DETAILED ACTION
Status of Application
This action is a Non-Final Rejection. This action is in response to the request for continued examination filed on December 13, 2025.
Claims 1, 7, 9, 10, 13, 17, 18, and 20 have been amended.
Claim 16 has been canceled.
Claims 1-15 and 17-20 are pending and rejected.
The present application, filed before March 16, 2013, is being examined under the pre-AIA provisions. In the event the determination of the status of the application as subject to pre-AIA 35 U.S.C. 102 and 103 (or as subject to 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 status.
Previous Note Regarding Applicant’s Response to 105
On August 8, 2024, a Requirement for Information under 37 CFR 1.105 was mailed because the effective filing date of each claim was not clear. Applicant responded with the following statement for each claim:
Support for the claimed "card" as "virtual or physical" is found, at least at paragraphs [0032] (virtual) and [0041] (physical) of U.S. Pat. App. Ser. No. 60/945,814 - priority date June 22, 2007. See U.S. Pat. App. Ser. No. 60/945,814 at ¶ [0032] ("The selections are received by the server. The server stores the account data for use in authorizing transactions initiated by the cardholder ....") and ¶[0041] ("[S]electing that the card be printed"); additionally in, at least ¶ [0018] of U.S. Pat. App. Ser. No. 13/027,623 - priority date February 15, 2011. Regarding features that involve a "client" as claimed, support is found, at least at paragraph [0020]) of U.S. Pat. App. Ser. No. 60/945,814 - priority date June 22, 2007. See U.S. Pat. App. Ser. No. 60/945,814 at ¶[0020] ("For example, where the card is awarded by an employer to an employee as a performance award ....") (one of ordinary skill in the art would understand that the employer is the client of the disclosed customized card system as the employer utilizes the disclosed customized card system to create a card to award to its employee).
While support for a physical card is found in paragraph 0041 of provisional application number 60/945,814, support for a virtual card could not be found in paragraph 0032 of the provisional application. Although this paragraph states that the server stores account data, it does not state that this data is a virtual card that would, for example, be used in the manner that is claimed.
Because Applicant has stated that the claims are supported by the provisional application, June 22, 2007 will be used as the effective filing date of the claims that do not refer to a virtual card. However, the card recited in those claims is interpreted as a physical card and not a virtual card.
Response to Arguments
Regarding the rejection of claims 10-17 under 35 U.S.C. 112(b), this rejection was withdrawn in the Advisory Action mailed on December 10, 2025.
Regarding the rejection under 35 U.S.C. § 101, Applicant has presented the same arguments that were filed on December 1, 2025 and addressed in the Advisory Action mailed on December 10, 2025. Applicant should refer to the Advisory Action for a response to the arguments.
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 1-15 and 17-20 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Does the Claim Fall within a Statutory Category? (see MPEP 2106.03)
Yes, with respect to claims 1-15 and 17, which recite a system and, therefore, are directed to the statutory class of machine or manufacture.
Yes, with respect to claims 18-20, which recite a method and, therefore, are directed to the statutory class of process.
Step 2A, Prong One: Is a Judicial Exception Recited? (see MPEP 2106.04(a))
The following claim identifies the limitations that recite additional elements in bold and abstract idea in regular text:
1. A system for processing a customized card transaction for a client and completing a first card transaction between a card user and a first participating merchant, wherein the first participating merchant is also one of a plurality of client-selected merchants and for disapproving a second card transaction between the card user and a second participating merchant, and wherein the second participating merchant is not one of the plurality of client-selected merchants, said system comprising:
a plurality of cards, each card of the plurality representing an account between a cardholder and a merchant, wherein at least one of the plurality of cards is a physical card;
a merchant database, comprising storage media, for storing information regarding a plurality of participating merchants who will accept the plurality of cards in a transaction after such cards are activated;
a client interface comprising a memory for storing instructions and a processor for executing the stored instructions, the client interface connected to the merchant database, the stored instructions causing said client interface to interact with and to respond to said instructions by selecting more than one of the plurality of participating merchants and selecting one of the accounts which will be accepted by client-selected merchants after such account is activated and which will be rejected by a remainder of the plurality of participating merchants other than the client-selected merchants, the stored instructions causing said client interface to communicate the client-selected merchants to an administrator processor via a card network provider for determining whether a merchant at a point of sale is one of the client-selected merchants, wherein said card network provider is at least one of a credit card association and a debit card association; and
a card creator, comprising a processor, responsive to a communication from the client interface, said card creator associating a name of the card user and an assigned account number with a card of the plurality of cards, wherein a transaction involving the assigned account number of the card and one of the client-selected merchants will be approved by the card network provider based on the communicated information identifying the name of the card user, the assigned account number and the communicated information identifying one of the client-selected merchants, and wherein a transaction involving the card and other than one of the client-selected merchants will be disapproved by the card network provider based on the communicated information identifying the name of the card user, the assigned account number and the communicated information identifying the client-selected merchants; whereby transactions from the client-selected merchants will be allowed for processing with the cards by communicating through the card network provider so that the card is approved for the client-selected merchants which accept at least one of credit, debit, and pre-paid cards.
2. The system of claim 1 wherein each of the plurality of cards is associated with an activated account having a pre-defined amount for redeeming only with the client-selected merchants.
3. The system of claim 1 wherein the client-selected merchants are individually selected or are one or more preset merchant groups selected via the client interface or a combination of merchants individually selected via the client interface and one or more preset merchant groups selected via the client interface, wherein each merchant group includes more than one merchant but less than all merchants accepting transactions via the card network provider.
4. The system of claim 1 further comprising graphical material associated with the card wherein the graphical material includes additional material selected by the client via the client interface, said selected material includes one or more of the following: identifying information associated with the cardholder, a personalized message, identifying information associated with the client, contact information associated with the client, identifying information associated with the selected merchants, contact information associated with the client-selected merchants, credit redeemable by the cardholder, and an expiration date for redeeming the credit.
5. The system of claim 1 further comprising a kiosk housing the client interface.
6. The system of claim 1 wherein the client interface interacts with the client to receive design data for further customizing the appearance of material associated with the card with customizing data, said customizing data including one or more of the following: font of characters, style of characters, size of the material associated with the card, color of the information, a theme associated with the card, and an orientation of the material associated with the card.
7. The system of claim 1 wherein the card comprises a selected logo associated with the client, wherein the selected logo is provided via the client interface, wherein the selected logo is stored in a logo database, and wherein the selected logo is printed on the physical card.
8. The system of claim 1 wherein the card comprises a virtual card.
9. A system comprising:
a processor comprising computer executable instructions, which, in response to input from a client concerning a card transaction for a user, wherein a card represents an account between the user, wherein the card is a virtual card, a physical card, or a combination thereof, wherein the card is usable only at a limited number of merchants, wherein the limited number of merchants are client selected and more than one merchant, wherein said computer executable instructions further cause a card activator to assign a name of the user and a unique account number to the card;
a merchant management system with merchant information related to a first number of merchants, wherein the merchant management system comprises computer executable instructions which cause the merchant management system to create a filter corresponding to the card related to a second number of merchants, wherein the second number of merchants are client-selected merchants and wherein the second number of merchants is less than the first number of merchants; and
a card processing system operated by at least one of a credit card association and a debit card association, wherein the card processing system comprises computer executable instruction which cause the card processing system to (i) receive from a merchant a transaction request to redeem the card, wherein the transaction request comprises the user name and the unique account number assigned to the card, (ii), to obtain confirmation via the merchant management system responsive to the transaction request that the merchant is one of the client-selected merchants based on the created filter, (iii) to authorize use of the card at the merchant only when confirmation is obtained that the merchant is one of the client selected merchants, and (iv) to deny use of the card at the merchant when the confirmation is not obtained.
10. A system for approving a transaction for processing a card for a client, said system comprising:
a customized card representing an account between a cardholder and a plurality of client- selected merchants, wherein the customized card is a virtual card, a physical card, or a combination thereof, wherein the customized card identifies a user, and wherein the cardholder is the user of the customized card and the customized card is created for the client;
an account parameters database, comprising storage media, storing information identifying a plurality of merchants and card user names; and
a client interface which includes a non-transitory computer readable memory for storing instructions and a processor for executing the stored instructions, the client interface connected to the account parameters database, the stored instructions causing said client interface to select merchants from the plurality of merchants identified by the information stored in the account parameters database, wherein the client interface is enabled to select a number of merchants less than all of the merchants using a card network provider, said client interface including:
(i) an input component for receiving, from the user merchant selection, information consisting of the client selected merchants, wherein the input component comprises a keyboard, a mouse, a trackball, a pen, a touch pad, a microphone, a joystick, a gamepad a push button, or combinations thereof, and
(ii) a wired network, direct-wired, wireless, or combinations thereof connection for transmitting the client selected merchants, a name of the user, and account number information to an administrator processor for activating an unactivated account of the customized card.
11. The system of claim 10 wherein the client interface interacts with the client to select the amount redeemable by the cardholder, said selected amount being redeemable by the cardholder at the plurality of selected merchants.
12. The system of claim 10 further comprising a kiosk unit housing the client interface.
13. The system of claim 10 wherein the client interface interacts with the client to display a preview of the customized card to the client before the card activator activates the card.
14. The system of claim 10 wherein the client interface further interacts with the client to collect an image provided by the client.
15. The system of claim 10 wherein the amount includes one or more of the following: an amount corresponding to a particular product sold by the merchant, an amount corresponding to a particular service sold by the merchant, an amount corresponding to a denomination redeemable for products or services sold by the merchant, a zero balance subsequently loadable with an amount, and zero balance unloadable with an additional amount.
16. The system of claim 10 wherein the card comprises a virtual card.
17. The system of claim 10 wherein the customized card comprises a selected logo associated with the client, wherein the selected logo is provided via the client interface, wherein the selected logo is stored in a logo database, and wherein the selected logo is printed on the physical card.
18. A computer implemented method for a approving a card transaction relating to an account between a cardholder and a plurality of client-selected merchants, wherein the card transaction comprises a card, wherein the card is a virtual card, a physical card, or a combination thereof, wherein the cardholder is a user of the card and the card is created for a client and comprises a name of the user, said method performed by a client interface comprising stored instructions in a memory, which, when executed by the client interface's processor, cause the client interface to perform the method comprising:
receiving merchant data, said merchant data identifying merchants selected by said client from a plurality of participating merchants, wherein the selected merchants are more than one but not all of the merchants participating in a card network of a card network provider;
receiving value data, said value data indicating an amount selected by a client to be added to the account represented by the card, wherein the account is associated with the name of the user, said amount redeemable by the cardholder with the selected merchants as a function of the client funding said amount;
providing access to account parameters through the card network provider for authorizing a transaction with a first merchant for the account based on said account parameters, wherein said card network provider is at least one of a credit card association and a debit card association, said account parameters including the merchant data and value data, said authorizing including determining that the first merchant requesting the transaction is a selected merchant based on the merchant data; and
providing access to account parameters through the card network provider for denying a transaction with a second merchant for the account based on said account parameters, said denying including determining that the second merchant requesting the transaction is not a selected merchant based on the merchant data.
19. The method of claim 18 further comprising:
receiving a request to activate a particular account;
verifying that the amount indicated by the value data has been funded by the client for the particular account; and
generating an activation status as a function of the funding verification, said generated activation status included in the account parameters wherein the client's status indicates one or more of the following: amount of card is redeemable as a function of immediate funding by the client, amount of card is redeemable as a function of subsequent funding by the client, amount of card is immediately redeemable, amount of card is redeemable after a certain time period, and amount of card is redeemable for a limited amount.
20. The method of claim 18, wherein access to the account parameters is provided responsive to a transaction request received by an issuer processor via the card network provider for authorizing a transaction using the card, said transaction initiated by a cardholder with a requesting merchant.
Yes. But for the recited additional elements as shown above in bold, the remaining limitations of the claims recite certain methods of organizing human activity. The claims are directed to method and system for card transactions. This type of method of organizing human activity is similar to a fundamental economic practice such as a payment and a commercial interaction such as sales activities or behaviors and business relations. Thus, the claims recite an abstract idea.
Step 2A, Prong Two: Is the Abstract Idea Integrated into a Practical Application? (see MPEP 2106.04(d))
No. The claims as a whole merely use a computer as a tool to perform the abstract idea. The computing components (i.e., additional elements that are in bold above) are recited at a high level of generality and are merely invoked as a tool to perform the abstract idea. Simply implementing the abstract idea using generic computers or devices is not a practical application of the abstract idea. Additionally, there is no improvement to the functioning of a computer or technology. Therefore, the abstract idea is not integrated into a practical application.
Step 2B: Does the Claim Provide an Inventive Concept? (see MPEP 2106.05)
No. As discussed with respect to Step 2A, Prong 2, the additional elements in the claims, both individually and in combination, amount to no more than tools to perform the abstract idea. Merely performing the abstract idea using a computer cannot provide an inventive concept. Therefore, the claims do not provide an inventive concept.
As such, the claims are not patent eligible.
Double Patenting - Nonstatutory
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-15 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over:
claims 1-18 of U.S. Patent Number 8,464,938 B2
claims 1-25 of U.S. Patent Number 8,973,820 B2
claims 1-18 of U.S. Patent Number 10,846,685 B2
claims 1-22 of U.S. Patent Number 11,783,319 B2.
Although the claims at issue are not identical, they are not patentably distinct from the instant claims because each is drawn to the same invention. The instant claims are anticipated by or made obvious by each of the reference claims. To overcome this rejection, Applicant should file a Terminal Disclaimer or amend the claims. Upon double patenting being the only remaining rejection in this application, Examiner will review and update it, as appropriate, in light of the pending claims.
Relevant Prior Art
Unbehagen, U.S. Patent Application Publication Number 2008/0283594 A1. This reference teaches debit card account restrictions. A customer is able to set up a merchant code restriction for his or her debit card account. Paragraph 0018 states that “a trucker may be given a debit card by his or her employer. The debit card may only be intended for use for gas/fuel purchases. Thus, the employer may wish to set a restriction on the card so that only fuel purchases are authorized, and all non-fuel purchases are declined. Thus, any purchase attempt using the card will transmit an authorization request to an authorization server along with the merchant code for the items subject to the purchase. If the merchant code corresponds to fuel, then, in this example, authorization will be approved. If the merchant code corresponds to a good/service other than fuel, then the authorization request will be declined.”
Koppel et al., U.S. Patent Application Publication Number 2002/0026418 A1. This reference teaches a debit card that can be given as a gift and be restricted to certain online merchants. See paragraph 0024.
Solokl et al., U.S. Patent Number 6,173,269. This reference teaches a method or executing electronic transactions with teens and limiting the transactions to only venders that have been approved by the teen’s parents.
Gephart, U.S. Patent Number 6,339,766 B1. This reference teaches a method for enabling an account holder to authorize the transfer of funds from an account using a limited-use account number.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH H ROSEN whose telephone number is (571) 270-1850 and email address is elizabeth.rosen@uspto.gov. The examiner can normally be reached Monday - Friday, 10 AM ET - 7 PM ET.
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/ELIZABETH H ROSEN/Primary Examiner, 3693