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 .
Claim Status
Claims 1-20 are currently pending and are presented for examination on the merits.
Objections
Specification
The abstract of the disclosure is objected to for failure to provide a brief narrative of the disclosure as a whole is required. See MPEP § 608.01(b). For example, a hologram is not mentioned. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. Correction is required.
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 they recite non-patentable subject matter under MPEP § 2106, e.g., the 2019 PEG, October update. The claimed invention is directed to a judicial exception (e.g., an abstract idea, etc.) without practical application or significantly more.
More particularly, when considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Broad categories of abstract ideas include fundamental economic practices, certain methods of organizing human activities, an idea itself, and mathematical relationships/formulas. See, generally Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,132 S. Ct. 1289, 1294, 1297-98 (2012)); Federal Register notice titled 2014 Interim Guidance on Patent Subject Matter Eligibility (79 FR 74618), which is found at: http:// www. gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf; 2015 Update to the Interim Guidance; the 2019 Revised Patent Subject Matter Eligibility Guidance, Fed. Reg., Vol. 84, No. 4, January 7, 2019; and associated Office memoranda.
Under MPEP § 2106, Step 2a-prong 1, Claims 1-20 recite a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle). More particularly, the entirety of the method steps is directed towards a method of securing a barcode for scanning and deterring tampering/theft of a transaction card. These are long-standing commercial practices previously performed by humans (e.g., consumers, merchants, etc.) manually and via generic computing. As such, the inventions include an abstract idea under § 2106, and Alice Corporation. Under step 2a-prong 2, the claims fail to recite a practical application of the exception, because the extraneous limitations (e.g., a prepaid card assembly, an adhesive label, hologram, etc.) merely add insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g), generally link the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)) and/or generally instruct an artisan to apply it (the method) across generic computing technology. A claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit. See Alice, 573 U.S. at 222; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014). That is to say, the claims are not directed to a new software or computer, but rather employs pre-existing software to do what’s been previously done, albeit less efficiently or slower. “[I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (citations omitted). More particularly, the claims fail to recite an improvement to the functioning of a computer or technology (under MPEP § 2106.05(a)), the use of a particular machine (under § 2106.05(b)), effect a transformation or reduction of a particular article (§ 2106.05(c)), or apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (§ 2106.05(e)).
Under part 2b, the additional elements offered by the dependent claims either further delineate the abstract idea, add further abstract idea(s), adds insignificant extra-solution activity, or further instruct the artisan to apply it (the abstract idea(s)) across generic computing technology. The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because no one claim effects an improvement to another technology or technical field, an improvement to the functioning of a computer itself, or move beyond a general link of the use of the abstract idea to a particular technological environment. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Under Alice, merely applying or executing the abstract idea on one or more generic computer system (e.g., a computer system comprising a generic database; a generic element (NIC) for providing website access, etc.; a generic element for receiving user input; and a generic display on the computer, in any of their forms) to carry out the abstract idea more efficiently fails to cure patent ineligibility. See, e.g., Content Extraction, 776 F.3d at 1347 (claims reciting a “scanner” are nevertheless directed to an abstract idea); Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea).
Courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: performing repetitive calculations, receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data, MPEP 2106.05(d), wherein the italicized tasks are particularly germane to the instant invention.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
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 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.
Claims 1-20 are rejected under 35 U.S.C. §102(a)(1) as being anticipated by U.S. 2017/0243098 to Pascua et al.
With respect to Claim 1, Pascua teaches a prepaid card assembly (FIGS. 1-15), comprising: packaging (FIG. 13-15, carrier); and a prepaid card at least partially enclosed within the packaging, wherein the prepaid card includes a barcode (FIG. 13-15;[0055]) wherein the prepaid card is coupled to the packaging such that, upon removal of the prepaid card from the packaging, a portion of the barcode of the prepaid card remains coupled to the packaging to render the barcode of the prepaid card unscannable (FIG. 13-15; Abstract; [0071-74], teaching “a portion of the label may be deliberately chosen to remain on the card or carrier . . .” [0073], and that label may have “activation indicia 100, such as a bar-code” [0074]).
With respect to Claim 2, Pascua teaches wherein the packaging defines a cutout, and the barcode of the prepaid card is visible through the cutout when the prepaid card is coupled to the packaging (FIGS. 1-15).
With respect to Claim 3, Pascua teaches wherein the packaging includes a warning label located adjacent to the barcode of the prepaid card when the prepaid card is coupled to the packaging, and the warning label includes reference information about the barcode of the prepaid card to identify counterfeit or tampered with packaging. (FIG. 9)
With respect to Claim 4, Pascua teaches wherein the prepaid card includes a hologram disposed on the barcode of the prepaid card, and the barcode of the prepaid card is configured to be scanned through the hologram. ([0059-63];[0073];[0082])
With respect to Claim 5, Pascua teaches wherein the barcode of the prepaid card includes a color gradient to vary colors of the barcode. ([0082], iridescence, hue)
With respect to Claim 6, Pascua teaches an adhesive label disposed between the packaging and the prepaid card to couple the prepaid card to the packaging. ([0014], adhesive throughout)
With respect to Claim 7, Pascua teaches wherein the adhesive label is coupled to the prepaid card over at least a portion of the barcode of the prepaid card. ([0014])
With respect to Claim 8, Pascua teaches wherein an adhesive strength between the adhesive label and the packaging is greater than an adhesive strength between the adhesive label and the prepaid card such that, when the prepaid card is removed from the packaging, the adhesive label remains coupled to the packaging. ([0014], release layer, breakaway coating layer)
With respect to Claim 9, Pascua teaches wherein the adhesive label includes an adhesive pattern located between packaging adhering regions of the adhesive label, the adhesive pattern is coupled to the prepaid card over at least a portion of the barcode of the prepaid card, and the packaging adhering regions are coupled to the packaging. [0040]
With respect to Claim 10, Pascua teaches wherein the packaging adhering regions are free of the adhesive pattern. ([0014];[0040], adhesive throughout)
With respect to Claim 11, Pascua teaches wherein the packaging adhering regions and the adhesive pattern are separated by cut lines of the adhesive label. ([0043], fold lines)
With respect to Claim 12, Pascua teaches a prepaid card assembly (FIG. 13), comprising: packaging that includes a first panel and a second panel (FIGS. 1-15); a prepaid card at least partially located between the first panel and the second panel, wherein the prepaid card includes a barcode ([0071];[0055]); and an adhesive label disposed between the prepaid card and the first panel to couple the prepaid card to the packaging, wherein upon removal of the prepaid card from the packaging, the adhesive label is configured to remain coupled to the first panel and a portion of the barcode of the prepaid card is configured to remain coupled to the adhesive label such that the barcode of the prepaid card is unscannable. (FIGS. 1-15)
With respect to Claim 13, Pascua teaches wherein the packaging defines a cutout, the barcode of the prepaid card is visible through the cutout when the prepaid card is coupled to the packaging, and a portion of the adhesive label is located between the barcode of the prepaid card and the cutout. FIGS. 1, 3, 13
With respect to Claim 14, Pascua teaches wherein the prepaid card includes a hologram disposed on the barcode of the prepaid card, and the adhesive label is coupled to the prepaid card over at least a portion of the barcode of the prepaid card and the hologram. ([0059-63];[0082])
With respect to Claim 15, Pascua teaches wherein an adhesive strength between the adhesive label and the packaging is greater than an adhesive strength between the adhesive label and the prepaid card such that, when the prepaid card is removed from the packaging, the adhesive label remains coupled to the packaging. ([0014], breakaway layer)
With respect to Claim 16, Pascua teaches wherein upon removal of the prepaid card from the packaging, the portion of the barcode of the prepaid card is configured to remain coupled to the adhesive label such that the portion of the barcode is visible through the cutout. (Abstract)
With respect to Claim 17, Pascua teaches wherein the packaging includes reference information about the barcode of the prepaid card and that is located adjacent to the barcode of the prepaid card when the prepaid card is coupled to the packaging, and the reference information is configured to identify counterfeit or tampered with packaging based upon one or more features of the barcode of the prepaid card. FIG. 9
With respect to Claim 18, Pascua teaches wherein the one or more features of the barcode of the prepaid card includes a color of the barcode of the prepaid card, a design of a hologram disposed over the barcode of the prepaid card, or both. ([0082], iridescence, hue)
With respect to Claim 19, Pascua teaches a prepaid card assembly (FIGS. 1-15), comprising: packaging that defines a cutout (FIGS. 1-15); a prepaid card at least partially enclosed within and coupled to the packaging (FIGS. 1-15; Abstract), wherein the prepaid card includes a barcode, a hologram is disposed over at least a portion of the barcode (see barcode, and hologram throughout), and the hologram and the barcode are visible through the cutout when the prepaid card is coupled to the packaging (FIG. 13); and an adhesive label disposed between the packaging and the prepaid card to couple the prepaid card to the packaging, wherein the adhesive label is coupled to at least a portion of the barcode of the prepaid card such that, upon removal of the prepaid card from the packaging, the portion of the barcode of the prepaid card is removed from the prepaid card and remains coupled to the packaging. ([0073]; see adhesive throughout)
With respect to Claim 20, Pascua teaches wherein upon removal of the prepaid card from the packaging, the portion of the barcode of the prepaid card remains visible through the cutout. [0073]
Response to remarks
Applicant’s remarks submitted on 10/8/2025 have been fully considered, but are not persuasive where objections/rejections are maintained. It is initially noted that the claims are unamended. As per the objection, Examiner intended to type “hologram” instead of “holograph”; nevertheless, the objection is maintained that the abstract is insufficient to inform the public of the contents of the disclosure. As per the § 101 rejection, the rejection is maintained because the invention includes abstract idea (i.e., fundamental economic activity), in that tamper prevention of payment cards are a long-standing and wide-spread commercial practice. Tamper prevention has long included rendering a product inoperable upon unauthorized or improper removal from packaging. The particular concept of destroying a barcode or rendering it unscannable may be extraneous, but it fails to offer an innovative concept. At least Pasqua shows that the solution was previously offered by another. As per the prior art rejections, Pasqua teaches wherein the label may be partially left on the packaging, and that the label may include a barcode. This teaches the limitation discussed by Applicant in the remarks. Although it does not expressly discuss the effect of doing so, one of ordinary skill in the art would contemplate the barcode being rendered inoperable or unscannable it a portion of it were to remain on the packaging. The limitations are assessed by a PHOSITA armed with the state of the art at the time of filing. Please note that the applied reference(s) need not use the same terminology, or disclose the limitation verbatim, and also that the entirety of a prior art reference is to be applied to the respective claim(s), such that the pinpoint citations above are exemplary and provided for Applicant’s benefit; other locations within the applied reference(s) may further support the rejection. MPEP 2141.02(VI).
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 WILLIAM J JACOB whose telephone number is (571)270-3082. The examiner can normally be reached on M-F 8:00-5:00, alternating Fri. off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Gart can be reached on 5712723955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM J JACOB/Examiner, Art Unit 3696