DETAILED ACTION
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 .
Acknowledgements
This is a first office action on the merits in response to the application filed January 30, 2023 and the election of September 16, 2025.
Claims 1-19 and 21 are pending in the application.
Claims 17-19 and 21 are withdrawn from consideration.
Claims 1-16 are examined below.
Based on a comparison of the PGPub US 2023/0297978 A1 with applicant’s originally submitted specification, the PGPub appears to be a fair and accurate record of the applicant’s specification. Therefore, references to applicant’s specification will typically be made by this examiner as references to the PGPub. Unless otherwise noted, references to applicant’s specification as published via PGPub will be in the format [####], and references to applicant’s specification as filed will be in the format ¶## or by page and line number.
The notations in the immediately preceding paragraph apply to any future office actions from this examiner.
Examiner Request
Applicant is requested to indicate where in the specification there is support for amendments to claims should applicant amend. The purpose of this is to reduce potential 35 USC 112(a) or 35 USC 112, 1st paragraph issues that can arise when claims are amended without support in the specification. Examiner thanks applicant in advance. See also relevant portions of MPEP 2163.II.A:
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a "simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘___’ in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported."); see also MPEP § 714.02 and § 2163.06 ("Applicant should ... specifically point out the support for any amendments made to the disclosure."); and MPEP § 2163.04 ("If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.").
Election/Restrictions
Applicant's election with traverse of claims 1-16 in the reply filed on September 16, 2025 is acknowledged. The traversal is on the ground(s) that a posteriori lack of unity of invention has not been established and there is no examination burden. Regarding the lack of unity of invention, applicant argues that the examiner’s assertions “are procedurally deficient.” This argument fails at least because applicant does not cite any particular procedure that examiner has failed to follow. Regarding the lack of examination burden, the examiner is unaware of any requirement to establish examination burden in order to determine lack of unity of invention. However, the examiner notes the differing terminology employed between the different claim groups creates a search burden. Also, the extensive 35 USC 112(b) issues with the claims (see below) create additional examination burden. For these reasons, the requirement is still deemed proper and is therefore made FINAL.
Claims 17-19 and 21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on September 16, 2025.
Information Disclosure Statement
The attached information disclosure statements are in compliance with the provisions of 37 CFR § 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Objections
The preliminary claim amendment filed on January 30, 2020 appears to include color or grayscale text. This color or grayscale text has rendered poorly upon conversion from PDF to TIFF. See PDF Guidelines for Patent Center.1 The claims are adequate for examination, however, any further submissions of color or grayscale claims may be considered non-compliant.
Claim 6 is objected to because of the following informalities: where applicant recites “The electronic instant tokenised gifting method according to any one of the preceding claim 5,” it appears that applicant intends to recite “The electronic instant tokenised gifting method according to claim 5” or similar.
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 1-16 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter.
Regarding claims 1-16, the claimed invention is directed to an abstract idea without significantly more. Representative claim 1 recites providing an interface associated with an instant cross-border gifting system, associating payment credentials of the gifter with an instant cross-border gifting system account associated with the gifter using the interface, and transferring with the instant cross-border gifting system, funds from the payment credentials to one or more giftees, which constitutes a certain method of organizing human activity (specifically, a fundamental economic practice, or commercial interaction. Accordingly, the claim recites an abstract idea. This judicial exception is not integrated into a practical application because the additional elements beyond the abstract idea simply link the abstract idea to a particular technological environment (computers) or amount to extra-solution activity (the various intended results of the method recited as wherein clauses). Because the abstract idea is not integrated into a practical application, claim 1 is “directed to” an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements identified above represent only well-understood, routine, and conventional technology (or placeholders for such) when compared with the court decisions listed in MPEP § 2106.05(d). Viewing the additional elements as a combination does not add anything further than the individual elements. Therefore, the additional elements in the claim are not sufficient to amount to an inventive concept. Because claim 1 is directed to an abstract idea and fails to recite an inventive concept, it is patent ineligible.
The dependent claims when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101. The additional limitations added by these claims fail to either integrate the claims into a practical application or add an inventive concept, because they serve to further narrow the abstract idea without integrating it into a practical application (claims 5-12 and 14-16), add additional elements that simply further link to a particular technological environment (claims 2-4, 12, and 13), and/or amount to optional elements (claim 14). Viewing the additional elements of the dependent claims as a combination does not add anything further than the individual elements. Therefore, the dependent claims neither practically integrate the abstract idea nor constitute an inventive concept, and these claims are also rejected as patent ineligible.
Claim Rejections - 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd Paragraph
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-16 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter that the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
The claims are generally narrative and indefinite, failing to conform to current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors. See below for examples of errors in the claims.
Regarding claim 1, applicant’s recitation “An electronic instant tokenised gifting method including at least one server” would have been unclear to a person having ordinary skill in the art at the time of the invention. This is a method claim. A method claim is comprised of steps, not structure. For the purposes of determining patent eligibility and comparison with the prior art, the examiner is interpreting “An electronic instant tokenised gifting method including at least one server” to be “An electronic instant tokenised gifting method using at least one server.”
Further regarding claim 1, applicant’s recitation “transferring … funds from the one or more payment credentials” would have been unclear to a person having ordinary skill in the art at the time of the invention. One of ordinary skill would not understand how a credential could contain funds for transfer. For the purposes of determining patent eligibility and comparison with the prior art, the examiner is interpreting “transferring … funds from the one or more payment credentials” to be “transferring … funds from an account or accounts linked to the one or more payment credentials.”
Further regarding claim 1, applicant’s recitation “transferring … funds …, wherein the funds are received in the form of a tokenised gift” would have been unclear to a person having ordinary skill in the art at the time of the invention. It is unclear how the funds take the form of a “tokenised gift.” Based on the specification, the tokenised gift appears to be an image or emoji (see claims 12 and 13). Based on the specification it is unclear how the funds are “in the form” of the image or emoji. Is an image simply displayed concurrently with transfer of funds? Or something else? For the purposes of determining patent eligibility and comparison with the prior art, the examiner is interpreting this to require both display of an image or emoji and transfer of funds (similar to the additional requirement of claim 12).
Further regarding claim 1, applicant’s recitation “wherein a monetary value of the tokenised gift is approximately equal to an average value of the tokenised gift in a geographic location of the one or more giftees” would have been unclear to a person having ordinary skill in the art at the time of the invention. It is unclear whether this adds a step. It is unclear what degree of approximation fits within the scope of this claim. It is further unclear how the average is calculated. It is yet further unclear whether this amounts to an intended result of the step of transferring funds. For the purposes of determining patent eligibility and comparison with the prior art, the examiner is interpreting this as an intended result of the method and hence not further limiting the claim.
Claims 7 and 8 contain language similar to the recitation in claim 1 discussed in the immediately preceding paragraph, and claims 7 and 8 are rejected for reasons similar to those discussed above, and the recitations are similarly interpreted as intended results of the claimed method.
Regarding claim 2, applicant’s recitation “one or more servers” would have been unclear to a person having ordinary skill in the art at the time of the invention. It is unclear whether this is the same set of servers as those introduced in the preamble of claim 1 from which this claim depends. On one hand, when different elements are introduced in a claim, they are assumed to be different elements. On the other hand, the specification does not appear to support this interpretation. For the purposes of determining patent eligibility and comparison with the prior art, the examiner is interpreting them to be the same element.
Regarding claim 6, applicant’s recitation “wherein the funds transferred by the gifter from the one or more payment credentials to the instant cross-border electronic tokenised gifting system account associated with the gifter may be credited to the instant cross-border electronic tokenised gifting system account associated with the gifter instantaneously” would have been unclear to a person having ordinary skill in the art at the time of the invention. It is unclear whether the “credit[ing]” is a required step, or not. For the purposes of determining patent eligibility and comparison with the prior art, the examiner is interpreting it as optional, and, therefore, not further limiting.
Claim 14 contains language similar to the recitation in claim 6 discussed in the immediately preceding paragraph, and claim 14 is rejected for reasons similar to those discussed above.
Further regarding claim 6, the term "instantaneously" is a relative term which renders the claim indefinite. The term "instantaneously" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Use of the term "instantaneously" is a relative term that only has meaning when used in a comparative context. What degree of instantaneity is intended to be included or excluded by the term "instantaneously" is not clear.
Claim 9 contains language (“as soon as”) similar to the recitation in claim 6 discussed in the immediately preceding paragraph, and claim 9 is rejected for reasons similar to those discussed above.
Regarding claim 11, applicant’s recitation “wherein the one or more credits transferred by the gifter relate to the purchase of a specific item or service” would have been unclear to a person having ordinary skill in the art at the time of the invention. It is unclear whether this requires a further step to be performed, or not. If this does not require an additional step, then it is unclear how this recitation further limits any of the positively recited steps of the method. Finally, whether a credit “relates to” a purchase is a subjective determination, and, therefore, the limitation (if any) would vary based on the reader. For the purposes of determining patent eligibility and comparison with the prior art, the examiner is interpreting this recitation as an intended result of the claimed method.
Regarding claim 15, applicant’s recitation “wherein the instant cross-border electronic tokenised gifting system allows the gifter and/or the giftee to notify the instant cross-border electronic tokenised gifting system of future travel” would have been unclear to a person having ordinary skill in the art at the time of the invention. It is unclear whether this recitation requires a step to be performed. It is the examiner’s position that unless an actor is preventing someone from doing something, then under the broadest reasonable interpretation, that actor is allowing that someone to do that something. However, it appears to be applicant's intent that this recitation requires the performance of a method step or further narrows another method step.
Claim 16 contains language similar to the recitation in claim 15 discussed in the immediately preceding paragraph, and claim 16 is rejected for reasons similar to those discussed above.
Claim Rejections - 35 USC § 102
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 statute.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 (pre-AIA ) that form the basis for the rejections under this section made in this office action:
A person shall be entitled to a patent unless –
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States. . . .
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claims 1-16, as understood by the examiner, are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by De Troyer (WO 2020089821 A1).
De Troyer discloses the claimed method/system/CRM, including:
Claim
Limitation
De Troyer (WO 2020089821 A1)
1
providing an electronic interface associated with an instant cross-border electronic tokenised gifting system on an electronic device associated with a gifter
"a computer-implemented method for managing establishment-linked gifts between different users," pg. 2See Figs. 1A - 1F for electronic interface
1
associating one or more payment credentials of the gifter with an instant cross-border electronic tokenised gifting system account associated with the gifter using the electronic interface
"user pays for their own initialised beverage gifts or gifts via a virtual account-bound credit, preferably in advance, which credit can be provided with funds electronically." pg. 9
1
transferring, with the instant cross-border electronic tokenised gifting system, funds from the one or more payment credentials to one or more giftees
"the user can make a number of choices, including 'redeem'" pg. 12
1
wherein the funds are received in the form of a tokenised gift
See QR code in Fig. 2C and associated text
1
wherein a monetary value of the tokenised gift is approximately equal to an average value of the tokenised gift in a geographic location of the one or more giftees
"Following the selection of the desired establishment, the mobile application can optionally request a refreshment list from the central server, which list is associated with said establishment. This list comprises a list of possible refreshments (typically defined by the establishment), as well as preferably the price (per item, per kg, per ten, etc.). In this list, the first user can then indicate which refreshments and how many they wish to gift the second user.. Alternatively, however, one can simply work with a number of refreshment units that are typically equivalent to a fixed monetary value, the first user choosing to provide X number of refreshment units to the second user." pgs. 5-6
2
wherein the instant cross-border electronic tokenised gifting system is housed on one or more servers
"central server," pg. 2 et seq
3
wherein the gifter accesses the electronic interface associated with the instant cross-border electronic tokenised gifting system through a website or an electronic application downloaded to the electronic device
"mobile application," pg. 5
4
wherein the electronic device comprises a computer, mobile telephone, computing tablet or smart watch
"mobile device, typically a smartphone" pg. 5
5
wherein the one or more payment credentials comprise a financial institution account, a credit or debit card, an account with an online payment system, a gift card, or any other account in which money is withdrawn or deposited
"different bank accounts," pg. 9
6
wherein the funds transferred by the gifter from the one or more payment credentials to the instant cross-border electronic tokenised gifting system account associated with the gifter may be credited to the instant cross-border electronic tokenised gifting system account associated with the gifter instantaneously
"online payment," pg. 12
7
wherein the tokenised gift is provided to the giftee in the form of a credit to purchase goods and services to the approximate value of the funds transferred
De Troyer fails to explicitly disclose this limitation, however, as noted in the 112(b) rejection of this claim above, it can be fairly interpreted as an intended result of the method, and therefore, fails to distinguish from the prior art.
8
wherein the monetary value of the credit is determined by the geographical location in which the giftee received the tokenised gift
"when selecting the establishment upon initialising beverage gift or gift by a user, the user can search the predetermined list based on geographic location, preferably city or town." pg. 10
9
wherein the tokenised gift is received by the giftee as soon as the gifter confirms the transfer of the at least a portion of the funds
"Once this data is provided, the gift can be officialised, and the information passed on to the central server as a new beverage gift or gift (Figure 1F)" pg. 12"a quasi-real-time overview can always be kept of it, which ensures that transactions are possible in the short term (also because transactions are conducted directly between accounts, and not between bank accounts or such)" pg. 6
10
wherein the tokenised gift is received is an instant cross-border electronic tokenised gifting system account associated with the giftee
"the second user who receives a gift based on their telephone number that is not linked to an account, can get a notification (e.g. via text message, email and/or other media) about this (the notification can optionally also indicate how they can download the application and/or create an account)" pg. 6
11
wherein the one or more credits transferred by the gifter relate to the purchase of a specific item or service
"refreshment," pg. 5
12
wherein, upon receipt of the tokenised gift, the giftee receives an image of the item or the service
De Troyer does not explicitly disclose either an image or an emoji of the gift (beyond the QR code). However, this difference is only found in the nonfunctional descriptive material and does not affect how the claimed invention functions (i.e., the descriptive material does not have any claimed function in the claimed method. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability
13
wherein the image is an emoji
14
wherein, if the giftee receives two or more tokenised gifts, the giftee is able to combine the credits represented by the two or more of the tokenised gifts to purchase an item or service of higher value than the specific item or service
"multiple gifts for a particular user can also be merged into a single gift by the user" pg. 10
15
wherein the instant cross-border electronic tokenised gifting system allows the gifter and/or the giftee to notify the instant cross-border electronic tokenised gifting system of future travel
De Troyer discloses notifications to the giftee: "The notification may also provide certain information about the gift, for example one or more of the following: first user (giver), establishment for validating the gift, (complete or incomplete) gift data, deadline for validation, etc" pg. 6. De Troyer does not disclose that this notification includes future travel. However, the content of the notification constitutes nonfunctional descriptive material, which fails to distinguish from the prior art.
16
wherein the instant cross-border electronic tokenised gifting system allows the gifter to adjust the monetary value of the funds transferred to the giftee to be more or less than the average value of the tokenised gift in the geographic location of the one or more giftees
"Following the selection of the desired establishment, the mobile application can optionally request a refreshment list from the central server, which list is associated with said establishment. This list comprises a list of possible refreshments (typically defined by the establishment), as well as preferably the price (per item, per kg, per ten, etc.). In this list, the first user can then indicate which refreshments and how many they wish to gift the second user.. Alternatively, however, one can simply work with a number of refreshment units that are typically equivalent to a fixed monetary value, the first user choosing to provide X number of refreshment units to the second user." pgs. 5-6
Citation of Relevant Prior Art
All references listed on form PTO-892 are cited in their entirety. The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Mohamed (US 2013/0339188 A1) discloses a system for giving gifts in the form of secure tokens, which can include images (see [0031]).
Ledbetter (US 2009/0234771 A1) discloses a method to transfer money to a payee’s payment card account as a gift, including limiting the gift to certain spending categories (see element 406 in Fig. 4 and associated text).
Rose (WO 2009109949 A1) discloses a gifting service. See the Written Opinion of the International Searching Authority mailed October 29, 2021 in PCT/AU2021/050830 (submitted by applicant on January 30, 2023) for a detailed mapping of this reference to claims similar to those of the instant application.
Seidel (US 2006/0095338 A1) discloses a gifting service, including with images representative of the gift (see Fig. 7 and associated text).
Butler (US 10,380,596 B1) discloses a gift token creation system including limitations on the gift such as eligible merchants (see element 610 in Fig. 6 and associated text).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMIE KUCAB whose telephone number is (571)270-3025. The examiner can normally be reached Monday through Friday, 9 a.m. to 4:30 p.m. ET. The examiner’s email address is Jamie.Kucab@USPTO.gov. See MPEP 502.03 regarding email communications. Following is the sample authorization for electronic communication provided in MPEP 502.03.II: “Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.” Without such an authorization in place, an examiner is unable to respond via email.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel, can be reached at telephone number (571) 270-1492. 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 Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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) Form at https://www.uspto.gov/patents/uspto-automated-interview-request-air-form.
/JAMIE R KUCAB/Primary Examiner, Art Unit 3699
1 https://www.uspto.gov/patents/apply/applying-online/efs-web-pdf-guidelines