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 .
Status of Claims
This action is in reply to the response filed on 12/30/2024. Claims 1, 3, 6, 8-10, 12, 15 and 17-19 have been amended. Claims 2, 7, 11 and 16 have cancelled. Claims 1, 3-6, 8-10, 12-15 and 17-19 are currently pending and have been examined.
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, 3-6, 8-10, 12-15 and 17-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. A Section 101 analysis is below.
Step 1 – are the claims directed to a process, machine, manufacture or composition of matter. The method of claim 1, system of claim 10 and CRM of claim 19 are within the statutory categories of invention.
Step 2A, prong one – do the claims recite a judicial exception, which is an abstract idea enumerated in MPEP 2106, a law of nature, or a natural phenomenon. Using the text of claim 1 as an example, claims 1, 10 and 19 recite:
1. A method of temporary voucher sharing, comprising:
receiving, from a user device associated with a user, at a processor of an administrator device, a favordrop request created at the user device, the favordrop request including a beneficiary identifier associated with a beneficiary, a request value, a retailer location, and an expiration time;
defining, using the processor, a favordrop comprising a balance corresponding to the request value;
assigning, using the processor, the favordrop to the beneficiary;
sending, using the processor, a notification to a beneficiary device associated with the beneficiary identifier, the notification comprising notification data, wherein the notification data is at least partially displayable on a display screen of the beneficiary device; and
when a current time reaches the expiration time, the processor is configured to:
revoke the favordrop from the beneficiary;
assign the favordrop to the user; and
send a return notification to the user device;
wherein the notification data is at least partially displayable on a display screen of the user device and the return notification comprises the notification data; and
wherein the notification data comprises a code, which, when input by a retailer device associated with the retailer location, applies the balance of the favordrop as a payment for a purchase at the retailer location.
Referring to the bolded limitations above, independent claims 1, 10 and 19 recite an abstract idea enumerated in MPEP 2106. Specifically, claims 1, 10 and 19 recite the abstract idea of certain methods of organizing human activity. More specifically, as drafted each of claims 1, 10 and 19 only recite the commercial or legal interaction of an agreement in the form of a contract that is sharing a voucher by a user that has a beneficiary, a request value, a retailer location, and an expiration time where the voucher is revoked and the balance of the voucher is returned to the user upon reaching the expiration time. Please see MPEP 2106.04(a)(2)(II)(B). Accordingly, claims 1, 10 and 19 are directed to the judicial exception of an abstract idea.
Step 2A, prong two – do the claims recite additional elements that integrate the judicial exception into a practical application. Integration of the judicial exception into a practical application requires an additional element or a combination of additional elements in the claim to 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 exception. Regarding claims 1, 10 and 19, these claims only recite the additional elements of a user device having display screen, processor, administrator device, beneficiary device having display screen, code, and retailer device to perform sharing a voucher by a user that has a beneficiary, a request value, a retailer location, and an expiration time where the voucher is revoked and the balance of the voucher is returned to the user upon reaching the expiration time. The computer components are recited at a high-level of generality (e.g., to receive, store, or transmit data) such that it amounts no more than mere instructions to apply the exception using generic computer components. Accordingly, the additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Please see MPEP 2106.05(f). It is further noted that the claimed invention as recited in claims 1, 10 and 19 do not pertain to an improvement in the functioning of the computer components themselves or a technological solution to a technological problem. Please also see MPEP 2106.05(g) regarding adding insignificant extra-solution activity including data gathering and manipulation. Please also see MPEP 2106.05(h) regarding field of use and technological environment.
Step 2B – do the claims recite additional elements that amount to significantly more than the judicial exception. Regarding claims 1, 10 and 19, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of a user device having display screen, processor, administrator device, beneficiary device having display screen, code, and retailer device to perform sharing a voucher by a user that has a beneficiary, a request value, a retailer location, and an expiration time where the voucher is revoked and the balance of the voucher is returned to the user upon reaching the expiration time amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The computer components implementing the abstract idea appear to be generic in view of at least Applicant’s specification, [0055]. Accordingly, claims 1, 10 and 19 does not recite additional elements that amount to significantly more than the judicial exception.
In view of the above analysis, independent claims 1, 10 and 19 are not patent eligible. Dependent claims 3-6, 8, 9, 12-15, 17 and 18 do not cure the deficiencies in their respective base claims. Specifically, claims 3-6, 8, 9, 12-15, 17 and 18 merely refine the abstract idea (2A1) by invoking a computer as a tool to perform an existing process (2A2, 2B). Regarding the further additional elements of a third party payment processor (claims 4 and 13), job scheduler (claims 5 and 14), and retailer device (claims 6 and 15), these additional elements do not integrate the judicial exception into a practical application (2A2) or amount to significantly more than the judicial exception (2B). Please see MPEP 2106.05(f)(2) discussing when the claim invokes computers or other machinery merely as a tool to perform an existing process including use of a computer or other machinery for economic tasks this does not show integration into a practical application or provide
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-6, 8-10, 12-15 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Tutte (US 2018/0060841) in view of Zamer (US 2015/0193803).
Claim 1 recites:
A method of temporary voucher sharing, comprising: (Tutte, Fig. 4, [0058], method)
receiving, from a user device associated with a user, at a processor of an administrator device, a favordrop request created at the user device, the favordrop request including a beneficiary identifier associated with a beneficiary, a request value, a retailer location, and an expiration time; (Tutte, Fig. 4, [0058], payment request, step 210; Figs. 1-3, [0043], payment server 130, client devices 144, 146, payment request data associated with a value and time period. Although Tutte, [0045], discusses merchant location, Tutte does not specifically disclose the request includes retailer location. Zamer, [0024], discusses vouchers may include effective time, value and location of discount. It would have been obvious to a person of ordinary skill in the art before the time of effective filing to modify the payment request of Tutte to include location as in Zamer in order to apply vouchers that are valid as discussed in Zamer, [0048], and Tutte, [0043]. Further, it would have been obvious to one of ordinary skill in the art before the time of effective filing to include the features as taught in Zamer in Tutte since the claimed invention is merely a combination of old elements, and in combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Additionally, both are in the field of redeemable transactions and one of ordinary skill in the art would recognize the combination to be predictable.)
defining, using the processor, a favordrop comprising a balance corresponding to the request value; (Tutte, Figs. 1-3, [0043], pre-paid amount)
assigning, using the processor, the favordrop to the beneficiary; (Tutte, Figs. 1-3, [0043], intended beneficiary)
sending, using the processor, a notification to a beneficiary device associated with the beneficiary identifier, the notification comprising notification data, wherein the notification data is at least partially displayable on a display screen of the beneficiary device; and (Tutte, Figs. 1-3, [0044], notification relayed to second client device 146 associated with beneficiary 142)
when a current time reaches the expiration time, the processor is configured to: revoke the favordrop from the beneficiary; and (Tutte, Figs. 1-3, [0043], if pre-paid item is not claimed by beneficiary within a specified duration, refunded to benefactor)
assign the favordrop to the user; and (Tutte, Figs. 1-3, [0043], if pre-paid item is not claimed by beneficiary within a specified duration, refunded to benefactor)
send a return notification to the user device; (Tutte, Fig. 8, [0062], notification to first client device 144 of the benefactor 140 indicating that the pre-paid item has not been claimed)
wherein the notification data is at least partially displayable on a display screen of the user device and the return notification comprises the notification data; and (Tutte, Fig. 3, [0054], display 190; [0062], notification to first client device 144 of the benefactor 140 indicating that the pre-paid item has not been claimed)
wherein the notification data comprises a code, which, when input by a retailer device associated with the retailer location, applies the balance of the favordrop as a payment for a purchase at the retailer location. (Tutte, [0044], notification includes redeemable payment data in suitable format including code. Tutte does not explicitly disclose the return notification includes the code in the notification. However, as Tutte, [0044], discloses the code, sending the code in another notification is an obvious duplication of parts. Please see MPEP 2144.04 discussing duplication of parts. It is respectfully noted that the specification does not discuss that the user is able to redeem the favordrop himself using the code provided in the return notification after the favordrop has been revoked. Also, the claims and specification do not disclose how the code could be used by both beneficiary before expiration and then subsequently by the user after expiration.)
Claims 10 and 19 correspond to claim 1 and are rejected on the same grounds. Regarding system claim 10, Tutte, [0043], system. Regarding CRM claim 19, Tutte, [0017], CRM.
Claim 3 recites:
The method of claim 1, further comprising: verifying, using the processor, that a payment transaction for the request value has successfully completed using a payment request initiated by the user device and thereafter defining the balance as being equal to the request value. (Tutte, [0046], notification of status of transaction; [0043], value)
Claim 12 corresponds to claim 3 and is rejected on the same grounds.
Claim 4 recites:
The method of claim 3, wherein verifying that the payment transaction for the request value has successfully completed comprises: receiving a confirmation from a third-party payment processor indicating that the payment transaction has successfully completed. (Tutte, [0046], notification of status of transaction)
Claim 13 corresponds to claim 4 and is rejected on the same grounds.
Claim 5 recites:
The method of claim 1, further comprising: creating, using a job scheduler executed by the processor, an expiration job in a job queue managed by the job scheduler, wherein the expiration job comprises one or more instructions, executable by the processor, to revoke the favordrop from the beneficiary; wherein the job scheduler is configured to instruct the processor to execute the one or more instructions of the expiration job after the job scheduler determines that the current time reaches the expiration time, thereby revoking the favordrop from the beneficiary when the current time reaches the expiration time. (Tuttle, [0057], payment server 130, reminders that redeemable transaction is close to expiring, database 138; Fig. 8, [0062], refund to account of benefactor)
Claim 14 corresponds to claim 5 and is rejected on the same grounds.
Claim 6 recites:
The method of claim 1, further comprising: receiving, from the retailer device associated with the retailer location, at the processor, a redemption notification that the favordrop was applied as a payment for a purchase at the retailer location; and updating, using the processor, the balance based on a portion of the favordrop applied as the payment for the purchase at the retailer location. (Tutte, [0045], [0046], payment server 130 is in communication with merchant system, notification indicating status of transaction)
Claim 15 corresponds to claim 6 and is rejected on the same grounds.
Claim 8 recites:
The method of claim 1, wherein the code comprises a quick-response code, a numerical code, or an alpha-numerical code. (Tutte, [0044], redeemable payment data in suitable format including quick response (QR) code, identification number, password, etc.)
Claim 17 corresponds to claim 8 and is rejected on the same grounds.
Claim 9 recites:
The method of claim 1, wherein the notification data further comprises the balance and the expiration time. (Tutte, [0044], notification with redeemable payment data; [0043], payment data includes predetermined time period, monetary value)
Claim 18 corresponds to claim 9 and is rejected on the same grounds.
Response to Arguments
Applicant's arguments filed 12/30/2024 have been fully considered and are addressed below.
Regarding the rejection under 35 U.S.C. 101, Applicant’s arguments have been fully considered but they are not persuasive. Regarding Step 2A, prong one, no arguments appear to have been presented regarding Step 2A, prong one. However, concerning Step 2A, prong one, the certain methods of organizing human activity grouping of abstract ideas includes commercial interactions. As drafted each of claims 1, 10 and 19 only recite the commercial or legal interaction of an agreement in the form of a contract that is sharing a voucher by a user that has a beneficiary, a request value, a retailer location, and an expiration time where the voucher is revoked and the balance of the voucher is returned to the user upon reaching the expiration time, which is clearly within the groupings of abstract ideas discussed in MPEP 2106.
Regarding Applicant’s arguments regarding Step 2A, prong two, integration into a practical application requires an additional element or a combination of additional elements in the claim to 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 exception. Limitations that are indicative of integration into a practical application include improvements to the functioning of a computer, applying the judicial exception with a particular machine, effecting transformation of a particular article to a different state or thing or applying the judicial exception in some other meaningful was beyond generally linking the use of the judicial exception to a particular technological environment. It is respectfully submitted that the feature cited by the Applicants, “The present claims provide a technological solution to these issues as applied to the administrator device of the temporary voucher sharing system, which allows the user to set an expiration time for the favordrop, and at the conclusion of this time, the favordrop is assigned back to the user. In particular, the administrator device sends a return notification to the user device to notify that a balance of the favordrop has not been used by the beneficiary and allows the user to access or utilize all or a part of the balance of the favordrop, or again share it with the beneficiary or another beneficiary.” is mere instructions to apply an exception. It is also respectfully noted that the features cited by the Applicant are not recited in the claims. Please see MPEP 2106.05(f)(1) discussing when the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished this does not show integration into a practical application. Please see MPEP 2106.05(f)(2) discussing when the claim invokes computers or other machinery merely as a tool to perform an existing process including use of a computer or other machinery for economic tasks this does not show integration into a practical application. Please also see MPEP 2106.05(a), noting a commonplace business method applied on a general purpose computer and gathering/analyzing/displaying information using conventional techniques are examples of features courts have indicated as not to show an improvement to technology. Here, the commonplace business method and existing process is an agreement in the form of a contract that is sharing a voucher by a user that has a beneficiary, a request value, a retailer location, and an expiration time where the voucher is revoked and the balance voucher is returned to the user upon reaching the expiration time. Regarding Enfish, it is respectfully submitted that an economic task is claimed, as opposed to improving computer functionality. Regarding McRO, animating characters is not claimed.
Regarding Applicant’s arguments regarding Step 2B, Step 2B is directed to whether the claim recites additional elements that amount to an inventive concept (AKA “significantly more”) than the judicial exception. The Applicant argues “In the claimed method, the administrator device receives a favordrop request from the user device and sends a notification to the beneficiary device, which is at least partially displayable on the beneficiary device and comprises a code that enables the beneficiary to redeem the favordrop. In addition, when a current time reaches the expiration time set by the user, the administrator device further sends a return notification to the user device, which is at least partially displayable on the user device and comprises a code that enables the user to redeem the favordrop. This additional communicative step that reverts the favordrop back to the user is non-conventional and does not simply recite an instruction to apply an abstract idea to a generic set of computers. Instead, these additional limitations provide a unique implementation of a code that matches the notification originally sent to the beneficiary which provides an "inventive concept," which solves the issues of existing electronic gift card systems and confines the claim to a particular useful application of any judicial exception.” The Examiner respectfully disagrees as the recited elements are all known activities. The Applicant’s arguments are based on the same code sent to the beneficiary being sent back to the user. As recited in claims 1, 10 and 19, upon expiration of the time period the favordrop is revoked, which renders the code associated with the favordrop invalid. See Applicant’s specification, [0066], discussing validating the favordrop. Otherwise, the code could be used by the beneficiary after the expiration. Nothing in the specification places any technical importance on the code and instead lists conventional examples of a code including QR, numerical and alphanumerical codes. Moreover, the favordrop is defined in the claims as a balance, and returning a balance to a user does not constitute significantly more. Please see Applicant’s specification, [0048]. Regarding Example 34, content filtering is not claimed. MPEP 2106.05(d) gives examples recognized by the courts of known computer functions including “receiving or transmitting data over a network”, “performing repetitive calculations”, “electronic recordkeeping”, “storing and retrieving information in memory”, “recording a customer’s order”, and “arranging a hierarchy of groups, sorting information, eliminating less restrictive pricing information and determining the price”, all of which directly correspond to the generically claimed operations of the present claims, which claim an agreement in the form of a contract that is sharing a voucher by a user that has a beneficiary, a request value, a retailer location, and an expiration time where the voucher is revoked and the balance voucher is returned to the user upon reaching the expiration time.
Regarding the rejections under 35 U.S.C. 103, Applicant’s arguments have been fully considered. The Applicant argues “The amendments also clarify that the favordrop is redeemed as a payment with a retailer according to a code that is present in both the notification sent to the beneficiary and the return notification sent to the user. Accordingly, the user is now able to redeem the favordrop himself using the code provided in the return notification. Applicant respectfully submits that the combination of cited references fails to teach these features now required by the amended claims.” The Examiner respectfully disagrees. To begin with, the claims do not recite that the user is able to redeem the favordrop himself using the code provided in the return notification. Further, the specification does not discuss that the user is able to redeem the favordrop himself using the code provided in the return notification or how the code could be used by both beneficiary and subsequently by the user. Tutte, [0043], discusses refunding the pre-paid amount to the benefactor if not claimed by the beneficiary within a specified duration. Tutte, [0044], discusses redeemable payment data including codes and notifications. Tutte, [0060], discusses that the expired status of the of the transaction is relayed to the benefactor and the transaction is refunded to the account of the benefactor. The Examiner respectfully takes the position that the sending of the code in the return notification is a mere duplication of parts not having patentable significance unless a new and unexpected result is produced. Please see MPEP 2144..04. Sending a code for a user to access their own balance is not a new or unexpected result. Further, as noted above, the specification does not discuss that the user is able to redeem the favordrop himself using the code provided in the return notification or how the code could be used by both beneficiary before expiration and then subsequently by the user after expiration. Again, the favordrop is defined as a balance. In Tutte and the present application, a balance is returned to the user/benefactor if not used by the beneficiary within a time period.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure includes: US 2016/0055483; and US 2013/0311265.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Gregory Harper whose telephone number is (571)272-5481. The examiner can normally be reached M-Th 7am-5pm.
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/GREGORY HARPER/Examiner, Art Unit 3692
/DAVID P SHARVIN/Primary Examiner, Art Unit 3692
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