DETAILED ACTION
Status of Claims
Claims 1 and 12 are currently amended.
Claims 4-5 and 15-16 have been canceled.
Claims 1-3, 6-14, and 17-22 are currently pending and have been examined.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Arguments
35 USC 103
Applicant's arguments and amendments filed 11/24/2025 with respect to the 35 USC 103 rejection have been fully considered but they are not persuasive. Applicant argues that the previously cited prior art does not disclose “wherein the specific purchasing activity consists of a purchase form a first merchant… wherein the value token is configured for the purchasing activity at a second merchant.” Examiner respectfully disagrees. Thomas discloses the specific purchasing activity consisting of a purchase form a first merchant. See paragraph [0162] disclosing purchase from suitable retail outlet. While it appears based on paragraphs [0162]-[0165] and Fig. 33-34 that the specific purchasing activity takes place at a first merchant (e.g., suitable retail outlet) and the purchasing activity takes place at a second merchant (e.g., sage dining), Nelson specifically discloses that the virtual card may be monetary gift card to a specific merchant or group of merchants. See Nelson paragraph [0022]. Therefore, the first specific purchasing activity may be at one merchant in the group of merchants and the purchasing activity may take place at a second merchant in the group of merchants.
Applicant argues that the previously cited prior art does not disclose “wherein the value token is configured for user purchase transactions both prior to conversion into a physical representation of the value token and after said conversion.” Examiner respectfully disagrees. Nelson discloses a printer capable of printing physical representations of value. See at least paragraph [0111]-[0115]. Additionally, Nelson discloses a “printed copy of a virtual card.” See at least paragraph [0105]-[0106]. In these cited paragraphs the printed copy of the virtual card may be misplaced or stolen and a user may report the virtual card “lost/stolen” in order for no fraudulent use of the virtual printed cart to be used (e.g., transactions can occur with both the virtual card and the printed virtual card). Therefore, Nelson discloses the value token being configured for user purchase transactions both prior to conversion into a physical representation of the value token and after said conversion. For at least these reasons, Examiner maintains the previous 35 U.S.C. 103 rejection.
35 USC 101
Applicant's arguments filed 11/24/2025 with respect to the 35 USC 101 rejection have been fully considered but they are not persuasive. Applicant argues that the claims integrate the alleged abstract idea into a practical application. Examiner respectfully disagrees. Applicant argues that the claims require a “a physical representative of value” and “processor” to effectuate the claim language and that the “physical representation of value” and “processor”, are a manufacture under MPEP 2106.03 and that therefore the abstract idea is integrated into a practical application via the requirement that the abstract idea be performed by an additional element which implements a judicial exception with, or uses a judicial exception in conjunction with, a manufacture that is integral to the claim. Examiner respectfully disagrees. Applicant appears to be focused on Step 1 of the Eligibility Analysis and the processor being a manufacture. See MPEP 2106.03. However, while under step 1 the claims do fall within a statutory category, the claims must be further analyzed at Step 2A to determine if the claim is directed to a judicial exception. Under Step 2A, Prong 1, the claim is directed towards the abstract idea of providing a value token. This is considered to be a certain method of organizing activity because receiving a request, receiving indication of purchasing activity, converting the physical representation of value into a value token, and providing the value token are commercial or legal interactions because they are sales activities. Under Step 2A, Prong 2 of the subject matter eligibility analysis, the additional elements in the claim are evaluated to determine whether they integrate the judicial exception into a practical application. Here, while the claims recite the additional elements include a processor computer device having a processor and executable instructions stored on a non-transitory computer readable medium, physical representation of value, an electronic identifier, electronically maintained data file, and intelligent code, these additional elements are merely generic elements and the implementation of the elements merely amounts to no more than an instruction to apply the abstract idea using a generic computer. Here, the processor is merely an individual generic computer component that is performing merely generic computer functions. Specifying that the abstract idea occurs within an electronic world merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer. The invention is not taking previous processors OR Physical representation of values and making them more dynamic and efficient. There has been no improvement to the physical representation of value itself. These additional elements are merely an attempt to further define the field of use of the abstract idea. The focus is on providing the value token; not some technical improvement to the processor/physical representation of value itself. As such, the additional elements do not integrate the judicial exception into a practical application of the abstract idea and, thus, the claims are directed to an abstract idea.
Applicant further argues that Applicant ignored four other relevant considerations in determining whether the abstract idea is implemented into a practical application. Examiner respectfully disagrees. All additional elements were considered and analyzed under Step 2A, Prong 2. There has been no improvement to the functioning of the computer and/or any other technology, there is no effect for a treatment or phylaxis for a disease or medical condition, as was discussed above the use of the judicial exception with a particular machine or manufacture was not integral to the claim, there is no transformation or reduction of a particular article to a different state or thing (i.e., physical credit card and/or computer/processor does not actually change to different state), and the additional elements are generally linking the use of the judicial exception to a particular technological environment.
More specifically, Applicant argues that the claims requiring the physical representation of value be converted is a transformation or reduction of a particular article to a different state or thing. Examiner respectfully disagrees. The physical representation of value (e.g., the article) has still not been transformed. The physical representation of value itself does not have a new or different function or use. The physical representation of value has been physically changed to a different state or thing. The physical representation of value still remains as is. At best, the conversion is merely the transferring of data contained in the physical representation of value to the value token. This is changing the location of the data and not actually transforming the physical representation of value.
For at least these reasons, Examiner maintains the previous 35 USC 101 rejection.
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 1-3, 6-14, and 17-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claims recite an abstract idea. This judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Under Step 1 of the Alice/Mayo test the claims re directed to statutory categories. MPEP 2106.03. Specifically, the method, as claimed in claims 1-3 and 6-11, is directed to a process. Additionally, the system, as claimed in claims 12-14 and 17-22, is directed to a machine.
While the claims fall within statutory categories, under revised Step 2A, Prong 1 of the eligibility analysis (MPEP 2106.04), the claimed invention recites the abstract idea of providing a value token. Specifically, representative claim 1 recites the abstract idea of:
receiving, from a value token user, a request to convert a representation of value into a value token, wherein the value token is an identifier configured for storage in a data file, wherein the representation of value is associated with a specific purchasing activity, wherein the specific purchasing activity consists of a purchase from a first merchant;
receiving an indication of the specific purchasing activity,
converting the representative value into the value token, wherein the value token is configured for transacting the purchasing activity at a second merchant, render the representation of value inoperative after converting in a first embodiment and provide for continued use of the representation of value by the value token user after converting in a second embodiment;
providing, to the value token user, the value token, wherein the value token is configured for user purchase transactions both prior to conversion into a representation of the value token and after said conversion.
Under revised Step 2A, Prong 1 of the eligibility analysis, it is necessary to evaluate whether the claim recites a judicial exception by referring to subject matter groupings articulated in MPEP 2106.04(a). The claims recite an abstract idea. For example, representative claim 1 recites the abstract idea of providing a value token, as noted above. This concept is considered to be a certain method of organizing human activity. Certain methods of organizing human activity include “fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).” MPEP 2106.04(a)(2)(II). In this case, the abstract idea recited in representative claim 1 is a certain method of organizing human activity because receiving a request, receiving indication of purchasing activity, converting value into value token, and providing the value token are commercial or legal interactions because they are sales activities.
Thus, representative claim 1 recites an abstract idea.
Under revised Step 2A, Prong 2 of the eligibility analysis, if it is determined that the claims recite a judicial exception, it is then necessary to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of that exception. MPEP 2106.04(d). The courts have identified limitations that did not integrate a judicial exception into a practical application include limitations merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP 2106.05(f). MPEP 2106.04(d). In this case, representative claim 1 includes additional elements such as a processor computer device having a processor and executable instructions stored on a non-transitory computer readable medium which when executed by the processor cause the processor computer device to perform the method and intelligent code, electronic identifier, data file, and a physical representation of value. Although reciting such additional elements, the additional elements do not integrate the abstract idea into a practical application because they merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a computer as a tool to perform the abstract idea. These additional elements are described at a high level in Applicant's specification without any meaningful detail about their structure or configuration. Similar to the limitations of Alice, representative claim 1 merely recites a commonplace business method (i.e., providing a value token) being applied on a general-purpose computer. See MPEP 2106.05(f). Thus, the claimed additional elements are merely generic elements and the implementation of the elements merely amounts to no more than an instruction to apply the abstract idea using a generic computer. Since the additional elements merely include instructions to implement the abstract idea on a generic computer or merely use a generic computer as a tool to perform an abstract idea, the abstract idea has not been integrated into a practical application.
Under Step 2B of the eligibility analysis, if it is determined that the claims recite a judicial exception that is not integrated into a practical application of that exception, it is then necessary to evaluate the 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). MPEP 2106.05. In this case, as noted above, the additional elements recited in independent claim 1 are recited and described in a generic manner merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea.
Even when considered as an ordered combination, the additional elements of representative claim 1 do not add anything that is not already present when they are considered individually. In Alice, the court considered the additional elements “as an ordered combination,” and determined that “the computer components…’ad[d] nothing… that is not already present when the steps are considered separately’… [and] [v]iewed as a whole…[the] claims simply recite intermediated settlement as performed by a generic computer.” Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 573, U.S. 208, 223, 110 USPQ2d 1976, 1983 (2014) (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Similarly, when viewed as a whole, representative claim 1 simply conveys the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B of the eligibility analysis, there are no meaningful limitations in representative claim 1 that transforms the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
As such, representative claim 1 is ineligible.
Dependent Claims 2-3 and 6-11 do not aid in the eligibility of independent claim 1. For example, claims 2-11 merely further define the abstract limitations of claim 1.
Furthermore, it is noted that certain dependent claims include additional elements supplemental to those recited in independent claim 1: an electronic wallet (Claim 3), an electronic representative of value (claim 5), a device (claim 6), and a barcode; a QR code; an arrangement of numerals, letters, symbols, images, and/or colors; an electromagnetic signal (e.g., near field communication ("NFC"), infrared, RFID); a mechanical wave (e.g., sound); or combinations thereof (claim 7). However, these additional elements do not integrate the abstract idea into a practical application because they merely amount to no more than a general link of the use of the abstract idea to a particular technological environment or field of use. These additional elements are merely generic elements and are likewise described in a generic manner in Applicant’s specification. Additionally, the additional elements do not amount to significantly more because they merely amount to no more than a general link of the use of the abstract idea to a particular technological environment or field of use.
Dependent claims 2 and 8-11 do not recite additional elements supplemental those recited in claim 1. Therefore, the additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea for the reasons described above with respect to claim 1.
Thus, dependent claims 2-3 and 6-11 are also ineligible.
Independent claim 12 recites the same abstract idea recited in representative claim 1. Independent claim 9 recites the additional elements of computer devices. The additional elements in independent claim 9 do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea for the reasons described above with respect to claim 1.
Similarly, the dependent clams 13-14 and 17-22 do not recite additional elements supplemental those recited in claims 2-3 and 6-11. Therefore, the additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea for the reasons described above with respect to claims 2-3 and 6-11, respectively.
Thus, dependent claims 13-14 and 17-22 are also ineligible.
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 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 negatived by the manner in which the invention was made.
Claims 1-3, 6-14, and 17-22 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Thomas (US 2014/0025519) in view of Nelsen (US 2012/0323787).
Regarding Claims 1 and 12, Thomas discloses A computer implemented method performed by a processor computer device having a processor and executable instructions stored on a non-transitory computer readable medium which, when executed by the processor, causes the processor computer device to perform the method, the method comprising: (Abstract, paragraph [0050] & [0053] disclosing devices, processor, and computer readable media)
receiving, from a value token user, a request to convert a representation of value into a value token, wherein the value token is an electronic identifier configured for storage in an electronically maintained data file, wherein the representation of value is associated with a specific purchasing activity, wherein the specific purchasing activity consists of a purchase from a first merchant, and wherein the representation of value comprises an intelligent code; (See paragraph [0162]-[0163] disclosing representations of front and back packaging at retail outlet and consumer can have barcode scanned which transmits request for validation – purchase from suitable retail outlet, [0166]-[0172] disclosing electronic data record used for the representation of dynamic content including QR code, name, etc., fig. 33-35, claim 4)
receiving an indication of the specific purchasing activity (See paragraph [0163]-[0165] disclosing request for validation, if validation data matches the copy of validation data, the gift card is validated and dynamic content representative of the dollar amount is to be loaded onto the gift card)
converting the representation of value into the value token (See Fig. 19 disclosing my cards, 22, 24, 33-35 disclosing card with no value until purchase and must be taken to cashier to activate, includes qr code and barcode, paragraph [0128], [0152], [0136], [0147], [0162], [0166] disclosing barcode can be scanned and validation data can be encoded in visual artifact, [0169] disclosing the associated gift card has been loaded and there is option use electronic data record and/or dynamic content (i.e., the $150 as provided by selecting the representation, [0171] disclosing transforming a qr code (i.e., intelligent code information) into dynamic content which can be a gift card which includes barcode that is interpretable by a point of sale device)
providing, to the value token user, the value token (See Fig. 33-34 see card and paragraph [0165] & [0167] disclosing validating cards)
Thomas does not expressly provide for wherein the representation of value comprises a physical credit card, debit card, gift card, prepaid telephone card, loyalty card, membership card, ticket or ticket card, entertainment card, sports card, prepaid card, coupon, admission pass, prepaid or pre-purchase of goods or services, cash, currency, credit card account, debit card account, merchant account, bank account, merchant-issued credit, merchant-issued point, merchant-issued promotional value, merchant-accepted credit, merchant-accepted point, merchant-accepted promotional value, or combinations thereof, wherein the value token is configured for transacting the purchasing activity at a second merchant, and wherein the processor computer device is configured to render the representation of value inoperative after converting and to provide for the continued use of the representation of value after converting, wherein the value token is configured for user purchase transactions both prior to conversion into a physical representation of the value token and after said conversion.
However, Nelson discloses a physical representative of value (See at least paragraph [0003] disclosing fixed form cards including plastic gift cards, open loop payment, and debit cards), wherein the value token is configured for transacting the purchasing activity at a second merchant, (See at least paragraph [0022] disclosing virtual card may be monetary gift card to a specific merchant or group of merchants) and wherein the processor computer device is configured to render the physical representation of value inoperative after converting in a first embodiment and to provide for the continued use of the physical representation of value by the value token user after converting in a second embodiment (See at least paragraph [0061] disclosing engine ability to enable use of one or both of the converted virtual card and/or a fixed form card (e.g., engine may allow only one card to be used – the converted virtual card or may allow both the converted virtual card and the fixed form card to be enabled for use)), and wherein the value token is configured for user purchase transactions both prior to conversion into a physical representation of the value token and after said conversion (see at least paragraphs [0105]-[0106] disclosing a printed copy of the virtual card, [0111]-[0115] disclosing printing capabilities of system).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Thomas with the ability to continue use and discontinue use of the representation of value, as taught by Nelson, since such a modification would have only united elements of the prior art, with no change in their respective functions, and the combination would have yielded predictable results including increased flexibility, tracking, and security when using one or both of the value token or value token and representation of value based on desirability. See Nelson paragraph [0060]-[0062]).
Regarding Claims 2 and 13, Thomas and Nelsen teach or suggest all of the limitations of claims 1 and 12. Additionally Thomas discloses wherein converting the representation of value into the value token comprises activating the value token (See paragraph [0165] & [0167] disclosing validations that allow dynamic content representative of the dollar amount to be loaded, such that electronic awards can be transferred). Nelson discloses the physical representation of value (See at least paragraph [0003]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Thomas with the gift card, as taught by Nelson, since such a modification would have only united elements of the prior art, with no change in their respective functions, and the combination would have yielded predictable results including greater need to convert fixed form cards that are likely to be bulky to carry and get lost to a virtual card in a secure manner. See Nelson paragraphs [0003]-[0008].
Regarding Claims 3 and 14, Thomas and Nelsen teach or suggest all of the limitations of claims 1 and 12. Additionally Thomas discloses wherein providing, to the value token user, the value token comprises associating the value token with an electronic wallet (See paragraph [0003] disclosing electronic wallet, [0052], [0154], [0175] disclosing loading gift card to ewallet).
Regarding Claims 6 and 17, Thomas and Nelsen teach or suggest all of the limitations of claims 1 and 12. Additionally Thomas discloses wherein the representation of value is displayed on a device of the value token user (See Fig. 28-29 disclosing displayed screen with representation of value). Nelson discloses the physical representation of value (See at least paragraph [0003]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Thomas with the gift card, as taught by Nelson, since such a modification would have only united elements of the prior art, with no change in their respective functions, and the combination would have yielded predictable results including greater need to convert fixed form cards that are likely to be bulky to carry and get lost to a virtual card in a secure manner. See Nelson paragraphs [0003]-[0008].
Regarding Claims 7 and 18, Thomas and Nelsen teach or suggest all of the limitations of claims 1 and 12. Additionally Thomas discloses wherein the intelligent code comprises a barcode; a QR code; an arrangement of numerals, letters, symbols, images, and/or colors; an electromagnetic signal (e.g., near field communication ("NFC"), infrared, RFID); a mechanical wave (e.g., sound); or combinations thereof (See paragraph [0136] disclosing qr codes, barcodes, etc.).
Regarding Claims 8 and 19, Thomas and Nelsen teach or suggest all of the limitations of claims 1 and 12. Additionally Thomas discloses wherein the intelligent code is unique to the value token (Se at least Fig. 3, 24, paragraph [0136]-[0139] disclosing custom URI encoded visual artifacts).
Regarding Claims 9 and 20, Thomas and Nelsen teach or suggest all of the limitations of claims 1 and 12. Additionally Thomas discloses wherein the value token comprises points, miles, dollars, Google® cash or credits, Pay Pal@ currency, or Facebook® electronic currency (See Table 4 disclosing points, paragraph [0094], [0098], [0128] disclosing miles, and [0165] & [0175] disclosing dollar values).
Regarding Claims 10 and 21, Thomas and Nelsen teach or suggest all of the limitations of claims 1 and 12. However, Thomas does not expressly provide for wherein the physical representation of value comprises a stored value card, credit card, debit card, gift card, prepaid telephone card, loyalty card, membership card, ticket or ticket card, entertainment card, sports card, prepaid card, coupon, admission pass, prepaid or pre-purchases of goods or services, cash, currency, or combinations thereof. However, Nelson discloses wherein the physical representation of value comprises a stored value card, credit card, debit card, gift card, prepaid telephone card, loyalty card, membership card, ticket or ticket card, entertainment card, sports card, prepaid card, coupon, admission pass, prepaid or pre-purchases of goods or services, cash, currency, or combinations thereof. (See at least paragraph [0003] disclosing plastic gift cards, open loop payment, and debit cards may be a fixed form card)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Thomas with the gift card, as taught by Nelson, since such a modification would have only united elements of the prior art, with no change in their respective functions, and the combination would have yielded predictable results including greater need to convert fixed form cards that are likely to be bulky to carry and get lost to a virtual card in a secure manner. See Nelson paragraphs [0003]-[0008].
Regarding Claims 11 and 22, Thomas and Nelsen teach or suggest all of the limitations of claims 1 and 12. Additionally Thomas discloses wherein providing, to the value token user, the value token is subsequent to the specific purchasing activity (See paragraph [0163]-[0165] disclosing post validation the dollar amount to be loaded onto the gift card is retrieved).
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 BRITTANY E BARGEON whose telephone number is (571)272-2861. The examiner can normally be reached Monday-Friday 9:00am to 6:00pm.
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/B.E.B/Examiner, Art Unit 3688
/Jeffrey A. Smith/Supervisory Patent Examiner, Art Unit 3688