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 claim amendments and related documents filed on December 26, 2025.
Claims 1-6 and 8-20 have been amended.
Claims 1-20 are pending and have been examined.
Response to Arguments
In response to Applicant’s argument that the claim amendments have overcome the previous rejection on the ground of obviousness-type double patenting in view of U.S. Patent 11,887,077, Examiner finds the argument persuasive and withdraws the rejection.
In response to Applicant’s argument that the claim amendments have overcome the previous rejections under 35 U.S.C. 101 on the ground that the claims are directed to an abstract idea without significantly more, Examiner finds the argument persuasive and withdraws the rejection. In particular, Examiner finds that the claim limitation “wherein the user computing device includes a digital wallet that stores the exchange item and a secure chain of custody blockchain pertaining to the exchange item” in independent claims 1 and 11 is a meaningful limitation of a technical nature. Examiner finds that as of just before the effective filing date of the claimed invention, although storage of a secure chain of custody blockchain in a digital wallet of a user device was known, it was not then so well-known as to be well-understood, routine and conventional. However, as set forth below, Applicant does not appear to have had possession of such claim limitation as of the effective filing date of the claimed invention. Nevertheless, the 101/SME rejection is withdrawn on the basis of what is claimed rather than on what was necessarily possessed.
In response to Applicant’s argument that the claim amendments have overcome the previous rejections under 35 U.S.C. 103, the argument is moot in view of the new grounds of rejection under 103 necessitated by Applicant’s claim amendments, as set forth below.
Claim Objections
Claim 1 is objected to on the ground that the word “incudes” (second line from the bottom) appears to be a typo. For purposes of examination, Examiner will interpret the claim term as “includes”.
Claim 15 is objected to on the ground that “The marketplace server claim 11” appears to be missing a word and probably should be “The marketplace server of claim 11”.
Appropriate correction is required.
Claim Rejections – 35 USC 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claim 11 includes the limitation “wherein the user computing device includes a digital wallet that stores the exchange item and a secure chain of custody blockchain pertaining to the exchange item”. Independent claim 1 contains similar language. The disclosure as filed lacks support for this claim limitation.
Independent claim 11 also contains the limitation “generate an exchange item database query based on the set of cures and when the digital wallet stores the set of additional exchange items, including a query component in the exchange item database query, wherein the query component pertains to including the set of additional exchange items as available exchange items of the exchange item database for searching purposes” (emphasis added herein). Independent claim 1 contains substantially similar or identical language. The disclosure as filed lacks support for a database query that includes a query component that is only included in the query when the digital wallet stores the set of additional exchange items.
Claims 2-10 and 12-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement based on their direct or indirect dependency from claim 1 or clam 11.
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:
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.
Claims 1-5 and 10-15 and 20 are rejected under 35 U.S.C. 103 as unpatentable over U.S. PGP 2005/0171902 A1 published August 4, 2005 (“Nguyen”) in view of U.S. PGP 2014/0032392 A1 published January 30, 2014 (“Ansari”), and further in view of U.S. PGP 2015/0170112 A1 published June 18, 2015 (“DeCastro”).
Per independent claim 11 {explanatory comments in curly braces}, Nguyen teaches a marketplace server of an exchange item marketplace system (see Nguyen, at least [0017]-[0018] disclosing a “transaction agent or station {that} acts as a broker” in the exchange of items between two parties, see also [0023] disclosing that “the transaction agent 140 may be implemented as a web site”), the marketplace server comprising: memory; an interface; and a processing module operably coupled to the memory and the interface (see Nguyen, at least [0054]-[0062], Figs. 1, 3 and 6 disclosing use of computers having memory, “input/output devices” (interfaces) and “hardware, firmware, software or any combination thereof” ([0054]) (modules)) in the implementation of the disclosed invention) wherein the processing module is configured to: (see Nguyen, at least [0054]) obtain from one or more of a point of sale device of the exchange item marketplace system and a user computing device of the exchange item marketplace system: an indication that an exchange item selected by the user computing device to use in a transaction … is not optimal for the transaction (see Nguyen, at least [0020], [0025] disclosing that an exchange item can be virtually anything purchased from virtually any type of vendor, at least [0026] disclosing an example where a user obtained a bookstore gift card which was not optimal for the user’s purchasing preferences, at least [0021] disclosing that an entity can access the transaction agent via a web browser {thus using a user computing device}, at least [0022] disclosing that “the transaction agent 140 may be implemented as a web site”, and at least [0051] disclosing that the system retrieves from a database, information about an item a user wishes to exchange), wherein the exchange item is associated with an exchange item rule set stored in an exchange item database of the exchange item marketplace system (see Nguyen, at least [0026], [0031] disclosing that an item such as a bookstore gift certificate or other gift certificate is inadequate for the user’s preferences (rule set), and at least [0038]-[0039] disclosing that the availability of an item for exchange as well as the user’s preferences are stored as an “offer statement” ([0039])), …; analyze the transaction in light of the exchange item rule set to determine a set of deficiencies associated with the exchange item (see Nguyen, at least [0026], [0031] disclosing that an item such as a bookstore gift card or other gift card is determined to be inadequate for the user’s preferences); determine a set of cures based on the set of deficiencies and attributes of the transaction (see Nguyen, at least [0026] disclosing determination that “another type of gift card or another item of equivalent value of having a value that is accepted” can constitute a set of cures based on the deficiency of the bookstore gift card, see also [0051]); accessing the {data storage} to determine whether the {data storage} stores a set of additional exchange items (see Nguyen, at least [0020], Fig. 1 showing entities each of which has an item the entity wishes to exchange, the presence multiple entities each with one item to exchange at least suggesting the presence of “additional exchange items”, see also [0031] disclosing “the confirmation module 240 requests the entity 110 to complete an offer statement to offer the item under the specified conditions. The specified conditions may include the type of items the entity 110 wishes to exchange and its value. For example, the entity 110 may want to exchange the item 120 for a gift certificate for facial massage or a restaurant meal for two at an equivalent value of $50. Upon receipt of the offer statement, the confirmation module 240 searches for any items that are available and satisfy the conditions. If such item or items are found, the confirmation module 240 goes through the items listed in the database and search (sic) for those having a matching requirements or conditions…. If there is a match, the confirmation module informs the entity.”); generate an exchange item database query based on the set of cures and when the {database} stores the set of additional exchange items, including a query component in the exchange item database query, wherein the query component pertains to including the set of additional exchange items as available exchange items of the exchange item database for searching purposes (see Nguyen, at least [0031] and discussion of same above); provide the exchange item database query to the exchange item database to identify a set of alternative exchange items, wherein the exchange item database searches exchange item rule sets of the available exchange items of the exchange item database and maps attributes of the exchange item rule sets to the set of cures to produce a list of the set of alternative exchange items (see Nguyen, at least [0031] and discussion of same above); generate a plurality of selectable combinations of the set of identified alternative exchange items (see Nguyen, at least [0038] disclosing query results that include “multiple items that meet the requirements of the user” and that “the user 310 may select the items according to some priority or preference order”); and provide, via the interface, the plurality of selectable combinations of the set of identified alternative exchange items to the user computing device, wherein the user computing device is operable to select one of the plurality of selectable combinations optimally complete the transaction (see Nguyen, at least [0038] and discussion of same above, the disclosed presentation of multiple selectable items at least suggesting that the presentation enables a “plurality of selectable combinations”, [0031] and [0038] also disclosing actual user selection of one or more items).
Nguyen does not expressly disclose that the transaction motivating the desire for an exchange was between the user computing device and the point of sale device, but this was known in the art. In analogous art, Ansari teaches systems and methods for financing integration with an e-commerce marketplace (see at least [0002]). Ansari further teaches exchanges of items resulting from a purchase between the user computing device and the point of sale device (see Ansari, at least [0095] disclosing technology for dealing with exchanges of items purchased in point of sale (POS) transactions as well as online sales, an online sale inherently requiring devices of both a customer (user) and seller (POS device)).
It would have been obvious to one having ordinary skill just before the effective filing date of the claimed invention to modify the teaching of Nguyen discussed above to include exchanges of items purchased in transactions between a user computing device and a point of sale device as taught by Ansari, in order to expand the market for Nguyen’s invention to include the brick and mortar as well as e-commerce marketplaces (see Ansari, at least [0002], [0004]-[0005]).
Neither Nguyen nor Ansari expressly discloses that the user computing device includes a digital wallet that stores the exchange item and a secure chain of custody blockchain pertaining to the exchange item. However, this technology was known in the art before the effective filing date of the claimed invention.
DeCastro teaches systems and methods for executing dual-currency exchanges (of cryptocurrencies and fiat currencies – see at least [0023]). DeCastro further teaches a user computing device {that} includes a digital wallet that stores {an} item and a secure chain of custody blockchain pertaining to the … item (see DeCastro, at least [0066], [0087] disclosing use of a digital wallet to store multiple items including cryptocurrencies, at least [0077] disclosing that cryptocurrencies can include “colored coins” that add “unique identifying information to a … digital asset … including but not limited {to} personal identifying information about the ownership, or chain of custody, of one or more coins of the cryptocurrency”, at least [0013], [0074] disclosing that cryptocurrency blockchains are shared by all users, and at least [0091] disclosing that users can download mining clients to use on their own personal computers, the combination of such disclosures teaching or at least suggesting storage in a user device of a digital wallet having an item and a chain of custody blockchain regarding the item).
It would have been obvious to one having ordinary skill just before the effective filing date of the claimed invention to combine with the combination of Nguyen and Ansari discussed above, storage in a digital wallet of a user device of one or more items and for each such item, of a claim of custody blockchain per the teaching of DeCastro, with the items and their chains of custody being digital representations of gift cards or other items offered for exchange per the combination Nguyen and Ansari, in order to prevent fraud in transfers and transactions (see DeCastro, at least [0030]).
Independent claim 1 is directed to a method for execution by a marketplace server of an exchange item marketplace system, the method consisting of steps that are identical or nearly identical to the operations that the processing module of the marketplace server of claim 11 is configured to perform. Therefore, claim 1 is rejected pursuant to 35 U.S.C. 103 as unpatentable over the combination of Nguyen, Ansari and DeCastro, based on the citations and reasoning discussed in reference to claim 11.
As per claims 2 and 12, the combination of Nguyen, Ansari and DeCastro discloses the method of claim 1 and the marketplace server of claim 11. Nguyen also discloses wherein the set of deficiencies comprises an exchange item rule of the exchange item rule set that does not allow the transaction {claim 2} / wherein the processing module is further operable to determine the set of deficiencies by: determining an exchange item rule of the exchange item rule set does not allow the transaction {claim 12} (see Nguyen, at least [0031], [0039] disclosing a situation in which no suitable matches are found based on the exchanging user’s provided preferences).
As per claims 3 and 13, the combination of Nguyen, Ansari and DeCastro discloses the method of claim 1 and the marketplace server of claim 11. Nguyen also discloses wherein the set of deficiencies comprises an amount of the exchange item is less than a transaction amount associated with the transaction {claim 3} / wherein the processing module is further operable to determine the set of deficiencies deficiency by: determining an amount of the exchange item is less than a transaction amount associated with the transaction {claim 13} (see Nguyen, at least [0031] disclosing a user inputting into a confirmation module of the system, an offer statement to exchange an item “for a gift certificate for facial massage or a restaurant meal for two at an equivalent value of $50”, the disclosure at least suggesting that an exchange item with a value of less than $50 would be deficient).
As per claims 4 and 14, the combination of Nguyen, Ansari and DeCastro discloses the method of claim 1 and the marketplace server of claim 11. Nguyen also discloses wherein the determining the set of deficiencies comprises one or more of: interpreting received exchange item acquisition information from the user computing device; and interpreting received merchant use information associated with the point of sale device from a merchant server of the exchange item marketplace system {claim 4} / wherein the processing module is further operable to determine the set of deficiencies by one or more of: interpreting received exchange item acquisition information from the user computing device; and interpreting received merchant use information associated with the point of sale device from a merchant server of the exchange item marketplace system {emphasis added herein} (see Nguyen, at least [0031], [0038] disclosing the confirmation module receiving and using user preferences to search for a suitable exchange item).
As per claims 5 and 15, the combination of Nguyen, Ansari and DeCastro discloses the method of claim 1 and the marketplace server of claim 11. Nguyen also discloses wherein the determining the set of deficiencies comprises one or more of … identifying exchange item use restrictions of the exchange item rule set that indicate use of the exchange item is restricted for the transaction {claim 5} / wherein the processing module is further operable to determine the set of deficiencies by one or more of … identifying exchange item use restrictions of the exchange item rule set that indicate use of the exchange item is restricted for the transaction {claim 15} (see Nguyen, at least [0026] disclosing a gift card restricted to use at a bookstore is not acceptable to a user, who wishes to exchange the bookstore gift card for another type of item).
As per claims 10 and 20, the combination of Nguyen, Ansari and DeCastro discloses the method of claim 1 and the marketplace server of claim 11. Nguyen further teaches determining a range of valid values for a condition associated with the exchange item rule set; obtaining a current value for the condition; and when a current value compares unfavorably to the range of valid values, identifying the unfavorable comparison as a first deficiency of the set of deficiencies {claims 10 and 20} (see Nguyen, at least [0031] disclosing an entity that wants to exchange a gift certificate for one or more items “at an equivalent value of $50”, that “the confirmation module 240 searches for any items that are available and satisfy the conditions” and that “if there are no matches, the confirmation module 240 indicates to the entity 110 that no matches are found”.
Claims 6, 7, 9, 16, 17 and 19 are rejected under 35 U.S.C. 103 as unpatentable over Nguyen in view of Ansari and DeCastro, and further in view of U.S. PGP 2014/0207659 A1 published July 14, 2014 (“Erez”).
As per claims 6 and 16, the combination of Nguyen, Ansari and DeCastro discloses the method of claim 1 and the marketplace server of claim 11. Nguyen further discloses wherein the processing module is further operable to identify the set of alternative exchange items (see Nguyen, at least [0026] disclosing multiple possible alternative exchange items). However, neither Nguyen nor Ansari nor DeCastro expressly discloses wherein the identifying the set of alternative exchange items includes identifying a first alternative exchange item that, when combined with a second alternative exchange item provides a cure of the set of cures; and linking the first alternative exchange item to the second alternative exchange item in the plurality of selectable combinations of the set of identified alternative exchange items {claim 6} / identifying a first alternative exchange item that, when combined with a second alternative exchange item, provides a cure of the set of cures; and linking the first alternative exchange item to the second alternative exchange item in the plurality of selectable combinations of the set of identified alternative exchange items {claim 16}.
In analogous art, Erez teaches an electronic commerce system with gift transaction management capability (see at least [0002]). Erez further teaches that gift items can be exchanged as follows: “the exchange item selection can be a set of multiple items, either from the same merchant as the original gift or from different merchants. If the original gift was a set of multiple items, the exchange item selection does not have to be the same number of items (i.e., it can be less or more items)” ([0096]). Thus, Erez teaches combinations of one or more alternative gift items that can cure deficiencies of one or more other gift (exchange) items.
It would have been obvious to one having ordinary skill in the art just before the effective filing date of the claimed invention to combine with the combination of Nguyen, Ansari and DeCastro discussed in reference to claim 1 and 11, capacity to combine and link a set of exchange items to one or more items needing exchange per the teaching of Erez, in order to add flexibility to better accommodate the user preferences for exchanges disclosed by Nguyen. The combination would have been to a system/method ready for improvement and would not have produced any unexpected results.
As per claims 7 and 17, the combination of Nguyen, Ansari, DeCastro and Erez discloses the method of claim 6 and the marketplace server of claim 16. Nguyen further discloses wherein the identifying the first alternative exchange item that is compatible comprises: determining one or more of … a quantifiable amount associated with the first alternative exchange item is favorable {claim 7} / wherein the processing module is further operable to perform the identifying the first alternative exchange item by: determining one or more of … a quantifiable amount associated with the first alternative exchange item is favorable {claim 17} (see Nguyen, at least [0031] disclosing two gift cards subject to exchange having the same value).
As per claims 9 and 19, the combination of Nguyen, Ansari and DeCastro discloses the method of claim 1 and the marketplace server of claim 11. Nguyen further discloses wherein the generating the plurality of selectable combinations of the set of identified alternative exchange items {claim 9} / wherein the processing module is further operable to generate the plurality of selectable combinations of the set of identified alternative exchange items {claim 19} (see Nguyen, at least [0038] disclosing “when there are multiple items that meet the requirements of the user 310, the user 310 may select the items according to some priority or preference order”) and Erez teaches generating a first selectable combination of the plurality of selectable combinations of the set of identified alternative exchange items; and generating a second selectable combination of the plurality of selectable combinations of the set of identified alternative exchange items, wherein the second selectable combination includes a first exchange item that is not a part of the first selectable combination {claim 9} / generating a first selectable combination of the plurality of selectable combinations of the set of identified alternative exchange items; and generating a second selectable combination of the plurality of selectable combinations of the set of identified alternative exchange items, wherein the second selectable combination includes a first exchange item that is not a part of the first selectable combination {claim 19} (see Erez, at least [0096] discussed in reference to claims 6 and 16, disclosing that combinations of items subject to exchange can be from “different merchants”).
It would have been obvious to one having ordinary skill in the art just before the effective filing date of the claimed invention to add to the combination of Nguyen, Ansari and DeCastro discussed in reference to claims 1 and 11, capacity to combine and link a different combinations of exchange items per the teaching of Erez, in the manner and for the reasons discussed in reference to claims 6 and 16.
Claims 8 and 18 are rejected under 35 U.S.C. 103 as unpatentable over Nguyen in view of Ansari and DeCastro, and further in view of U.S. PGP 2013/0073459 A1 published March 21, 2013 (“Zacarias”).
As per claims 8 and 18, the combination of Nguyen, Ansari and DeCastro discloses the method of claim 1 and the marketplace server of claim 11. Nguyen further discloses wherein the generating the plurality of selectable combinations of the set of identified alternative exchange items comprises {claim 8} / wherein the processing module is further operable to generate the plurality of selectable combinations of the set of identified alternative exchange items {claim 18} (see Nguyen, at least [0038] and discussion of same in reference to claim 11 (the “generate a plurality of selectable combinations” operation). However, neither Nguyen nor Ansari nor DeCastro expressly discloses creating a map of combinations of the exchange item and the set of identified alternative exchange items that are compatible with the transaction {claims 8 and 18}.
In analogous art, Zacarias teaches “an exchange service that … allows the user to exchange one value-ascertainable item for another value-ascertainable item” (Abstract). Zacarias further teaches display of a map on a user mobile device to help a user locate one or more exchange items (see at least [0089], [0102]-[0103], [0128], Figs. 5, 7, 11).
It would have been obvious to one having ordinary skill in the art just before the effective filing date of the claimed invention to improve the combination of Nguyen, Ansari and DeCastro discussed in reference to claims 1 and 11, with configuration for provision to a user of a map showing the location of potential exchange items per the teaching of Zacarias, in order to aid in completing the exchange of items disclosed in the combination of Nguyen, Ansari and DeCastro (see Zacarias, at least [0089], [0102]-[0103], [0128]). The improvement would have been to a system/method ready for improvement and would not have produced any unexpected results.
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
U.S. Pat 8,401,923 B1 dated March 19, 2013 (“Lester”) discloses methods and systems for exchanges of semi-fungible goods.
U.S. PGP 2017/0061509 A1 published March 2, 2017 (“Rosenberg”) teaches methods and systems for facilitating the in-person exchange of goods or services using an electronic platform.
U.S. Pat. 10,558,939 B2 to Shroff, et al. published February 11, 2020 teaches an apparatus for facilitating product exchanges.
U.S. Pat. 9,692,738 B1 to Wenneman, et al. published June 27, 2017 discloses systems and methods for facilitating item returns on behalf of customers of an electronic commerce site.
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 mailing date of this final action.
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/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694