DETAILED ACTION
Status of Claims
Claims 1-4, 6, 14, and 19 are currently amended.
Claims 15 and 17-18 have been canceled.
Claims 1-14, 16, and 19-20 are currently pending and have been examined.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/13/2026 has been entered.
Response to Arguments
35 USC 101
Applicant's arguments filed 01/13/2026 with respect to the 35 USC 101 rejection have been fully considered but they are not persuasive. Applicant argues that based on clarification/amendments, that the claims overcome the present 35 USC 101 rejection. Examiner respectfully disagrees. The amendments merely further define the abstract idea by detailing how custody is obtained, how verifying is accomplished, and what happens when the use verification compares favorably. Examiner notes that the added additional element of a digital wallet and transactions blockchain do not integrate the abstract idea into a practical application because it merely amounts to no more than an instruction to apply the abstract idea using a generic device/tool to perform the abstract idea. It is merely a generic element that is used to apply the abstract idea. For at least these reasons, Examiner maintains the previous 35 SUC 101 rejection.
35 USC 103
Applicant’s arguments and amendments filed 01/13/2026, with respect to the 35 USC 103 rejection have been fully considered and are persuasive. The 35 USC 103 rejection of 07/14/2025 has been withdrawn.
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 1-14, 16, and 19-20 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 eligibility analysis the claims are directed to statutory categories. MPEP 2106.03. Specifically, the method, as claimed in claims 1-14, 16, and 19-20, is directed to the process.
While the claims fall within statutory categories, under Step 2A, Prong 1 of the eligibility analysis (MPEP 2106.04), the claimed invention recites the abstract idea of determining whether an exchange item is valid for a transaction. Specifically, representative claim 1 recites the abstract idea of:
Receiving use information indicating an exchange item for redemption with a merchant, wherein the use information include a merchant identifier associated with the merchant;
Obtain custody of transaction information associated with the exchange item;
Obtaining a record associated with the exchange item based on an identifier associated with the exchange item, wherein the record includes an identification of an owner associated with the exchange item;
Verifying that the ownership information in the transactions information is correct based on the record;
When the ownership information is correct, providing use verification information, wherein the use verification information includes at least a portion of the use information and at least a portion of the record;
obtaining a use verification response that indicates that the use verification information compares favorably to rules, conditions, and use options associated with the exchange item and merchant information associated with the merchant entity;
When the use verification information compares favorably: executing the redemption of the exchange item with the merchant; updating the transactions information with the verifying the ownership information, the use verification response, and the redemption to produce an updated transactions information; and providing custody of the updated transactions information.
Under 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 enumerated in MPEP 2106.04(a). The abstract idea identified above 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 use information regarding a transaction associated with an exchange item, accessing custody information, obtaining a record associated with the item, verifying ownership information is correct, providing use verification information, obtaining a use verification response that indicates it compares favorably, executing redemption of the item, updating the with the verifying the ownership information, use verification respoen, and the redemption, and providing custody is a commercial or legal interaction because it is a sales activity and/or relates to business relations. Thus, representative claim 1 recites an abstract idea.
Under 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 marketplace server, a computing network, a computing device, a merchant computing device, a digital wallet, a transactions blockchain, marketplace database, owner computing device, exchange item trusted module. 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 item information) 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, 217, (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 Alice/Mayo test, 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 2-14, 16, and 19-20 do not aid in the eligibility of independent claim 1. For example, claims 2-20 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: a digital chain of custody (claim 14, 20). However, these 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. 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 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.
Dependent claims 2-13, 16, and 19 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 2-14,16, and 19-20 are also ineligible.
Subject Matter Free of Prior Art
Claim 1 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action. Claims 2-14, 16, and 19-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of subject matter free of prior art:
The Examiner hereby asserts that the totality of the evidence neither anticipates nor renders obvious the particular combination of elements as claimed. That is, the Examiner emphasizes the claims as a whole and hereby asserts that the totality of the evidence fails to set forth, either explicitly or implicitly, an appropriate rationale for combining or otherwise modifying the available prior art to arrive at the claimed invention. The combination of features as claimed would not be obvious to one of ordinary skill in the art because any combination of the evidence at hand to reach the combination of features as claimed would require a substantial reconstruction of Applicant’s claimed invention relying on improper hindsight bias.
One piece of prior art is Smith et al. (US 2017/0364908) disclosing receiving use information regarding a transaction including a merchant identifier, obtaining a record associated with the item from a marketplace database, determining whether the record indicates the computing device is the owner computing device and providing use verification information. See at least paragraphs [0017]-[0019], [0037], [0040], [0050]-[0052], [0066]. Another piece of prior art is Liebmann (US 2013/0204690) disclosing the use verification information comparing favorably to rules, conditions, and use options associated with the exchange item. See at least paragraph [0030], [0051]. Another piece of prior art is Ansari (US 2017/0200147) disclosing receiving a request to use a digital exchange item and updating digital chain of custody in regards to the request, verifying information, updating the information based on the verified information, updating merchant information, verifying the merchant information, and updating digital chain of custody. See at least paragraph [0009], [0041], [0042], [0044], [0046], [0049], [0050]-[0052]. Another piece of pertinent prior art is Choi et al. (US 2014/0207557) disclosing wherein the computing device has secure custody of a digital chain of custody of the digital exchange item and obtaining the secure custody of the digital chain of custody of the digital exchange item form the computing device. See paragraph [0037], [0052], [0066], [0044], [0038], [0047]. Another piece of pertinent prior art is Zinder et al. (US 2017/0005804) disclosing wherein the digital chain of custody includes secure data blocks of information related to the digital exchange item. See paragraph [0009], [0047]. Another piece of pertinent prior art is NPL: "Holding, clearing and settling securities through blockchain technology Creating an efficient system by empowering asset owners" (Micheler, Eva and von der Heyde, Luke, Holding, Clearing and Settling Securities Through Blockchain Technology Creating an Efficient System by Empowering Asset Owners (May 31, 2016). Available at SSRN: https://ssrn.com/abstract=2786972 or http://dx.doi.org/10.2139/ssrn.2786972.) disclosing using
blockchain technology as an un-intermediated ledger to transfer securities with minimal risk. See pages. 4-5. However, none of these cited pieces of prior art nor any other prior art expressly provide for Applicant's current claims, either individually or in combination and therefore is deemed subject matter free from prior art.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey A Smith can be reached at (571) 272-6763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/B.E.B/ Examiner, Art Unit 3688
/Jeffrey A. Smith/ Supervisory Patent Examiner, Art Unit 3688