Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC §101
1. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
2. Claims 1-26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Subject Matter Eligibility Standard
3. The examiner contends that, under the judicial exceptions enumerated in the 2019 PEG, to determine the patent-eligibility of an application, a two- part analysis has to be conducted.
Part 1: it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
Part 2A: Prong 1: (1) Determine if the claims are directed to an abstract idea or one of the judicial exceptions. Examples of abstract ideas referenced in Alice Corp. include:
1. Certain method of organizing human activity such as Fundamental Economic Practices, Commercial and Legal Interactions, or Managing Personal Behavior or Relationships or Interactions Between People.
2. A mental process.
3. Mathematical relationships/formulas.
Part 2A: Prong 2: determine if the claim as a whole integrates the judicial exception into a practical application.
Part 2B: determine if the claim provides an inventive concept.
Analysis
4. Under Step 1 of the analysis, it is found that the claim indeed recites a series of steps and therefore, is a process - one of the statutory categories.
Under Step 2A (Prong 1), using claim 1 as the representative claim, it is determined that apart from generic hardware and extra-solution activities discussed in Step 2A, Prong 2 below, the claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language “a method for facilitating a consumer’s purchase transaction; applying the time-limited exchange multiplier to the input credit value to transform to transform the input; retrieving a value balance of the stored value card…; transforming the time-limited stored credit into active stored credit,” is a commercial activity. Commercial activities fall into the category of certain methods of organizing human activity. Also, the limitations “combining the value rate with an expiration time to generate a time-limited exchange multiplier; applying the time-limited exchange multiplier to the input credit value to transform to transform the input; and retrieving a value balance of the stored value card…” can be performed in the human mind. Any steps that can be performed in the human mind fall into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Under Step 2A (Prong 2), The examiner further contends that the claim recites a combination of additional elements including “receiving in the stored value card transformation computer, an input credit value from a stored value card, an input denomination and an output denomination, from a user interface; applying the input denomination and the output denomination, from a user interface of a physical input device, applying the input denomination and the output denomination to an exchange computer to retrieve a value rate from an exchange datastore, and combining the value rate with an expiration time to generate a time-limited exchange multiplier; transmitting a hold signal to the card issuer’s authorization system; transmitting a devaluation request to the card issuer’s authorization system; and receiving a response from the card issuer’s authorization system.” These additional elements, considered in the context of claim 1 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of inputting data, processing data, transmitting and outputting data using a generic computer system. In other words, these additional limitations are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, the one or more processors is caused to perform these steps. The recited input device, exchange computer, processor, memory, and authorization system are simply being applied to carry out the abstract idea and additional steps in the claim. Further, the recited additional limitations can be reasonably characterized as reciting a patent-ineligible mental process, insignificant extra-solution and post-solution activities. For instance, the limitations “receiving in a stored value card transformation computer, an input credit value from a stored value card, an input denomination and an output denomination, from a user interface of a physical input device; applying the input denomination and the output denomination to an exchange computer to retrieve a value rate from an exchange datastore; receiving a response from the card issuer’s authorization system” are mere data gathering steps considered to be insignificant extra-solution activities. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Also, the limitations “transmitting a hold signal to the card issuer’s authorization system; transmitting a devaluation request to the card issuer’s authorization system” are directed to the insignificant post-solution activity of transmitting data (see Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir. 2016). Lastly, the limitation “wherein the physical input device converts physical phenomenon into machine internal signal” is recited to further narrow the scope of the abstract idea. All the aforementioned recited steps merely describe an intangible property of the data that does not affect the examiner’s characterization of the additional limitations as insignificant extra-solution activities and the automation of mental tasks. Thus, it is determined that claim 1 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Under Step 2B, it is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 1 are the generically recited “processor,” “input device,” “memory,” “computer system,” “exchange computer,” “authorization.” The specification does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional, hardware components or systems being used in their ordinary manner. Thus, applying an exception using a generic computer cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually.
The examiner contends that the ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188— 89 (1981).” A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.” Specifically, an improvement to an abstract idea cannot be a basis for determining that the claim recites significantly more than an abstract idea. Furthermore, relying on a “processor” to “perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OJP Techs., Inc. v. Amazon.com, Inc., 7788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, the examiner concludes that the claim does not recite additional elements that amount to significantly more than the judicial exception within the meaning of the 2019 Guidance. Note: The analysis above applies to all statutory categories of invention. As such, the independent claims otherwise styled as a computer-readable medium encoded to perform specific tasks, machine or manufacture, for example, would be subject to the same analysis. Furthermore, the limitations in the dependent claims are thus subject to the same analysis as in claim 1 and are rejected using the same rationale as in claim 1 above. More specifically, dependent claims 2-13, 15-26 do not recite additional elements but merely further narrow the scope of the abstract idea.
Response to Arguments
Applicant's arguments filed on 11/11/25 have been fully considered but they are not persuasive.
In response to applicant’s argument that the claim is not directed to an abstract idea, the examiner disagrees. The examiner contends that the claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language “a method for facilitating a consumer’s purchase transaction; applying the time-limited exchange multiplier to the input credit value to transform to transform the input; retrieving a value balance of the stored value card…; transforming the time-limited stored credit into active stored credit,” is a commercial activity. Commercial activities fall into the category of certain methods of organizing human activity. Also, the limitations “combining the value rate with an expiration time to generate a time-limited exchange multiplier; applying the time-limited exchange multiplier to the input credit value to transform to transform the input; and retrieving a value balance of the stored value card…” can be performed in the human mind. Any steps that can be performed in the human mind fall into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
In response to applicant’s argument that the claims/additional elements integrate the alleged abstract idea into a practical application, the examiner disagrees. The examiner contends that the claim recites a combination of additional elements including “receiving in the stored value card transformation computer, an input credit value from a stored value card, an input denomination and an output denomination, from a user interface; applying the input denomination and the output denomination, from a user interface of a physical input device, applying the input denomination and the output denomination to an exchange computer to retrieve a value rate from an exchange datastore, and combining the value rate with an expiration time to generate a time-limited exchange multiplier; transmitting a hold signal to the card issuer’s authorization system; transmitting a devaluation request to the card issuer’s authorization system; and receiving a response from the card issuer’s authorization system.” These additional elements, considered in the context of claim 1 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of inputting data, processing data, transmitting and outputting data using a generic computer system. In other words, these additional limitations are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, the one or more processors is caused to perform these steps. The recited input device, exchange computer, processor, memory, and authorization system are simply being applied to carry out the abstract idea and additional steps in the claim. Further, the recited additional limitations can be reasonably characterized as reciting a patent-ineligible mental process, insignificant extra-solution and post-solution activities. For instance, the limitations “receiving in a stored value card transformation computer, an input credit value from a stored value card, an input denomination and an output denomination, from a user interface of a physical input device; applying the input denomination and the output denomination to an exchange computer to retrieve a value rate from an exchange datastore; receiving a response from the card issuer’s authorization system” are mere data gathering steps considered to be insignificant extra-solution activities. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Also, the limitations “transmitting a hold signal to the card issuer’s authorization system; transmitting a devaluation request to the card issuer’s authorization system” are directed to the insignificant post-solution activity of transmitting data (see Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir. 2016).
Regarding applicant’s argument that the limitation “wherein the physical input device converts physical phenomenon into machine internal signal” integrates the judicial exception into a practical application, this is unpersuasive. The examiner contends that this limitation is recited to further narrow the scope of the abstract idea. It merely describes an intangible property of the data that does not affect the examiner’s characterization of the additional limitations as insignificant extra-solution and post-solution activities. Thus, it is determined that claim 1 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
In response to applicant’s argument that the claim amounts to significantly more than the judicial exception itself, citing Bascom, the examiner disagrees. It is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 1 are the generically recited “processor,” “input device,” “memory,” “computer system,” “exchange computer,” “authorization.” The specification does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional, hardware components or systems being used in their ordinary manner. Thus, applying an exception using a generic computer cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually.
Further, applicant's citation of Bascom is unpersuasive, as the claims at issue in Bascom are readily distinguishable over the instant claims. In Bascom the claims were held to be patent-eligible because the claimed solution focused upon the specific asserted improvement in filtering technology by providing individually customizable filtering at a remote ISP server by taking advantage of the technical capability of certain communication networks. The invention in Bascom was a technological solution to a technological problem, using an improved filtering technology rather than using conventional filtering technology. In contrast, again, the instant claims provide a generically computer-implemented solution to a business-related or economic problem, and are incomparable to the claims at issue in Bascom.
The examiner further contends that programmed computer or "special purpose computer" test of In re Alappat, 33 F.3d 1526, 31 USPQ2d 1545 (Fed. Cir. 1994) (i.e., the rationale that an otherwise ineligible algorithm or software could be made patent-eligible by merely adding a generic computer to the claim for the "special purpose" of executing the algorithm or software) is superseded by the Supreme Court’s Bilski and Alice Corp. decisions. Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623, 114 USPQ2d 1711, 1715 (Fed. Cir. 2015) ("[W]e note that Alappat has been superseded by Bilski, 561 U.S. at 605–06, and Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 110 USPQ2d 1976 (2014)"); Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792 F.3d 1363, 1366, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015) ("An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer"). Lastly, eligibility should not be evaluated based on whether the claimed invention has utility, because "[u]tility is not the test for patent-eligible subject matter." Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1380, 118 USPQ2d 1541, 1548 (Fed. Cir. 2016).
Further still, the claimed step “transforming the time-limited stored credit into active stored credit” is part of the abstract idea. While the time-limited stored credit is transformed into an active stored credit using a transformation computer, the transformation is not a physical transformation; rather, it is an application of computer to convert a time-limited stored credit into an active stored credit.
The examiner further contends that there is a clear difference between the improvements in computer functionality, on one hand, and the use of existing computer as tools to perform a particular task, on the other; the solution addressed by the applicant’s claims is a business problem and not a technical problem. Rather than addressing a problem unique to the technology in which the solution is implemented, applicant’s claim 1 merely automates, using generic computer technology, a business process in which profitability is increased by facilitating a consumer’s purchase transaction. Thus, it is determined that claim 1 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
In response to the applicant’s arguments that the claim does not seek to tie up the alleged abstract idea so as to preempt or tie-up others from practicing “facilitating a consumer’s purchase transaction” in all fields, the examiner disagrees. While the Supreme Court has described “the concern that drives this exclusionary principle [i.e., the exclusion of abstract ideas from patent eligible subject matter] as one of pre-emption,” Alice Corp., 134 S.Ct. at 2354, characterizing pre-emption as a driving concern for patent eligibility is not the same as characterizing pre-emption as the sole test for patent eligibility. “The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability” and “[f]or this reason, questions on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2354). While “preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.”
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OJO O OYEBISI whose telephone number is (571)272-8298. The examiner can normally be reached on Monday-Friday, 9am-7pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Behncke can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OJO O OYEBISI/Primary Examiner, Art Unit 3695