DETAILED ACTION
Status of Claims
Claims 1, 4-5, 12, and 15-16 are currently amended.
Claims 2 and 13 have been canceled.
Claims 1, 3-12, and 14-22 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 filed 12/22/2025 with respect to the 35 USC 103 rejection have been fully considered but they are not persuasive. Applicant argues that Thomas discloses that the value token is not transferable and therefore the Office Action does not establish prima facie case of unpatentability because “none of the prior art of record, alone or in combination, can be shown to disclose each and every element of the pending claims. Examiner notes that Nelsen specifically discloses that the value token is transferrable to a third party recipient. See at least paragraph [0063] disclosing option to re-gift the card, [0073], [0097] disclosing ability to purchase virtual card by user and send the virtual card to a friend or family member, [0108] disclosing ability to transfer or regift the virtual card. It would have been obvious to have included the ability to transfer the value token to a third-party recipient as taught by Nelsen because gift cards are meant for gifting to others and typically purchased to pass along to someone else and allowing for transfer of the virtual card by someone who is purchasing the virtual card for a friend or family member would provide for increased security and less loss than a traditional plastic gift card. Examiner notes that the combination of Thomas and Nelson does not change the principle of operation of the prior art invention being modified, or render it inoperable for its intended purpose. While the writing within the picture of the gift card discloses that the card may not be transferrable and rendered for cash, this it the only disclosure of that particular language. There is nothing to suggest that the non-transferring is at all the principle operation of the prior art nor that the invention in Thomas would no longer be satisfactory for its intended purpose. Here, the combined teachings of the references of Thomas and Nelson would have suggested to those of ordinary skill in the art that the token may be transferrable. See MPEP 2143.01(V) & (VI) and 2145(III). It would have been predictable that in one embodiment the token may not be transferrable and in another it could be. For at least these reasons, Examiner maintains the previous 35 USC 101 rejection.
35 USC 101
Applicant's arguments filed 12/22/2025 with respect to the 35 USC 101 rejection have been fully considered but they are not persuasive. Applicant argues that he claims integrate the alleged abstract idea into a practical application. Examiner respectfully disagrees. 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, 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 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 argues these arguments are misplaced and can serve as no basis because “as the USPTO’s Guidance explains, ‘Step 2A specifically excludes consideration of whether the additional elements represent well-understood, routine, conventional activity,’ i.e., Step 2A excludes consideration of whether there ‘has been an improvement to the physical representation of value itself’ and/or whether there is ‘some technical improvement to the processor.’” Examiner respectfully disagrees. In neither the 101 rejection nor in the response to Applicant’s Arguments has examiner suggested or analyzed the claims (in either Step 2A or 2B) under well-understood, routine, and conventional. Therefore, this argument is moot. Examiner directs Applicant’s attention to 2106.04(d) of the MPEP where discussion regarding Step 2A considerations for evaluating whether additional elements integrate a judicial exception into a practical application including an improvement in the functioning of a computer, or an improvement to other technology or technical field.
Applicant argues that there has been an “improvement to the physical representation of value” and it is analogous to an improvement of a Billy club. Examiner respectfully disagrees. A physical representation of value effectuating a transaction when the physical representation of value is not physically present is not analogous to a Billy club with high intensity lights and sounds. Again, there has been no improvement to the physical representation of value.
Applicant further argues that Examiner has 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., 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. 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, 3-12, and 14-22 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 are directed to statutory categories. MPEP 2106.03. Specifically, the method, as claimed in claims 1 and 3-11, is directed to a process. Additionally, the system, as claimed in claims 12 and 14-22, 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 representation of value is associated with a specific purchasing activity and wherein the value token is transferable to a third-party recipient;
receiving an indication of the specific purchasing activity,
converting the representation of value into the value token, wherein converting the representation of value into the value token comprises activating the value token for use by the value token user, and either render the representation of value inoperative for the value token user after converting or provide for continued use of the representation of value by the value token user after converting;
providing, to the value token user, the value token.
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 2019 PEG, 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). When an additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use, the judicial exception has not been integrated into a practical application. 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, electronic representation of value, and intelligent code. Although reciting additional elements, the 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. The courts have identified various examples of limitations as merely indicating a field of use/technological environment in which to apply the abstract idea, such as specifying that the abstract idea of a commonplace business method or mathematical algorithm being applied on a general purpose computer (Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 573, U.S. 208, 223, 110 USPQ2d 1976, 1983 (2014)) and requiring the use of software to tailor information and provide it to the user on a generic computer (Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370-71, 115 USPQ2d 1636, 1642 (Fed. Cir. 2015)). MPEP 2106.05(f). Similarly, specifying that the abstract idea of providing a value token 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. As such, the additional elements do not integrate the judicial exception into a practical application of the abstract idea providing a value token and, thus, representative claim 1 is directed to an abstract idea.
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 generally linking the abstract idea using a generic computer component.
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 of facilitating 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 3-11 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 representation 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 4 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 3-11 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 14-22 do not recite additional elements supplemental those recited in claims 3-11. 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 3-11, respectively.
Thus, dependent claims 14-22 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 (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.
Claim 1, 3-12, and 14-22 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 representation of value is a physical representation of value, an electronic representative of value, or a combination thereof, wherein the representation of value is associated with a specific purchasing activity, and wherein the representation of value comprises an intelligent code; (See paragraph [0162]-[0163], claim 4, Fig. 33-34 disclosing physical card, [0078]-[0081] & Fig. 28-29 disclosing electronic gift card)
receiving an indication of the specific purchasing activity (See paragraph [0163]-[0165])
converting the representation of value into the value token (See Fig. 19, 22, 24, 33-35, paragraph [0128], [0152], [0136], [0147], [0162], [0166], [0169], [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), wherein converting the representation of value into the value token comprises activating the value token for use by the value token user (See Fig. 33-34 and paragraph [0165] & [0167])
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 value token is transferrable to a third-party recipient; and wherein the processor device is configured to either render the representation of value inoperative for the value token user after converting or to provide for the continued use of the representation of value by the value token user after converting.
However, Nelsen discloses wherein the value token is transferrable to a third-party recipient; (See at least paragraph [0063] disclosing option to re-gift the card, [0073], [0097] disclosing ability to purchase virtual card by user and send the virtual card to a friend or family member, [0108] disclosing ability to transfer or regift the virtual card) and wherein the processor device is configured to either render the representation of value inoperative for the value token user after converting or to provide for the continued use of the representation of value by the value token user after converting (See at least paragraph [0061] disclosing engine ability to enable use of one or both of a converted virtual card and/or a fixe 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).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have included ability to continue use and discontinue use of the representation of value as taught by Nelsen in the value converting system of Thomas because it would allow for increased flexibility, tracking, and security to transfer when using one or both of the value token or value token and representation of value based on desirability. See Nelsen paragraph [0060]-[0063].
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 4 and 15, Thomas and Nelsen teach or suggest all of the limitations of claims 1 and 12. Additionally Thomas discloses wherein the representation of value is the physical representation of value (See Fig. 33-34 disclosing physical card)
Regarding Claims 5 and 16, Thomas and Nelsen teach or suggest all of the limitations of claims 1 and 12. Additionally Thomas discloses wherein the representation of value is the electronic representation of value (See at least paragraph [0078]-[0081] & Fig. 28-29 disclosing electronic gift card).
Regarding Claims 6 and 17, Thomas and Nelsen teach or suggest all of the limitations of claims 5 and 16. Additionally Thomas discloses wherein the representation of value is displayed on a device of the value token user (See Fig. 28-29).
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 [0054]-[0057], [0069], [0136]-[0139], [0156]).
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. Additionally Thomas discloses wherein the representation of value comprises a loyalty card, a membership card, a ticket, an entertainment card, a sports card, a prepaid card, a coupon, an admission pass, or combinations thereof (See at least paragraph [0003], Table 1, paragraph [0063], [0069], [0071], [0115]-[0116], [0127], [0152], [0162], [0177] disclosing various types of loyalty cards, prepaid gift cards, passes, tickets, etc.)
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]).
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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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