DETAILED ACTION
Status of Claims
This action is in reply to the response received on 09 July 2026.
Claims 1, 8, 15, and 22-24 are amended.
Claims 4, 11, and 18 were previously canceled.
Claims 1-3, 5-10, 12-17, and 19-24 have been examined and are pending.
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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09 July 2026 has been entered.
Allowable Subject Matter
As stated in the Office Action mailed on 13 May 2023, the recite allowable subject matter and would be eligible if the claims were re-written or amended to overcome the 101 rejection in the Office Action below.
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, 5-10, 12-17, and 19-24 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea without significantly more).
Under step 1, it is determined whether the claims are directed to a statutory category of invention (see MPEP 2106.03(II)). In the instant case, claims 1-3, 5-7, and 22 are directed to a method, claims 8-10, 12-14, and 23 are directed to a system, and claims 15-17, 19-21, and 24 are directed to a product of manufacture (non-transitory computer-readable storage medium).
While the claims fall within statutory categories, under revised Step 2A, Prong 1 of the eligibility analysis (MPEP 2106.04), the claimed invention recites an abstract idea of gifting a flexible gift object. Specifically, representative claim 1 recites the abstract idea of:
receiving a gift request to associate a flexible gift object with a recipient, wherein the gifting request includes identifying information associated with the recipient, wherein the gifting request defines a gift object category, and wherein the flexible gift object includes a label;
dynamically associating the label with the identifying information associated with the recipient and the gift object category;
receiving an activation request to activate the flexible gift object, wherein the activation request includes the data, and wherein the data is extracted from the label;
processing the identifying information and the gift object category through an assignment recommendation to generate a set of assignment recommendations for the flexible gift object, wherein the assignment recommendation uses a dataset of sample recipient profiles and sample flexible gift objects associated with the sample recipient profiles;
responsive to receiving the activation request:
querying an object using a unique identifier to retrieve an object record corresponding to the flexible gift object;
determining from the retrieved object record whether the flexible gift object is eligible for activation based on a stored gift object category and an activation status stored in the object record;
updating a recipient display to present the set of assignment recommendations for the flexible gift object;
receiving a selection of an assignment option through the recipient, wherein the selection corresponds to a particular entity associated with the gift object category;
updating the object record to associate the unique identifier with the selected particular entity and to modify the activation status of the flexible gift object from an inactive state to an activated state;
generating transaction processing data including the unique identifier and an identifier of the selected particular entity;
transmitting transaction processing data associated with the particular entity, wherein the transaction processing data includes a unique identifier corresponding to the label, and wherein the transaction processing data allows to process transactions involving the flexible gift object locally;
updating the dataset according to the selection, wherein the updated dataset is processed to update the assignment recommendation; and
monitoring automatically and in real-time new identifying information associated with the recipient through the updated assignment recommendation to generate new assignment recommendations for the flexible gift object.
Under revised Step 2A, Prong 1 of the eligibility analysis, it is necessary to evaluate whether the claim recites a judicial exception by referring to subject matter groupings articulated in 2106.04(a) of the MPEP. Even in consideration of the analysis, the claims recite an abstract idea. Representative claim 1 recites the abstract idea of gifting a flexible gift object, as noted above. This concept is considered to be a method of organizing human activity. Certain methods of organizing human activity include “fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).” MPEP 2106.04(a)(2)(II). In this case, the abstract idea recited in representative claim 1 is a certain method of organizing human activity because it relates to sale activities since the claims specifically recite the steps of receiving a gift request to associate a flexible gift object with a recipient, where the gifting request defines a gift object category and the flexible gift object has a label, receiving an activation request to activate the flexible gift object with the data included in the label, processing the data from the label to retrieve identifying information associated with the recipient and the gift object category, providing a set of assignment options that correspond to an entity associated with the gift object category, receiving a selection of an assignment option wherein the selection corresponds to a particular entity associated with the gift object, dynamically associating the data in the label with the particular entity, wherein when the data is dynamically associated with the particular entity, processing the identifying information and the gift object category to generate a set of assignment recommendations for the flexible gift object, wherein the assignment recommendation uses a dataset of sample recipient profiles and sample flexible gift objects associated with the sample recipient profiles, responsive to receiving the activation request querying an object using a unique identifier to retrieve an object record, determining from the retrieved object record whether the flexible gift object is eligible, updating a recipient display to present the set of assignment recommendations for the flexible gift object, detecting a selection of an assignment option through the recipient, wherein the selection corresponds to a particular entity associated with the gift object category, transmitting transaction processing data associated with the particular entity that includes a unique identifier corresponding to the label, and wherein the transaction processing data allows to process transactions involving the flexible gift object locally, updating the dataset according to the selection, wherein the updated dataset is processed to update the assignment recommendation, and monitoring in real-time new identifying information associated with the recipient through the updated assignment recommendation to generate new assignment recommendations for the flexible gift object, thereby making this a sales activity or behavior.
Thus, representative claim 1 recites an abstract idea.
Under Step 2A, Prong 2 of the eligibility analysis, if it is determined that the claims recite a judicial exception, it is then necessary to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of that exception. MPEP 2106.04(d). The courts have identified limitations that did not integrate a judicial exception into a practical application include limitations merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP 2106.05(f). MPEP 2106.04(d). In this case, representative claim 1 includes additional elements: a computer, a machine-readable label, data encoded in the machine-readable label, the machine-readable label, machine learning algorithm, machine learning algorithm is trained, object datastore, encoded in the machine-readable label, interface, the interface, object datastore, encoded in the machine-readable label, one or more systems, the machine-readable label, machine learning algorithm, and the machine learning algorithm.
Although reciting such additional elements, the additional elements do not integrate the abstract idea into a practical application because they merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a computer as a tool to perform the abstract idea. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. Similar to the limitations of Alice, representative claim 1 merely recites a commonplace business method (i.e., gifting a flexible gift object) being applied on a general-purpose computer using general purpose computer technology. MPEP 2106.05(f). Thus, the claimed additional elements are merely generic elements and the implementation of the elements merely amounts to no more than an instruction to apply the abstract idea using a generic computer. Since the additional elements merely include instructions to implement the abstract idea on a generic computer or merely use a generic computer as a tool to perform an abstract idea, the abstract idea has not been integrated into a practical application.
Under Step 2B of the eligibility analysis, if it is determined that the claims recite a judicial exception that is not integrated into a practical application of that exception, it is then necessary to evaluate the additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). MPEP 2106.05. In this case, as noted above, the additional elements of a computer, a machine-readable label, data encoded in the machine-readable label, the machine-readable label, machine learning algorithm, machine learning algorithm is trained, object datastore, encoded in the machine-readable label, interface, the interface, object datastore, encoded in the machine-readable label, one or more systems, the machine-readable label, machine learning algorithm, and the machine learning algorithm, recited in independent claim 1 are recited and described in a generic manner merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea.
Even when considered as an ordered combination, the additional elements of representative claim 1 do not add anything that is not already present when they considered individually. In Alice, the court considered the additional elements “as an ordered combination,” and determined that “the computer components…‘ad[d] nothing…that is not already present when the steps are considered separately’… [and] [v]iewed as a whole…[the] claims simply recite intermediated settlement as performed by a generic computer.” Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217, (2014) (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Similarly, when viewed as a whole, representative claim 1 simply conveys the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B of the Alice/Mayo test, there are no meaningful limitations in representative claim 1 that transforms the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
As such, representative claim 1 is ineligible.
Independent claims 8 and 15 are similar in nature to representative claim 1 and Step 2A, Prong 1 analysis is the same as above for representative claim 1. It is noted that in independent claim 8 includes the additional elements of one or more processors and memory storing thereon instructions that, as a result of being executed by the one or more processors, and independent claim 15 includes the additional element of a non-transitory computer-readable storage medium storing thereon executable instructions that, as a result of being executed by the one or more processors of a computer system cause the computer system to. The Applicant’s specification does not provide any discussion or description of the additional elements recited in claims 8 and 15, as being anything other than generic elements. Thus, the claimed additional elements of claims 8 and 15 are merely generic elements and the implementation of the elements merely amounts to no more than an instruction to apply the abstract idea using a generic computer. As such, the additional elements of claims 8 and 15 do not integrate the judicial exception into a practical application of the abstract idea. Additionally, the additional elements of claims 8 and 15, considered individually and in combination, do not provide an inventive concept because they merely amount to no more than an instruction to apply the abstract idea using a generic computer.
As such, claims 8 and 15 are ineligible.
Dependent claims 2-3, 5-7, & 22, 9-10, 12-14, & 23, and 16-17, 19-21, & 24, depending from claims 1, 8, and 15 respectively, do not aid in the eligibility of the independent representative claim 1 nor aid in eligibility to the independent claims 8 and 15. The claims of 2-3, 5-7, & 22, 9-10, 12-14, & 23, and 16-17, 19-21, & 24 merely act to provide further limitations of the abstract idea and are ineligible subject matter.
It is noted that the dependent claims include the additional elements of machine-readable label is a Quick Response (QR) code (claims 2, 9, & 16), scanned using a computing device (claims 5, 6, 12, 13, & 19-20), machine-readable label being scanned through a point-of-sale terminal (claims 7, 14, & 21), one or more other systems (claims 22, 23, & 24). Applicant’s specification does not provide any discussion or description of the claimed additional elements as being anything other than a generic element. The claimed additional elements, individually and in combination do not integrate into a practical application and do not provide an inventive concept because they are merely being used to apply the abstract idea using a generic computer (see MPEP 2106.05(f)). Accordingly, claims 2, 5-7, 9, 12-14, and 19-24 are directed towards an abstract idea. Additionally, the additional elements of claims of 2, 5-7, 9, 12-14, and 19-24 considered individually and in combination, do not provide an inventive concept because they merely amount to no more than an instruction to apply the abstract idea using a generic computer. It is further noted that the remaining dependent claims 3, 10, and 17 do not recite any further additional elements to consider in the analysis, and therefore would not provide additional elements that would integrate the abstract idea into a practical application and would not provide an inventive concept.
As such, dependent claims 2-3, 5-7, & 22, 9-10, 12-14, & 23, and 16-17, 19-21, & 24 are ineligible.
Response to Arguments
With respect to the rejections made under 35 USC § 101, the Applicant’s arguments filed on 09 July 2026 have been fully considered but are not considered persuasive.
In response to the Applicant’s arguments found on page 14 of the remarks stating “The Claims Are Not Directed to Merely Organizing Human Activity,” and “Applicant respectfully submits that this characterization oversimplifies the claimed invention by describing it at an impermissibly high level of abstraction while omitting the technological features that define the claimed improvement,” and “These operations are not activities that can be practically performed mentally or manually,” the Examiner respectfully disagrees. Under Step 2A, Prong One of the eligibility analysis, the claims are directed to an abstract idea. As articulated in 2106.04(a) of MPEP, the claims are evaluated to identify the specific limitations that recite the abstract idea and determine what limitations fall into one of the enumerated groupings of abstract ideas. In this case, the abstract idea of gifting a flexible gift object is recited in the claims and the abstract idea, as indicated in the Office Action above, falls into the abstract idea grouping of a certain method of organizing human activity (MPEP 2106.04(a)(2)). In the instant case, the claim limitations recite the specific steps of receiving a gift request to associate a flexible gift object with a recipient, receiving an activation request to activate the flexible gift object with the data included in the label, processing the data from the label to retrieve identifying information associated with the recipient and the gift object category, providing a set of assignment options that correspond to an entity associated with the gift object category, receiving a selection of an assignment option corresponding to a particular entity associated with the gift object, dynamically associating the data in the label with the particular entity, processing the identifying information and the gift object category to generate a set of assignment recommendations for the flexible gift object using a dataset of sample recipient profiles and sample flexible gift objects associated with the sample recipient profiles, querying an object using a unique identifier to retrieve an object record, determining from the retrieved object record whether the flexible gift object is eligible, updating a recipient display to present the set of assignment recommendations for the flexible gift object, detecting a selection of an assignment option through the recipient, wherein the selection corresponds to a particular entity associated with the gift object category, transmitting transaction processing data associated with the particular entity that includes a unique identifier corresponding to the label, and wherein the transaction processing data allows to process transactions involving the flexible gift object locally, updating the dataset according to the selection, wherein the updated dataset is processed to update the assignment recommendation, and monitoring in real-time new identifying information associated with the recipient through the updated assignment recommendation to generate new assignment recommendations for the flexible gift object. As such, the claims recite an abstract idea that falls into the grouping of a certain method of organizing human activities are related to sales activities or behaviors.
In response to the Applicant’s arguments found on pages 13-15 of the remarks stating “the claimed invention is directed to a specific computerized architecture that improves the operation of distributed transaction-processing systems rather than merely implementing a commercial gifting practice on generic computer hardware,” and “The Amendments Clarify That the Claims Are Directed to a Specific Technological Improvement,” and further stating “The Amended Claims Integrate Any Alleged Judicial Exception Into a Practical Application,” and “Even assuming, solely for purposes of argument, that the claims recite an abstract idea, the amended claims integrate any alleged judicial exception into a practical application” and “These copter operations improvement the operation of the activation platform itself and are central to the disclosed invention,” the Examiner respectfully disagrees. Under Step 2A, Prong Two of the eligibility analysis, the claims do not integrate the abstract idea into a practical application. The claims are evaluated to determine if the claims are a whole integrate the judicial exception into a practical application (MPEP 2106.04(d)). The additional elements must be evaluated to determine patent-eligible subject matter which can be determined in a number of ways. For example, the additional elements may integrate the abstract idea if applying or using the abstract idea in some other meaningful way beyond generally linking the abstract idea to a particular technological environment, or reflecting an improvement in the functioning of the computer or improving the technology or technical field (MPEP 2106.04(d)(I)). In this case, although the claim limitations did not recite insignificant post-solution activity, the claims do not integrate the abstract idea into a practical application because the claimed additional elements are still recited in a generic manner, merely applying the abstract idea with a generically recited computer and computing components. Further, the claims do not reflect an improvement to the technology itself, nor to a technical field. The MPEP (2106.05(a)) provides further guidance on how to evaluate whether claims recite an improvement in the functioning of a computer or an improvement to other technology or technical field. For example, as indicated in 2106.05(d)(1) of the MPEP “the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement,” and that “[t]he specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art.” Looking to the specification is a standard that the courts have employed when analyzing claims as it relates to improvements in technology. For example, in Enfish, the specification provided teaching that the claimed invention achieves benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements. Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). Additionally, in Core Wireless the specification noted deficiencies in prior art interfaces relating to efficient functioning of the computer. Core Wireless Licensing v. LG Elecs. Inc., 880 F.3d 1356 (Fed Cir. 2018). With respect to McRO, the claimed improvement, as confirmed by the originally filed specification, was “…allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters…’” and it was “…the incorporation of the claimed rules, not the use of the computer, that “improved [the] existing technological process” by allowing the automation of further tasks”. McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, (Fed. Cir. 2016).
In this case, Applicant’s specification provides no explanation of an improvement to the functioning of a computer or other technology. Rather, the claims focus “on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool”. Id citing Enfish at 1327, 1336. This is reflected in paragraphs [0026] and [0094] of Applicant’s specification, which describe Applicant’s claimed invention is directed toward solving problems related to providing flexible gift objects while allowing recipients to activate the gift object, assigning the flexible gift objects with specific entities from provided assignment recommendations, improving the accuracy of the assignment recommendations generated. Although the claims include computer technology such as a computer, a machine-readable label, data encoded in the machine-readable label, the machine-readable label, machine learning algorithm, machine learning algorithm is trained, object datastore, encoded in the machine-readable label, interface, the interface, object datastore, encoded in the machine-readable label, one or more systems, the machine-readable label, machine learning algorithm, and the machine learning algorithm, such elements are merely peripherally incorporated in order to implement the abstract idea. This is unlike the improvements recognized by the courts in cases such as Enfish, Core Wireless, and McRO. Unlike precedential cases, neither the specification nor the claims of the instant invention identify such a specific improvement to computer capabilities, such as improvements to the platform itself nor improvements to computer. The instant claims are not directed to improving the existing technological process but are directed to improving the commercial task of gifting a flexible gift object. The claimed process, while arguably resulting in improvements to gifting a flexible gift object, is not providing any improvement to another technology or technical field as the claimed process is not, for example, improving the processor and computer components that operate the system. Rather, the claimed process is utilizing different data while still employing the same processor and computer components used in conventional systems to improve gifting flexible gift objects, e.g. commercial process. As such, the claims do not recite specific technological improvements and do not integrate the abstract idea into a practical application.
In response to the Applicant’s arguments found on pages 15-16 of the remarks stating “The Claimed Combination Provides Significantly More Than Any Alleged Abstract Idea,” and “provide an inventive concept,” and further “The claims no longer merely recite receiving information and making recommendations, they require a coordinated sequence of computer operations,” and “This ordered combination produces a technological improvement that was unavailable using conventional merchants-specific gift cards,” and “the amended claims recites significantly more than the alleged abstract idea and instead define a particular technological solution that improves the operation of computerized activation platforms and distributed transaction-processing systems,” the Examiner respectfully disagrees. Under Step 2B of the eligibility analysis, the claims do not amount to significantly more than the abstract idea and do not provide an inventive concept. The additional elements are evaluated to determine if they amount to significantly more and if they amount to an inventive concept, considering the additional elements individually and in combination, and considering the claim as a whole (MPEP 2106.05(I)). An inventive concept may be found when the additional elements are recited in a “non-conventional and non-generic arrangement of known, conventional piece”, provide “improvements to the functioning of the computer” or to the technical field, or recite other “meaningful limitations that go beyond generally linking the use” of the abstract idea (MPEP 2106.05(I)(A)). In this case, the claims considered as a whole, and considering the additional elements individually and in combination, are recited in a generic and conventional manner. The claimed additional elements are merely being used to apply the abstract idea with a generically or conventionally recited computer and computing components. Further, as stated above, the claimed additional elements do not reflect an improvement to the functioning of the computer nor do they reflect an improvement to the technical field, rather the claims provide an improvement to the abstract idea itself. Therefore, the claims do not amount to significantly more than the abstract idea and do not provide an inventive under Step 2B.
In response to the Applicant’s arguments found on page 16 of the remarks stating “The Dependent Claims Further Reinforce the Technological Nature of the Invention,” and “Applicants have additionally amended claims 22-24 to recite computerized assignment of a flexible gift object through generation and transmission of new transaction-processing data to different transaction-processing systems,” the Examiner respectfully disagrees. The dependent claims are not eligible under the 101 analysis. Specifically, claims 22-24, depending from claims 1, 8, and 15, are not eligible, as the dependent claims merely provide further limitations of the abstract idea. Under Step 2A, Prong Two, claims 22-24, although reciting additional elements of one or more other systems, the additional elements considered in combination, are still recited in a generic manner and are also being used to apply the abstract idea with generic computing components. Further, under Step 2B, considering the claims as a whole, and considering the additional elements individually and with other claimed features, they do not amount to significantly more than the abstract idea itself and do not provide an inventive concept. As stated above, the additional elements are recited generically or in a conventional manner, and do not reflect an improvement to the functioning of the computer, and thus the Examiner maintains the 101 rejection.
Conclusion
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/ASHLEY D PRESTON/Primary Examiner, Art Unit 3688
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