, routine, conventional activity when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity:
i. Recording a customer’s order, Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1244, 120 USPQ2d 1844, 1856 (Fed. Cir. 2016);
iv. Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93;
vi. Arranging a hierarchy of groups, sorting information, eliminating less restrictive pricing information and determining the price, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1331, 115 USPQ2d 1681, 1699 (Fed. Cir. 2015).
Further, for the “as an electronic signal” and “converting. . . .” limitations, the examiner refers to MPEP 2106.05(d)(I)(2), which indicates that the WURC analysis includes a determination in light of Applicant’s Specification. Applicant’s Specification does not disclose the “as an electronic signal” and then “converting the electronic signal into a visibly understandable result.” In other words, the Specification does not mention these words and how this is performed. Applicant refers to Fig. 18, which displays offers to a first party from a third party. The part that isn’t disclosed is the “converting aspect.” As noted in the MPEP, the fact the Specification does not mention the particulars of the converting system is further evidence that the converting step is WURC.
Accordingly, the examiner finds the claimed limitations that relate to receiving and/or transmitting data over a network as well-understood, routine, and convention; and further the claims that recite electronic recordkeeping, and storing and retrieving information in memory as well-understood, routine, and conventional.
Accordingly, when these additional limitations are viewed alone and in ordered combination the examiner finds that claim 14 is directed to abstract idea.
Dependent claims – Claim 15 further defines the abstract idea concepts and recites “wherein the first party is a person . . . .” Claim 16 further defines the abstract idea by adding that the first party is e.g. a merchant, and that a person owns the gift card and provides the data to the first party. Claim 17 adds more abstract idea that the method is performed by a gift card exchange service. Claim 17 adds that the service is “computer-implement” which falls into the “apply it” rationale, as applied to exemplary claim 14. Claim 18 recites the further abstract idea of receiving an indication, identifying an account, and increasing a balance. Claim 19 recites the further abstract idea of receiving data, determining a value, presenting the value to a user, receiving purchase data that indicates the first party is trying to make purchase from a fourth party, using a value to pay for the item(s) to be purchased. Claim 20 recites the additional elements of where the gift card is “delivered digitally to a user’s mobile phone.” This is similar to sending data electronically, which at such a broad level and without the specifics into the “how” this is a technological improvement, is insufficient to provide practical application and/or significantly more. Accordingly, claims 14-20 are found to be directed to abstract idea.
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 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 negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 14-19 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over U.S. Pat. Pub. No. 2005/0228717 to Gusler et al. (“Gusler”) in view of U.S. Pat. Pub. No. 2005/0171902 to Nguyen (“Nguyen”).
With regard to claim 14, Gusler discloses the claimed method comprising the computer-implemented steps of:
receiving, from a first party, transaction data, wherein the transaction data comprises card data that identifies a closed-loop stored-value instrument that is issued by a second party that is different than the first party, wherein the card data also comprises a desired card to acquire in a trade and alternative trade options (see e.g. Fig. 2A; [0015]; [0014] for another desired gift card; see e.g. [0018] for alternative trade options that are included in the communication system, and act as alternative trade options);
causing the transaction data to be submitted to a web server associated with the closed- loop stored-value instrument (see [0015]; [0017] The transaction exchange server 140 gets the release of the credit from the original vendor, as described above, thereby validating the amount on the card);
after causing the transaction data to be submitted to the web server, receiving, from the web server, balance data that indicates a current balance associated with the closed-loop stored-value instrument (see [0015]; [0017] The transaction exchange server 140 gets the release of the credit from the original vendor, as described above, thereby validating the amount on the card);
communicating an offer for the closed-loop stored-value instrument, where the offer is generated by a third party (see [0020] In step 250, the system 100 queries the consumer as to whether he or she wishes to get cash, or another gift card, where the system 100 is the claimed third party; [0017] However, the transaction exchange server then authorizes another exchange to another card, minus a transaction fee for the exchange. For instance, a "Borders Book Store" could be exchanged for a "WalMart" card. The original vendor takes its cut, such as 2%, and credits the B2B exchange, such as at the TES 140, with the remaining amount of cash.; where the transaction exchange server is the claimed third party that generates the offer for the cash/alternate card), wherein the first party is a first consumer, and wherein the third party is a second consumer (see e.g. [0020-22] where the system that takes the initial gift card in exchange for the alternative gift card is a “consumer”); 42 18849840vlAtty. Docket No. 84971 - 333089
sending the offer to the first party as electronic signal (see e.g. Fig. 2A, [0020] In step 250, the system 100 queries the consumer as to whether he or she wishes to get cash, or another gift card; [0014] The system 100 can work substantially as follows. The consumer 114 can either phone or interact with the Internet through consumer PC's 107 or through the employment of a Kiosk/ATM machine in a store. The consumer 114 wishes to either exchange the original gift card for another gift card, or have a check issued and mailed or otherwise have a credit issued to his account. The consumer 114 also inputs his or her checking or banking information and/or mailing address, or the name of another gift card brand for which the consumer 114 selects to have the present gift card swapped. In other words, when the consumer is queried, this is a signal sent from kiosk/server to user’s phone/display/device);
wherein the method is performed by one or more computing devices, wherein the enterprise infrastructure comprises computer processors which execute executable instructions causing the enterprise infrastructure to perform the method (see e.g. Fig. 1; [0010] etc.).
Gusler does not disclose
receiving an offer for the closed-loop stored-value instrument from a third party, wherein the offer is generated by the third party as a second consumer;
converting the electronic signal into a visibly understandable result of communication concerning the offer for the closed-loop stored value instrument from a third party;
displaying to the first party a visibly understandable result of a communication concerning the offer for the closed-loop stored value instrument from a third party.
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Nguyen teaches at e.g. [0052-53] that it would have been obvious to one of ordinary skill in the transaction art before the date of invention (pre-AIA ) to modify the exchange server of Gusler to include the ability to receive offers from a first and/or second party for an item such as a gift card or any other item (e.g. [0052-53]), converting the offer data signal into visible result (see e.g. [0052-53] Fig. 5 (left) where the system receives the agreements, and then converts that information into “show offer statements to first and second entities” 542; [0054] Elements of one embodiment of the invention may be implemented by hardware, firmware, software or any combination thereof. When implemented in software, the elements of an embodiment of the present invention are essentially the code segments to perform the necessary tasks. The software may include the actual code to carry out the operations described in one embodiment of the invention, or code that emulates or simulates the operations. The program or code segments can be stored in a processor or machine accessible medium or transmitted by a computer data signal embodied in a carrier wave, or a signal modulated by a carrier, over a transmission medium. The "processor readable or accessible medium" or "machine readable or accessible medium" may include any medium that can store, transmit, or transfer information.) and receiving data such as the offer over a visible display screen from a third party (see e.g. [0030, 36, 38, 42,43] and Fig. 3) where this is beneficial in that this allows parties to communicate offers and agreement terms to each other via the transaction unit so that a meeting of the minds can occur, and agreement on such terms can occur, as shown in Nguyen at [0052-53]. Therefore, it would have been obvious to one of ordinary skill in the e-commerce art before the effective filing date to modify Gusler’s system and method for gift card enchange to include such ability receiving an offer, converting the offer into a visibly understandable result, and displaying the visible result, as shown in Nguyen, where this is beneficial in that this allows parties to communicate offers and agreement terms to each other via the transaction unit so that a meeting of the minds can occur, and agreement on such terms can occur, as shown in Nguyen at [0052-53].
With regard to claim 15, Gusler discloses where the first party is a person who owns the closed- loop stored-value instrument (see e.g. [0012]).
With regard to claim 16, Gusler discloses where the first party is a pawn shop, an ATM, a kiosk, or a merchant; a person that owns the closed-loop stored-value instrument provides the card data to the first party prior to receiving the card data (see [0012], [0019] [0020]).
With regard to claim 17, Gusler discloses where the method is performed by a computer- implemented gift card exchange service (see [0020]).
With regard to claim 18, Gusler discloses where the offer is for a particular amount, the method further comprising: receiving an indication that a person that owns the closed-loop stored-value instrument accepted the offer; identifying an account of the person, wherein the account existed prior to receiving the card data, wherein the account has a particular balance; and increasing the particular balance of the account by the particular amount (see e.g. [0020] where the offer for gift card/money/deposit is for the specific amount of the exchanged card minus a service fee(s), and further where the money can be deposited as a credit to the user’s checking or savings account).
With regard to claim 19, Gusler further discloses where the offer is for a particular amount, the method further comprising: receiving acceptance data that indicates that a person that owns the closed-loop stored- value instrument accepted the offer; in response to receiving the acceptance data, determining a particular value and43 18849840vlAtty. Docket No. 84971 - 333089associating the particular value with the closed-loop stored-value instrument; presenting, to the first party, information that indicates the particular value (see e.g. [0020] [0021] where an alternative gift card with particular amount can be granted to the user); after providing the particular value to the first party, receiving purchase data that indicates that the first party is attempting to purchase one or more items from a third party that is different than the first and second parties, wherein the purchase data includes the particular value, in response to receiving the purchase data, using the particular value to identify the particular amount; and causing the particular amount to be applied to the purchase of the one or more items (see e.g. [0002] showing the general state of gift cards, where some gift cards can only be used at specific stores, and others can be used at a plurality of stores; the examiner finds that when the alternative gift card of e.g. Walmart or Borders is the alternative gift card, then the user can go and utilize the funds on the new gift card at the store(s) provided see [0015]).
Claim 20 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Gusler, Nguyen, in further view of U.S. Pat. Pub. No. 2006/0207856 to Dean et al. (“Dean”).
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With regard to claim 20, Gusler does not disclose the limitation of claim 20. However, Dean teaches at e.g. Fig. 6, 620 [0021] [0029] [0036] where the output of a gift card exchange service can be sent to a cell phone or e-wallet virtual account, where this is performed so that the user can have access to the output from any location through the online account access through the phone, making it easier for the consumer to use and view the output, as taught by Dean. Therefore, it would have been obvious to one of ordinary skill in the art before the date of invention (pre-AIA ) to modify Gusler/Nguyen with the ability to include sending gift card digitally to user’s phone, as taught by Dean, where this is a secure and another potential method to send a gift card to a user. See portions of Dean cited.
Response to Arguments
Applicant's arguments filed 11/24/2025 have been fully considered but they are not persuasive.
For the 103 rejection, the examiner has updated the rejection to refer to Nguyen, the secondary reference, to teach the added limitation.
For the 101 rejection, the examiner has updated the rejection above in accordance with current guidance and addressed the arguments/amendments in the rejection above.
Conclusion
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/PETER LUDWIG/Primary Examiner, Art Unit 3627