DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/30/2026 has been entered.
Status of Claims
• The following is an office action in response to the communication filed 01/30/2026.
• Claims 1-5, 9-15, 17, and 19-20 have been amended.
• Claims 6, 8, 16, and 18 have been canceled.
• Claims 1-5, 7, 9-15, 17, and 19-20 are currently pending and have been examined.
Priority
The examiner acknowledges that the instant application is a continuation of US Patent Application No. 17/513,934, filed 10/29/2021, which is a continuation in part of US Patent No. 11164228 B2, filed 07/12/2016, which claims priority from Provisional Patent Application Serial No. 62/354,672, filed 06/24/2016.
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
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 1-5, 7, 9-15, 17, 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. The 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.
First, it is determined whether the claims are directed to a statutory category of invention. See MPEP 2106.03(II). In the instant case, claims 1-5, 7, and 9-10 are directed to a process, and claims 11-15, 17, and 19-20 are directed to a machine. Therefore, claims 1-5, 7, 9-15, 17, and 19-20 are directed to statutory subject matter under Step 1 of the Alice/Mayo test (Step 1: YES).
The claims are then analyzed to determine if the claims are directed to a judicial exception. See MPEP 2106.04. In determining whether the claims are directed to a judicial exception, the claims are analyzed to evaluate whether the claims recite a judicial exception (Prong 1 of Step 2A), as well as analyzed to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of the judicial exception (Prong 2 of Step 2A). See MPEP 2106.04.
Taking claim 1 as representative, claim 1 recites at least the following limitations that are believed to recite an abstract idea:
receiving a request to utilize an exchange item for a transaction, wherein the merchant is associated with a first brand,
obtaining a transaction ledger regarding secure chain of custody of the exchange item from a wallet of the user, wherein the transactions ledger includes exchange item information and a set of exchange item rules associated with use of the exchange item;
determining that the exchange item is associated with a second brand wherein the second brand is not associated with the merchant;
determining a first exchange item rule of the set of exchange items rules indicating that the exchange item can be utilized with the merchant;
obtaining merchant use information regarding the merchant, wherein the merchant use information includes a second set of exchange item rules regarding acceptance of exchange items;
identifying a second exchange item rule of the second set of exchange item rules regarding use of exchange items not associated with the first brand;
when the second brand is indicated in the second exchange item rule:
determining conditions regarding the second exchange item rule in regard to the second brand;
facilitating utilization of the exchange item for the transaction in accordance with the conditions; and
updating the transactions ledger to include the transaction.
The above limitations recite the concept of using a payment medium for multiple brands. These limitations, under their broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they recite commercial or legal interactions such as advertising, marketing, or sales activities or behaviors and fundamental economic practices or principles. Specifically, the conditions for the exchange items involve sales. This is further illustrated in page 1, line 26-28 of the Specification, describing the invention as regarding gift cards for purchase of goods and services. Furthermore, the claims represent fundamental economic practices or principles in that the claims describe concepts relating to the economy and commerce. Specifically, exchange items are financial instruments that are being validated for use in a transaction. Additionally, the claims fall within the “Mental Processes” grouping of abstract ideas, enumerated in the MPEP, in that they recite concepts performed in the human mind, such as observations, evaluations, judgments, and opinions. Specifically, receiving the information, validating the information and the rules, and invoking the rules are observations, evaluations, and judgements that can be performed in the human mind or by a human using pen and paper. Independent claim 11 recites similar limitations as claim 1 and, as such, fall within the same identified grouping of abstract ideas. Accordingly, under Prong One of Step 2A of the MPEP, claims 1 and 11 recite an abstract idea (Step 2A, Prong One: YES).
Under Prong Two of Step 2A of the MPEP, claims 1 and 11 recite additional elements, such as a marketplace server, a data communication system, a user computing device of the data communication system; a point-of-sale (POS) computing device; a merchant server of the data communication system; a digital wallet; and a transactions blockchain. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. As such, these computer-related limitations are not found to be sufficient to integrate the abstract idea into a practical application. Although these additional computer-related elements are recited, claims 1 and 11 merely invoke such additional elements as a tool to perform the abstract idea. Implementing an abstract idea on a generic computer is not indicative of integration into a practical application. Similar to the limitations of Alice, claims 1 and 11 merely recites a commonplace business method (i.e., using a payment medium for multiple brands) being applied on a general purpose computer. See MPEP 2106.05(f). Furthermore, claims 1 and 11 generally link 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 monitoring audit log data relates to transactions or activities that are executed in a computer environment, because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer (see FairWarning v. Iatric Sys.). Likewise, claim 1 specifying that the abstract idea of transacting with a payment medium for multiple brands is executed in a computer environment 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, under Prong Two of Step 2A of the MPEP, when considered both individually and as a whole, the limitations of claims 1 and 11 are not indicative of integration into a practical application (Step 2A, Prong Two: NO).
Since claims 1 and 11 recite an abstract idea and fail to integrate the abstract idea into a practical application, claims 1 and 11 are “directed to” an abstract idea (Step 2A: YES).
Next, under Step 2B, the claims are analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract idea. See MPEP 2106.05. The instant claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for at least the following reasons.
Returning to independent claims 1 and 11, these claims recite additional elements, such as a marketplace server, a data communication system, a user computing device of the data communication system; a point-of-sale (POS) computing device; a merchant server of the data communication system; a digital wallet; and a transactions blockchain. As discussed above with respect to Prong Two of Step 2A, although additional computer-related elements are recited, the claims merely invoke such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). Moreover, the limitations of claims 1 and 11 are manual processes, e.g., receiving information, sending information, etc. The courts have indicated that mere automation of manual processes is not sufficient to show an improvement in computer-functionality (see MPEP 2106.05(a)(I)). Furthermore, as discussed above with respect to Prong Two of Step 2A, claims 1 and 11 merely recites the additional elements in order to further define the field of use of the abstract idea, therein attempting to generally link the use of the abstract idea to a particular technological environment, such as the Internet or computing networks (see Ultramercial, Inc. v. Hulu, LLC. (Fed. Cir. 2014); Bilski v. Kappos (2010); MPEP 2106.05(h)). Similar to FairWarning v. Iatric Sys., claims 1 and 11 specifying that the abstract idea of using a payment medium with multiple brands is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claim to the computer field, i.e., to execution on a generic computer.
Even when considered as an ordered combination, the additional elements do not add anything that is not already present when they are considered individually. In Alice Corp., the Court considered the additional elements “as an ordered combination,” and determined that “the computer components…‘[a]dd nothing…that is not already present when the steps are considered separately’ and simply recite intermediated settlement as performed by a generic computer.” Id. (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Similarly, viewed as a whole, claims 1 and 11 simply convey the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B of the Alice/Mayo test, there are no meaningful limitations in claims 1 and 11 that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself (Step 2B: NO).
Dependent claims 2-5, 7, 9-10, 12-15, 17, and 19-20, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because they do not add “significantly more” to the abstract idea. Dependent claims 2-5, 7, 9-10, 12-15, 17, and 19-20 further fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they recite commercial or legal interactions such as advertising, marketing, or sales activities or behaviors and fundamental economic practices and principles. Dependent claims 2-10 and 12-20 further fall within the “Mental Processes” grouping of abstract ideas, enumerated in the MPEP, in that they recite concepts performed in the human mind, such as observations, evaluations, judgments, and opinions. Dependent claims 2, 4-5, 7, 13-15, and 17 fail to identify additional elements and as such, are not indicative of integration into a practical application. Dependent claims 3, 9-10, 12, and 19-20 further identify additional elements, such as a block; and a transactions block. Similar to discussion above the with respect to Prong Two of Step 2A, although additional computer-related elements are recited, the claims merely invoke such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). As such, under Step 2A, dependent claims 2-5, 7, 9-10, 12-15, 17, and 19-20 are “directed to” an abstract idea. Similar to the discussion above with respect to claims 1 and 11, dependent claims 2-5, 7, 9-10, 12-15, 17, and 19-20 analyzed individually and as an ordered combination, invoke such additional elements as a tool to perform the abstract idea and merely indicate 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, and therefore, do not amount to significantly more than the abstract idea itself. See MPEP 2106.05(f)(2). Accordingly, under the Alice/Mayo test, claims 1-5, 7, 9-15, 17, and 19-20 are ineligible.
Subject Matter Allowable over the Prior Art
Claims 1-5, 7, 9-15, 17, and 19-20 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 101, set forth in this Office action.
Upon review of the evidence at hand, it is hereby concluded that the evidence obtained and made of record, alone or in combination, neither anticipates, reasonably teaches, nor renders obvious the below noted features of applicant’s invention as the noted features amount to more than a predictable use of elements in the prior art.
The most relevant prior art made of record includes previously cited Isaacson et al. (US 20140250001 A1), hereinafter Isaacson, previously cited Lingham et al. (US 20160267472 A1), hereinafter Lingham, previously cited Sharp (US 20160012465 A1), hereinafter Sharp, newly cited Bowers et al. (US 20140214626 A1), hereinafter Bowers, and previously cited NPL reference U, initially cited in the Office action dated 12/21/2023.
Although individually the references teach concepts such conditions for an exchange item, a blockchain, and approving transactions, none of the references teach nor render obvious the specific method of receiving a request from the merchant server, obtaining the blockchain, determining that the exchange item is associated with a second unrelated brand, and determining rules regarding brands not associated with the merchant server.
Previously cited Isaacson discloses an exchange item method (Isaacson: [abstract]). A recipient may present a card to a merchant server for payment to apply a particular gift card (Isaacson: [0095]). The gift card is governed by policies indicating how a card may be spent. The system includes a trigger associated with the use of the funds…the system can arrange a first set of triggers indicating a date range of ‘January 1-January 31’ and the merchant ‘Home Depot’, a second set of triggers indicating a date range of ‘February 1-February 28’ and any of the merchants ‘Home Depot, Lowe's, Ace, and Menards’ (Isaacson: [0145]; [0249]). The policy may cause gift card amounts to be applied to qualifying purchases (Isaacson: [0078]). Yet Isaacson does not explicitly disclose all of the limitations pertaining to the merchant server, second brand, and the blockchain.
Previously cited Lingham teaches a gift card method (Lingham: [0004]). Lingham further teaches a public ledger where there are a number of entities that play a role. Entities include a digital wallet application and digital wallet service, a credit issuance service, and a merchant all of which, in combination, are configured to securely expend merchant-issued credit and encode transactions to a public ledger. In some embodiments, all of these entities are managed by the same organization (Lingham: [0030]). Lingham additionally teaches the wallet service provider server validates the token, and service provider is then notified of the new transaction, and the issuance service provider validates the transaction's compliance with regulations and cardholder services (Lingham: [0029]). However, Lingham does not explicitly teach all of the limitations regarding the conditions, the merchant server and second brand, and the exchange item.
Previously cited Sharp teaches a method of sending funds or credits (Sharp: [abstract]). These funds or credits may be associated with a value and a brand type and they may be gift cards or vouchers which may be redeemable at non-affiliated vendors or entities (Sharp: [0190]). However, Sharp does not teach the limitations regarding the merchant server and the blockchain.
Newly cited Bowers teaches a prepaid card method (Bowers: [abstract]). Bowers further issuing a tangible gift card to a recipient, the gift card linked to a gift account, of the recipient, within a social networking system; receiving a first gift order from a first sender the first gift order specifying the recipient, a first merchant, and a first monetary value redeemable through the first merchant; receiving a second gift order from a second sender, the second gift order specifying the recipient, a second merchant, and a second monetary value redeemable through the second merchant; in response to approval of the first gift order, linking the first monetary value to the gift account; in response to approval of the second gift order, linking the second monetary value to the gift account; and in response to an attempted purchase, with the gift card, at a third merchant different than the first merchant and the second merchant, communicating a notification to the recipient, the notification accessible on a mobile computing device (Bowers: [0051] and Fig. 4]). Bowers additionally teaches in response to a first purchase from the first merchant with the gift card, publishing a detail of the first purchase to a feed within the social networking system in accordance with a privacy setting of the recipient. Similarly, in response to a second purchase from the second merchant with the gift card, publishing a detail of the second purchase to a feed within the social networking system in accordance with a privacy setting of the recipient (Bowers: [0038]). However, Bowers does not explicitly teach all of the limitations regarding the conditions and the blockchain.
Previously cited NPL reference U, initially cited in the Office action dated 12/21/2023, teaches gift cards utilizing blockchain. Using a blockchain to track gift cards would improve security. Only a private key holder may move the gift card. However, U does not teach all of the limitations regarding the conditions and exchange items.
While these references arguably teach the claimed limitations using a piecemeal analysis, these references would only be combined and deemed obvious based on knowledge gleaned from the applicant's disclosure. Such a reconstruction is improper (i.e., hindsight reasoning). See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Accordingly, claims 1 and 11, taken as a whole, are indicated to be allowable over the cited prior art. The examiner emphasizes that it is the interrelationship of the limitations that renders these claims allowable over the prior art/additional art. Claims 2-5, 7, 9-10, 12-15, 17, and 19-20 depend from claims 1 and 11, and therefore the dependent claims are also indicated as containing allowable subject matter.
The examiner further 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 further modification of the evidence at hand to arrive at the claimed invention. The combination of features as claimed would not have been obvious to one of ordinary skill in the art as combining various references from the totality of the evidence to reach the combination of features as claimed would require a substantial reconstruction of the Applicant's claimed invention relying on improper hindsight bias.
It is thereby asserted by the examiner that, in light of the above and in further deliberation over all the evidence at hand, that the claims are allowable as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in the art.
Response to Arguments
Applicant’s arguments, filed 01/30/2026, have been fully considered.
35 U.S.C. § 101
Applicant argues the claims are eligible because “the claims, as amended, overcome the present rejection.” (Remarks page 11). The examiner disagrees. The MPEP sets forth, in Step 2A Prong Two, that a claim that recites a judicial exception is not directed to that judicial exception, if the claim as a whole “integrates the recited judicial exception into a practical application of that exception.” The evaluation of Prong Two requires the use of the considerations (e.g. improving technology, effecting a particular treatment or prophylaxis, implementing with a particular machine, etc.) identified by the Supreme Court and the Federal Circuit, to ensure that the claim as a whole ‘integrates [the] judicial exception into a practical application [that] will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.’ In the instant case, the claims include additional elements such as a marketplace server, a data communication system, a user computing device of the data communication system; a point-of-sale (POS) computing device; a merchant server of the data communication system; a digital wallet; and a transactions blockchain. While these elements are recited, they are merely peripherally incorporated in order to implement the abstract idea. Put another way, these additional elements are merely used to apply the abstract idea of using a payment medium for multiple brands in a technological environment without effectuating any improvement or change to the functioning of the additional elements or other technology. Applicant’s disclosure does not articulate or suggest how these additional elements function, individually or in combination, in any manner other than using generic functionality nor does the disclosure articulate how the elements provide a technical improvement. Accordingly, the additional elements do not integrate the abstract idea into a practical application and do not provide significantly more because they merely amount to using the software architecture as a tool to perform the abstract idea.
Conclusion
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/ANNA MAE MITROS/Examiner, Art Unit 3689