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 .
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 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.
Status of Claims
Claims 1-8, and 10-20 remain pending, and are rejected.
Claim 21 has been added, and is rejected.
Claim 9 has been cancelled.
Response to Arguments
Applicant’s arguments filed on 11/26/2025 with respect to the rejection under 35 U.S.C. 101 have been fully considered, but are not persuasive for at least the following rationale:
Applicant’s arguments filed on 11/26/2025 with respect to the rejection under 35 U.S.C. 101 for claims directed to a judicial exception are not persuasive.
Notably, on pages 9-10 of the Applicant’s Remarks, arguments are made that providing the virtual gift as a substitute for a tangible gift improves the function of a computer, such as by obviating the need for a computer to identify and propose one or more additional suggested gifts when the tangible gift is not expected to be delivered to the recipient in time, and use less processor cycles, less memory, and less network bandwidth for communication between components in the computer. On pages 10-11, comparisons are drawn to Amdocs and Enfish in the reduction in the use of computer and network resources are indicia of patentability.
Examiner respectfully disagrees. Providing a virtual gift as a substitute for a tangible gift has no connection to a functioning of a computer as a substitute gift is an abstract concept that falls under product recommendations and sales and marketing activities as certain methods of organizing human activity. The substitute gift being digital merely provides a general link to a computing environment, but does not provide any meaningful limitation. The product is merely a product that exists within a computer, but the providing a substitute gift is purely a commercial activity. How a computer functions or how a virtual product is created is not recited in the claims nor disclosed in the specification. As such, this element does not provide any improvements in computer functionality, and any of the alleged improvements of less processor cycles, less memory, and less network bandwidth for communication between components in the computer only exist from a more efficient algorithm that merely processes less data. The computing components function as generic computing components do. The comparisons to Amdocs and Enfish are also inapposite. In Amdocs, the courts emphasized the specification in defining a particular manner of how the data was enhanced, linking the claims to an improvement in a technical field, as opposed to an improvement in a commercial endeavor, and specifically defined the manner in which the data was enhanced. In Enfish, the claims were directed to a specific improvement to the ways computer operate, such as a type of data structure that improved the ways computers store and retrieve data from memory, and functioned differently than conventional databased. As discussed above, the claims do not change how computers function or involve any particular computer technology. The claims, alone or in combination, are directed to determining and suggesting gifts to a user to get for a recipient. The proposal of a virtual gift merely involves a product that exists within a computing environment, but does not change or improve any computer functionality.
In view of the above, the rejection under 35 U.S.C. 101 has been maintained below.
Applicant’s arguments filed on 11/26/2025 with respect to the rejection under 35 U.S.C. 103 have been fully considered, and are persuasive. Applicant has amended subject matter than has been indicated as free of prior art, and any intervening claims, into the independent claims.
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 1-8 and 10-21 are rejected under 35 U.S.C. 101 because the claims are directed to a judicial exception without significantly more.
Step 1:
Claims 1-8 and 10-18 are directed to a method, which is a process. Claim 19 is directed to a non-transitory computer-readable medium, which is an article of manufacture. Claims 20-21 is directed to a system, which is an apparatus. Therefore, claims 1-8 and 10-21 are directed to one of the four statutory categories of invention.
Step 2A (Prong 1):
Taking claim 1 as representative, claim 1 sets forth the following limitations reciting the abstract idea of recommending gifts for a gifting user to purchase for a recipient:
enabling a gifting user to create and maintain a recipient profile for a recipient user, the recipient profile including relationship information between the gifting user and the recipient user, occasion information for one or more occasions associated with the recipient user, recipient preference information, recipient contact information, and gifting user payment information for the gifting user;
notifying the gifting user of an upcoming occasion for the recipient user based upon occasion information of the recipient profile;
permitting the gifting user to provide budgetary information for a gift to be dispatched to the recipient user for the upcoming occasion;
proposing one or more suggested gifs for the upcoming occasion based upon the budgetary information, the relationship information and the recipient preference information;
enabling the gifting user to select a selected gift from among the suggested gifts;
applying the recipient contact information to dispatch the selected gift to the recipient;
applying the gifting user payment information to pay for the selected gift, wherein said proposing the gift comprises as a substitute for a tangible gift when the tangible gift is not expected to be delivered to the recipient user in time for the upcoming occasion;
wherein said applying the recipient contact information to dispatch the selected gift comprises sending the gift to the recipient;
wherein the method further comprises presenting a gift announcement associated with the gift to the recipient user, the gift announcement comprising a preview of the selected gift, information for identifying the gifting user and a gift access code for enabling the recipient user to access the gift.
The recited limitations above set forth the process for recommending gifts for a gifting user to purchase for a recipient. These limitations amount to certain methods of organizing human activity, including commercial or legal transactions (e.g. agreements in the form of contracts, advertising, marketing or sales activities or behaviors, etc.). The claims are directed to maintaining a profile of recipient information to use to notify a user of a gifting occasion and recommend gifts to purchase for the recipient (see specification: [0003-0004] disclosing the time and effort required for givers to consider preferences of recipients and remember occasions), which is an advertising and marketing activity. Such concepts have been identified by the courts as abstract ideas (see: MPEP 2106.04(a)(2)).
Step 2A (Prong 2):
Examiner acknowledges that representative claim 1 recites additional elements (emphasized in bold), such as:
a server circuit;
virtual;
via a link, electronic mail messaging or short messaging service (SMS) messaging;
Taken individually and as a whole, representative claim 1 does not integrate the recited judicial exception into a practical application of the exception. The additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use.
Furthermore, this is also because the claim fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement a judicial exception with a particular machine, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
While the claims recite a server circuit, the server circuit is recited with a very high level of generalization. By broadest reasonable interpretation, a server circuit can be any type of electrical components arranged to perform computations. Additionally, the specification does not disclose the server circuit with any particularity, disclosing the server circuit with the same high level of generalization, such as in paragraph [0406], which discloses that the gifting method can be executed by a computer system (or circuit), including a laptop system, a handheld computer system, and a server system. Paragraph [0452] further discloses that the method can be performed by any of a personal computer, a server, a smartphone, and/or a microcontroller, without limitation. Specification paragraph [0459] also discloses special-purpose circuitry, ASICs, FPGAs, etc. Furthermore, the claims only recite the server circuitry in passing “via a server circuit” to generally perform the steps of the abstract process. It is evident that the server circuitry is any type of generic computer processors, and only serve to provide a general link the abstract idea to a computing environment.
In view of the above, under Step 2A (Prong 2), representative claim 1 does not integrate the recited exception into a practical application (see: MPEP 2106.04(d)).
Step 2B:
Returning to representative claim 1, taken individually or as a whole, the additional elements of claim 1 do not provide an inventive concept (i.e. whether the additional elements amount to significantly more than the exception itself). As noted above, the additional elements recited in claim 1 are recited in a generic manner with a high level of generality and only serve to implement the abstract idea on a generic computing device. The claims result only in an improved abstract idea itself and do not reflect improvements to the functioning of a computer or another technology or technical field. As discussed above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed process ultimately amount to no more than the mere instructions to apply the exception using a generic computer and/or no more than a general link to a technological environment.
Even when considered as an ordered combination, the additional elements of claim 1 do not add anything further than when they are considered individually.
In view of the above, claim 1 does not provide an inventive concept under step 2B, and is ineligible for patenting.
Regarding Claim 19 (even if the claim was directed to the non-transitory machine-readable storage media): Claim 19 recites at least substantially similar concepts and elements as recited in claim 1 such that similar analysis of the claims would be readily apparent to one of ordinary skill in the art. As such, claims 19 is rejected under at least similar rationale as provided above regarding claim 1.
Regarding Claim 20 (system): Claim 20 recites at least substantially similar concepts and elements as recited in claim 1 such that similar analysis of the claims would be readily apparent to one of ordinary skill in the art. As such, claims 20 is rejected under at least similar rationale as provided above regarding claim 1.
Dependent claims 2-8, 10-18, and 21 recite further complexity to the judicial exception (abstract idea) of claim 1, such as by further defining the algorithm of recommending gifts for a gifting user to purchase for a recipient, and do not recite any further additional elements. Thus, each of claims 2-8, 10-18, and 21 are held to recite a judicial exception under Step 2A (Prong 1) for at least similar reasons as discussed above.
Under prong 2 of step 2A, the additional elements of dependent claims 2-8, 10-18, and 21 also do not integrate the abstract idea into a practical application, considered both individually or as a whole. More specifically, dependent claims 2-8, 10-18, and 21 rely on at least similar elements as recited in claim 1. Further additional elements are also acknowledged; however, the additional elements of claims 2-8, 10-18, and 21 are recited only at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). Further, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as the Internet or computing networks).
Secondly, this is also because the claims fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement the judicial exception with, or use the judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Taken individually and as a whole, dependent claims 2-8, 10-18, and 21 do not integrate the recited judicial exception into a practical application of the exception under step 2A (prong 2).
Lastly, under step 2B, claims 2-8, 10-18, and 21 also fail to result in “significantly more” than the abstract idea under step 2B. The dependent claims recite additional functions that describe the abstract idea and use the computing device to implement the abstract idea, while failing to provide an improvement to the functioning of a computer, another technology, or technical field. The dependent claims fail to confer eligibility under step 2B because the claims merely apply the exception on generic computing hardware and generally link the exception to a technological environment.
Even when viewed as an ordered combination (as a whole), the additional elements of the dependent claims do not add anything further than when they are considered individually.
Taken individually or as an ordered combination, the dependent claims simply convey the abstract idea itself applied on a generic computer and are held to be ineligible under Steps 2B for at least similar rationale as discussed above regarding claim 1. Thus, dependent claims 2-8, 10-18, and 21 do not add “significantly more” to the abstract idea.
Subject Matter Free of Prior Art
Claims 1-8 and 10-21 are determined to have overcome the prior art of rejection and are free of the prior art, however the claims remain rejected under 35 USC 101, as set forth above.
Claims 1-8 and 10-21 are found to overcome the prior art rejection for the reasons set forth below.
Claim 1 recites the claimed features of wherein said proposing the virtual gift comprises proposing the virtual gift as a substitute for a tangible gift when the tangible gift is not expected to be delivered to the recipient user in time for the upcoming occasion;
The closest prior art was found to be as follows:
Kressler (US 20130268432 A1), Erez (US 20230222562 A1), and NPL Reference U (see PTO-892 Reference U mailed on 5/27/2025.
Boruhovin (US 20210398092 A1) recites [0046] – “The step of presenting the menu includes selecting the primary factors from the target profile or target sub-profile (depending upon a giver or recipient perspective), forming an array or sub-array with the selected primary factors, setting a target template or pre-set template for each selected primary factor, filtering the array with the target template or the sub-array with the pre-set template so as to form a filtered array or filtered sub-array, and identifying gift options corresponding to the target ratings for the gift selection menu. In some embodiments for the giver perspective, the array is a double filtered array, including selected secondary factors and corresponding pre-set templates. In further embodiments, the array is a triple filtered array, including the selected primary factors of the recipient. In still further embodiments, the array is a quadrupled filtered array, including the selected secondary factors of the recipient. The gift options making the gift selection menu fit the target ratings set by the levels of the array of the present invention”.
Kressler (US 20130268432 A1) recites [0068] – “The control token represents a device which gives the buyer the right and power to redeem the token for the purchased item in the future. In the preferred embodiment of this invention, the token would be part of a gift proxy design to convey the psychological elements of the specific gift selected by the buyer. However, the gift proxy would be compact and easily transported”. Notably, however, Kressler does not disclose where another gift is suggested as a substitute because the original gift would not arrive in time for the occasion. Kressler discloses a proxy gift that is to be redeemed by the recipient from the merchant at a later time.
Erez: (US 20230232480 A1) recites [0177] – “The printable instance of the gift alert can be printed at home or printed professionally and shipping to the recipient. Pre-made gift pages can be used as the gift alert. For example, a barcode of the pre-made gift page can be registered with the gift transaction system 102. For another example, a bar code of a particular gift transaction can be filled in on the pre-made gift page. The gift alert can include greeting card templates, animation templates, audio templates, personal videos, personal photos, personal audio, or any combination thereof. After the gift alert has been sent, the merchant backend interface module 216 of FIG. 2 can place a soft hold on the gift item. The soft hold can have an expiration time after which the gift item from the merchant can be purchased by someone else”. Notably, however, Erez does not disclose substituting a digital gift for a tangible gift, but discloses a gift card system to personalize the gift card for the recipient.
NPL Reference U (see PTO-892 Reference U mailed on 5/27/2025) discloses a system for recommending gifts to a user in real time using the open data of social networks to build user characteristics. Notably, however, NPL Reference U does not disclose suggesting a substitute gift when the tangible gift is not expected to be delivered in time or a gift announcement that provides a preview of the gift with a gift access code.
It was found that no references alone or in combination, neither anticipates, reasonable teaches, nor renders obvious the below noted features of Applicant’s invention. The features of claim 1 in combination that overcome the prior art are:
wherein said proposing the virtual gift comprises proposing the virtual gift as a substitute for a tangible gift when the tangible gift is not expected to be delivered to the recipient user in time for the upcoming occasion;
Therefore, none of the cited references disclose or render obvious each and every feature of the claimed invention and the claimed invention is determined to be free of the prior art. Although individually the claimed features could be taught, any combination of references would teach the claimed limitations using a piecemeal analysis, since 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). The examiner emphasizes that it is the interrelationship of the limitations that renders these claims free of the prior art/additional art.
Therefore, it is hereby asserted by the Examiner that, in light of the above, that claims 1-8 and 10-21 are free of prior art as the references do not anticipate the claims and do not render obvious any further modification of the references to a person of ordinary skill in art.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY J KANG whose telephone number is (571)272-8069. The examiner can normally be reached Monday - Friday: 7:30 - 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maria-Teresa Thein can be reached at 571-272-6764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T.J.K./Examiner, Art Unit 3689
/VICTORIA E. FRUNZI/Primary Examiner, Art Unit 3689 1/30/2026