DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Please note that the Examiner in this application has changed from SPE Bennett Sigmond to Examiner Michael Warden.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 21, 2026 has been entered.
Response to Amendment
Applicant amended claims 1-20.
Claims 1-20 are pending and have been examined.
Response to Arguments
Applicant's arguments filed August 21, 2026 have been fully considered but they are not fully persuasive.
Regarding Claim Objections
Examiner initially objected to claims 1 and 15 for grammatical errors. Applicant amended the claims to address these issues. In view of Applicant’s amendments, Examiner withdraws this objection.
Regarding 112 Rejections
Examiner initially rejected claims 1-20 under 35 USC 112(a) / 1st paragraph as failing to comply with the written description requirement. Applicant amended the claims to remove the limitations in question. In view of Applicant’s amendments, Examiner withdraws this rejection.
Regarding Prior Art Rejections
Examiner initially rejected claims 1-20 under 35 USC 103 as being unpatentable over the prior art. Applicant argued that the cited art does not teach the newly amended claims. In particular Applicant argued that they do not teach
"generating one or more selectable combinations of exchange items based on the one or more cures, wherein at least one selectable combination of the one or more selectable combinations includes the exchange item together with at least one alternative exchange item of the one or more alternative exchange items, and wherein the at least one selectable combination provides at least one cure of the one or more cures."
Applicant emphasized that the references do not teach a selectable combination that includes the exchange item together with an alternate exchange item that cures the deficiency. Examiner finds this argument persuasive. Examiner has conducted an updated prior art search in view of the new claims and will not provide an art rejection at this time.
Examiner withdraws this rejection.
Regarding Subject Matter Eligibility
Examiner withdrew the 101 rejection to the claims in the Final Office Action. Based on the amendments, Applicant added subject matter that amounted to eligible subject matter. However, there was not 112(a) support for that subject matter. Applicant has now deleted the subject matter to comply with 112(a). This now places the application in a position where a 101 rejection to the claims is appropriate. Examiner has provided a 101 rejection, see below.
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 claim(s) contains 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1 and 11; there is no written support for the limitation “obtaining… an indication that an exchange item selected… is deficient for fulfilling the transaction”.
Regarding claims 1 and 11; there is no written support for the limitation “identifying one or more alternative exchange items based on the one or more cures”. There is no teaching that the identifying of the items is based on the cures.
Regarding claims 1 and 11; there is no written support for the limitation “generating one or more selectable combinations of exchange items based on the one or more cures”. There is no teaching that the generation of the combinations is based on the cures.
Claims 2-10 and 12-12 are rejected due to their dependence on claims 1 and 11.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite the abstract idea which may be summarized as a transaction for exchanging items/goods.
Step 1 Analysis
Applicants claims are directed to a process (claims 1-1) and a machine (claims 11-20).
Step 2A, Prong 1 Analysis
Claims 1 and 11 recite the abstract idea/limitations of:
obtaining an indication that an exchange item selected by the [user] to use in a transaction is deficient for fulfilling the transaction,
wherein the exchange item is associated with an exchange item rule set,
and wherein a… wallet that stores the exchange item;
analyzing the transaction in accordance with one or more exchange item rules of the exchange item rule set to determine one or more deficiencies associated with the exchange item;
determining one or more cures based on the one or more deficiencies and attributes of the transaction;
identifying one or more alternative exchange items based on the one or more cures;
generating one or more selectable combinations of exchange items based on the one or more cures,
wherein at least one selectable combination of the one or more selectable combinations includes the exchange item together with at least one alternative exchange item of the one or more alternative exchange items,
and wherein the at least one selectable combination provides at least one cure of the one or more cures; and
providing the one or more selectable combinations,
wherein is operable to select a selectable combination of the one or more selectable combinations to complete the transaction.
As drafted these limitations are a process that falls within the “Certain Methods of Organizing Human Activity grouping of abstract ideas; but for the recitation of generic computer components. If a claim limitation, under its broadest reasonable interpretation, recites performance of the limitation as a commercial/legal interactions, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. By reciting/claiming a certain method of organizing human activity, Applicant’s claims recite an abstract idea. he recited system components are just applying generic computer components to the recited abstract limitations.
Step 2A, Prong 2 Analysis
This judicial exception is not integrated into a practical application because the claims only recites system components for implementing the abstract idea and extra-solution activity. The claims recite the additional limitations of a marketplace server, an exchange item marketplace system, one or more of a point of sale device, a user computing device, a digital wallet, memory, an interface, a processing module; and they are recited at a high level of generality. These system components amount to no more than mere instructions to apply the exception using a generic computer. These limitations generally link the use of the judicial exception to a technological environment and are not indicative of integration into a practical application. The limitations of:
transmitting the repayment terms to the mobile device of the user for authorization;
and upon receiving an indication of authorization from the user;
obtaining an indication,
providing the one or more selectable combinations,
as drafted are insignificant extra-solution activity. These steps are mere data gathering and storing of information and do not qualify as a practical application of the judicial exception. See MPEP 2106.05(g). These additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claims as a whole do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea without a practical application.
Step 2B Analysis
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of a construction tool, a processor, a memory a marketplace server, an exchange item marketplace system, one or more of a point of sale device, a user computing device, a digital wallet, memory, an interface, a processing module; amount to no more than mere components to implement the judicial exception using a generic computer components. For the same reason these elements are not sufficient to provide an inventive concept. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The limitations of:
obtaining an indication,
providing the one or more selectable combinations,
as drafted are insignificant extra-solution activity. These steps are mere data gathering and storing and do not qualify as significantly more than the judicial exception as they are well-understood, routine, and conventional activity when clamed in a merely generic manner (as it is here). See MPEP 2106.05(g). See Applicant’s specification page 5-6, about implementation of the abstract idea using general purpose or special purpose computing devices; and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Thus Applicant’s claims are not patent eligible.
Dependent Claims Analysis
As for dependent claims 2-10 and 12-20, these claims recite limitations that further define the same abstract idea noted in independent claims 1 and 11. Therefore, claims 2-10 and 12-20 are considered ineligible subject matter for the reasons given above.
Thus, the dependent claims 2-10 and 12-20 are not patent-eligible either.
Examiner Request
The Applicant is requested to indicate where in the specification there is support for amendments to claims should Applicant amend. The purpose of this is to reduce potential 35 USC 112(a) or 35 USC 112 first paragraph issues that can arise when claims are amended without support in the specification. The Examiner thanks the Applicant in advance.
Since Applicant’s filed specification does not number the paragraphs, Examiner would appreciate that any indication use the paragraphs from the US Pre-Grant Publication of the application US2024/0161073. This would be helpful in narrowing the identification of any subject matter.
Prior Art
Applicant has amended their claims. Examiner has conducted an updated prior art search in view of the new claims and will not provide an art rejection at this time.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J WARDEN whose telephone number is (571)272-9602. The examiner can normally be reached M-F; 9-6 CDT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett M Sigmond can be reached at 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL J. WARDEN/
Examiner
Art Unit 3694
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694
Prosecution Insights