DETAILED ACTION
Status of Application
This action is a Non-Final Rejection. This action is in response to the request for continued examination filed on June 22, 2026.
Claims 1, 4, 11, and 14 have been amended.
Claims 1-20 are pending and rejected.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 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.
Response to Arguments
Regarding the rejection under 35 U.S.C. § 101, Applicant argues that the claims are eligible for the same reason as claim 1 of Example 40. Remarks at 11-13. Applicant asserts that “[c]onsistent with the Office’s rationale for the patent eligibility of Claim 1 of Example 40 of the Office’s eligibility guidance, independent Claim 1 of this Application, as a whole, is directed to a particular improvement in securely transforming a physical representation of a gift card into a digital equivalent (e.g., a validate, machine-readable on-device artifact). Even if authenticating, retrieving, automatically populating contact information regarding a user based on a unique user identification code linked to the biometric information utilized in the authenticating, or the retrieval of the updated value and synchronization of the balance were viewed individually as pre-solution or post-transaction activity, the claim as a whole is directed to a particular improvement: generating a validated, machine-readable on-device artifact (e.g., digital equivalent of first account information) from an authenticated user and keeping the artifact consistent with the issuer-side value after each use.” Id. at 12-13. However, the claim in Example 40 provided an “improvement in collecting traffic data.” Per the analysis in the example, “the method limits collection of additional Netflow protocol data to when the initially collected data reflects an abnormal condition, which avoids excess traffic volume on the network and hindrance of network performance. The collected data can then be used to analyze the cause of the abnormal condition. This provides a specific improvement over prior systems, resulting in improved network monitoring.” On the other hand, the instant claims are allegedly improving a business process, which is an abstract idea. For example, Applicant’s description of the instant claim’s alleged improvement is “generating a validated, machine-readable on-device artifact (e.g., digital equivalent of first account information) from an authenticated user and keeping the artifact consistent with the issuer-side value after each use.” Applicant is describing an alleged improvement to the abstract idea and not a technological improvement similar to the improved network monitoring of Example 40.
Applicant further argues that the claims are eligible for the same reason as claim 1 of Example 42. Remarks at 13-14. Applicant asserts that instant claim 1 “is directed to a particular improvement in securely transforming a physical representation of a gift card into a digital equivalent. For example, first, the claims convert first account information into a standardized, machine-readable artifact: scanned account information obtained via the camera is encoded into a digital equivalent that ‘includes a bar code that renders on the display … and is configured to be scanned by a bar code scanner.’ Second, the claims automatically maintain cross-system consistency: after completion of the payment transaction, the device retrieves the updated value and updates the balance ‘in both the digital equivalent stored in the memory and an account of the user associated with the swap service’.” Id. at 14. However, claim 1 of Example 42 was eligible because “the additional elements recite[d] a specific improvement over prior art systems by allowing remote users to share information in real time in a standardized format regardless of the format in which the information was input by the user.” This type of technological improvement is not present in the instant claims. For example, generating a digital equivalent of data is not a technological improvement. Similarly, updating balances in two locations is not a technological improvement. Instead, Applicant is using a programmed general purpose computing device to perform these actions.
As such, the rejection is maintained.
Claim Interpretation
Applicant should be aware that there is claim language that does not serve to differentiate the claims from the prior art and/or provide an additional element that can be a consideration for eligibility1. See MPEP 2103(c).
Contingent Limitations
Contingent limitations are generally not given patentable weight. For example, if a claim states that a step occurs if a condition is met, the broadest reasonable interpretation of the claim does not require that the contingent step occurs because the condition may not be satisfied. System claims differ in that even if a condition that is required to perform a function is not met, the structure for performing the contingent limitation is given patentable weight. See MPEP 2111.04(II); see also Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016).
The following limitation is contingent:
Claim 1: when receiving a selection of the scanning for the inputting; displaying, on the computing device, a scanner for obtaining, from the gift card, a digital representation of the first account information; and obtaining, on the computing device, the digital representation of the first account information via the scanner, wherein the obtaining includes capturing the gift card via a camera of the computing device (There is no positively recited step of receiving a selection of the scanning for the inputting. Therefore, if scanning is not selected, the displaying and obtaining steps will not occur.)
Claim Objections
Claims 1 and 11 are objected to for the following reason: This claim recites “when receiving a selection of the scanning for the inputting;” It appears that the “;” (semicolon) should be a “:” (colon). Appropriate correction is required.
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 1-20 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Does the Claim Fall within a Statutory Category? (see MPEP 2106.03)
Yes, with respect to claims 1-10, which recite a method and are therefore directed to the statutory class of process.
Yes, with respect to claims 11-20, which recite a non-transitory computer readable memory and are therefore directed to the statutory class of manufacture.
Step 2A, Prong One: Is a Judicial Exception Recited? (see MPEP 2106.04(a))
The following claims (claims 1-10 are representative) identify the limitations that recite additional elements in bold and the abstract idea without bold:
1. A method for execution by a computing device, the method comprising:
authenticating, by the computing device, a user of the computing device based on biometric information of the user, wherein the biometric information is linked to a unique user identification code, and wherein the unique user identification code is associated with contact information regarding the user;
retrieving, from storage of the computing device, the contact information regarding the user based on the unique user identification code;
automatically populating, by the computing device for utilization of a swap service operating on the computing device, first fields of the swap service with at least some of the contact information;
generating, by the computing device for utilization during a transaction by the swap service, a request for first account information on a display of the computing device, wherein the first account information is associated with a gift card, and wherein the request includes a prompt for the user of the computing device to select inputting the first account information by one of (i) manually by the user, or (ii) scanning by the computing device;
when receiving a selection of the scanning for the inputting;
displaying, on the computing device, a scanner for obtaining, from the gift card, a digital representation of the first account information; and
obtaining, on the computing device, the digital representation of the first account information via the scanner, wherein the obtaining includes capturing the gift card via a camera of the computing device;
determining, on the computing device, the first account information is valid;
in response to determining the first account information is valid, encoding, by the computing device, the first account information into a digital equivalent of the gift card, wherein the digital equivalent includes a bar code that renders on the display of the computing device and is configured to be scanned by a bar code scanner;
storing, on the computing device, the digital equivalent of the gift card in a memory associated with the computing device;
rendering, on the display of the computing device, the bar code of the digital equivalent for a payment transaction at a point of sale;
retrieving, by the computing device, an updated value of the gift card after completion of the payment transaction; and
updating, by the computing device based on the updated value, a balance of the gift card in both the digital equivalent stored in the memory and an account of the user associated with the swap service.
2. The method of claim 1 further comprises:
obtaining second account information regarding a second account, wherein the second account is one of: a bank account, a credit card account, a debit card account, an open loop card account, a closed loop card account, a brokerage account, and a crypto currency account.
3. The method of claim 2, wherein the second account information is inputted by one or more of: voice commands, extraction of information from a photo or video using optical character recognition, via near field communication, via Bluetooth low energy, and via a radio frequency identification (RFID) communication.
4. The method of claim 1, wherein when receiving the selection of the manually by the user, the method further comprises: generating for display on the display of the computing device, a keyboard and input fields for receiving the first account information; and obtaining, via the keyboard, the first account information.
5. The method of claim 1 further comprises:
monitoring for a triggering event;
determining the triggering event is detected;
obtaining a merchant identification code that uniquely identifies a merchant;
obtaining the contact information associated with the user from the memory; and
sending the contact information to a merchant computer associated with the merchant to facilitate correspondence from the merchant computer, wherein the correspondence is one or more of: a coupon, an offer of a discount, a reminder to use a remaining card balance associated with the gift card, and a notification of nearby merchant locations associated with the merchant computer where the gift card is redeemable.
6. The method of claim 5, wherein the triggering event includes one or more of:
a geographic location of the computing device;
an ongoing transaction associated with the gift card;
a reloading of the gift card; and
accessing of a gift card account regarding the gift card.
7. The method of claim 5, wherein the correspondence further comprises:
an incentive for transferring value via the swap service;
an offer to transfer gift card to another user;
an offer to transfer gift card to multiple other users;
an offer to donate remaining balance of gift card to a charity; and
an offer to purchase another gift card.
8. The method of claim 1, wherein the biometric information comprises one or more of:
a fingerprint;
a handprint;
facial recognition;
an iris scan; and
a retina scan.
9. The method of claim 1 further comprises:
generating, for utilization during the transaction by the swap service, a request for second account information on a touch screen of the computing device, wherein the second account information is associated with a second gift card, and wherein the request includes a second prompt for the user of the computing device to select inputting the second account information by one of (i) manually by the user, or (ii) second scanning by the computing device;
receiving a second selection of the second scanning for the inputting the second account information; and
displaying the scanner for obtaining, from the second gift card, a second digital representation of the second account information;
obtaining the second digital representation of the second account information via the scanner;
determining the second account information is valid;
encoding the second account information into a second digital equivalent of the second gift card; and
storing the second digital equivalent of the second gift card in memory associated with the computing device.
10. The method of claim 1 further comprises:
generating, for utilization during a second transaction by the swap service, a request for second account information on the display of the computing device;
receiving an identification of the second account information;
when the second account information is associated with the user, retrieving the contact information from a cache of the computing device; and
automatically populating second fields of the swap service with at least some of the contact information.
Yes. But for the recited additional elements as shown above in bold, the remaining limitations of the claims recite certain methods of organizing human activity. The claim limitations identified as abstract idea are directed to a swap service that provides a method for using a gift card. This type of method of organizing human activity is a fundamental economic practice because it includes a payment and value transfer, and it is a commercial or legal interaction such as a sales activity or behavior or a business relation. Thus, the claims recite an abstract idea.
Step 2A, Prong Two: Is the Abstract Idea Integrated into a Practical Application? (see MPEP 2106.04(d))
No. The claims as a whole merely use a computer as a tool to perform the abstract idea. The technology related components (i.e., additional elements that are in bold above) are recited at a high level of generality and are merely invoked as tools to perform the abstract idea. For example, the recited additional elements involve a computing device. Simply implementing the abstract idea using a programmed general purpose computing device is not a practical application of the abstract idea. Additionally, there is no improvement to the functioning of a computer or technology. Therefore, the abstract idea is not integrated into a practical application.
Step 2B: Does the Claim Provide an Inventive Concept? (see MPEP 2106.05)
No. As discussed with respect to Step 2A, Prong 2, the additional elements in the claims, both individually and in combination, amount to no more than tools to perform the abstract idea. Merely performing the abstract idea using a computer cannot provide an inventive concept. Therefore, the claims do not provide an inventive concept.
As such, the claims are not patent eligible.
Relevant Prior Art
The following references are relevant to Applicant’s invention:
Yankovich et al., U.S. Patent Application Publication Number 2012/0234912 A1. This reference teaches a method for converting the value of a gift card for use with a mobile device.
Zacarias et al., U.S. Patent Application Publication Number 2013/0073459 A1. This reference teaches a method for managing a digital wallet with gift cards on behalf of a user.
Hughes et al., U.S. Patent Application Publication Number 2012/0030103 A1. An image of a gift card can be taken by a device so that a user does not have to manually enter the gift card information.
Email Communications
Per MPEP 502.03, Applicant may authorize email communications by filing Form PTO/SB/439, available at https://www.uspto.gov/sites/default/files/documents/sb0439.pdf, via the USPTO patent electronic filing system.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH H ROSEN whose telephone number is (571) 270-1850 and email address is elizabeth.rosen@uspto.gov. The examiner can normally be reached Monday - Friday, 10 AM ET - 7 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael 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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/ELIZABETH H ROSEN/Primary Examiner, 3693
1 See MPEP 2106.04(d)(2) (“Examiners should keep in mind that in order to qualify as a "treatment" or "prophylaxis" limitation for purposes of this consideration, the claim limitation in question must affirmatively recite an action that effects a particular treatment or prophylaxis for a disease or medical condition. An example of such a limitation is a step of "administering amazonic acid to a patient" or a step of "administering a course of plasmapheresis to a patient." If the limitation does not actually provide a treatment or prophylaxis, e.g., it is merely an intended use of the claimed invention or a field of use limitation, then it cannot integrate a judicial exception under the "treatment or prophylaxis" consideration. For example, a step of "prescribing a topical steroid to a patient with eczema" is not a positive limitation because it does not require that the steroid actually be used by or on the patient, and a recitation that a claimed product is a "pharmaceutical composition" or that a "feed dispenser is operable to dispense a mineral supplement" are not affirmative limitations because they are merely indicating how the claimed invention might be used.”)
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