DETAILED ACTION
The following is a non-final, first office action in response to the application filed October 15, 2024. Claims 1-21 are currently pending and have been examined.
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 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 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Step 1: Statutory Category
(MPEP § 2106)
Claims 1-21 are directed towards a method and a system. The claims are directed to a statutory category: a process and a machine as defined under 35 U.S.C. § 101.
Regarding Claim 1:
Step 2A, Prong One: Judicial Exception – Abstract Idea
(MPEP § 2106.04)
The claim recites a judicial exception.
The limitations:
"a user interface... includes a greeting card option associated with customizing the greeting card"
"printer prints the greeting card with the gift card located thereon based on a user selection associated with the greeting card option"
collectively describe the concept of customizing a greeting card and selecting a gift card to be included with the greeting card based on user preferences, which is a method of organizing human activity/commercial interaction. Alternatively, the claim can be characterized as managing the creation and sale of a greeting card and gift card combination, a fundamental commercial practice.
Thus, the claim recites an abstract idea.
Step 2A, Prong Two: Integration into a Practical Application
(MPEP § 2106.04(d))
The claim does not integrate the abstract idea into a practical application.
The additional elements include:
computing device
display
user interface
printer
These elements merely implement the abstract idea using generic computer components performing their ordinary functions of displaying options, receiving user selections, and printing output.
The claim does not:
improve printer technology;
improve computer functionality;
provide a particular machine implementation beyond generic computer hardware;
effect a transformation of an article to a different state beyond routine printing of information.
Printing the greeting card with the gift card thereon merely constitutes outputting the result of the abstract idea and does not impose a meaningful limit on the judicial exception.
Accordingly, the claim is directed to the abstract idea itself and does not integrate the exception into a practical application.
Step 2B: Inventive Concept
(MPEP § 2106.05)
The claim does not include an inventive concept.
The additional elements of a computing device, display, user interface, and printer are generic computer components performing well-understood, routine, and conventional activities, such as:
displaying information,
receiving user input,
processing user selections, and
printing a document.
When considered individually and as an ordered combination, these elements merely automate the abstract idea of creating a customized greeting card and gift card combination and do not amount to significantly more than the judicial exception.
Therefore, the claim is not directed to patent-eligible subject matter under 35 U.S.C. § 101.
Regarding Claim 11
Independent claim 11 is parallel in scope to claim 1 and ineligible for similar reasons.
Regarding Claims 2-10 and 12-21
Dependent claims 2-10 and 12-21 merely set forth further embellishments to the abstract idea, and therefore do not confer eligibility on the claimed invention and are ineligible for similar reasons to claim 1.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 21 is rejected under 35 U.S.C. 112(d) because the claim contains a reference to another claim but fails to further limit the subject matter of the claim referenced.
Specifically, claim 21 is directed to a method, while claim 11 is directed to a system. A dependent claim must further limit the subject matter of the claim from which it depends. However, a method claim cannot properly depend from a system claim because the method claim does not include all of the limitations of the system claim and therefore does not further limit the subject matter of the referenced claim.
Accordingly, claim 21 is an improper dependent claim. For examination purposes, claim 21 is interpreted as including all of the limitations of claim 11.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 6-8, 11-13, 16-19, and 21 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Curtis (US 2025/0272672 A1).
Regarding claims 1, 11, and 21, Curtis discloses a greeting card kiosk system for a user to customize a greeting card with a gift card printed thereon, comprising:
a computing device; a display responsive to the computing device; a user interface controlled by the computing device and displayed on the display, wherein the user interface includes a greeting card option associated with customizing the greeting card; and (Curtis: paragraph [0037] - The present invention in various embodiments addresses one or more of the above objectives in the following manner. The present invention provides a kiosk gift card system for purchasing gift cards at a kiosk, which may be a physical kiosk accessed in person or may be a virtual kiosk accessed online. The physical system includes a gift card distribution kiosk located at a retail establishment, while a virtual system includes an online virtual kiosk interface, that provides a user with access to a multitude of different forms of gift cards that may be purchased and printed onto a customizable card with a personalized message.).
Regarding claims 2 and 12, Curtis discloses all of the limitations as noted above in claims 1 and 11. Curtis further discloses a payment processor module responsive to the computing device, wherein the payment processor module processes an electronic payment from the user interacting with the user interface (Curtis: paragraph [0070] - the GMS (0102) may then instruct a printer to print the gift card and dispense the gift card via the gift card dispenser (0111) at a physical kiosk after an amount has been paid with a card reader and a payment module).
Regarding claims 3 and 13, Curtis discloses all of the limitations as noted above in claims 1 and 11. Curtis further discloses wherein the display processes tactile input from the user (Curtis: paragraph [0067] - The kiosk processor interface (0105) may be a touch user interface that is based upon the sense of touch or a graphical user interface (GUI) that may be navigated with a pointing device such as a mouse).
Regarding claims 6 and 16, Curtis discloses all of the limitations as noted above in claims 1 and 11. Curtis further discloses wherein the user interface includes an option for generating a digital gift card to dispense with the greeting card (Curtis: paragraph [0101] - As a result, the issuance of a closed or open loop gift card, or store credit in the form of a store gift card, could be issued in a physical card or as a digital gift card or e-gift card).
Regarding claims 7 and 17, Curtis discloses all of the limitations as noted above in claims 6 and 16. Curtis further discloses send a digital version of the gift card electronically to an electronic destination input by the user (Curtis: paragraph [0107] - or transmit the gift card as a digital/virtual gift card electronically to the user).
Regarding claims 8 and 18, Curtis discloses all of the limitations as noted above in claims 1 and 11. Curtis further discloses wherein the user interface includes an option for at least one of generating and loading a physical gift card to dispense with the greeting card (Curtis: paragraph [0070] - the GMS (0102) may then instruct a printer to print the gift card and dispense the gift card via the gift card dispenser (0111) at a physical kiosk after an amount has been paid with a card reader and a payment module).
Regarding claim 16, Curtis discloses all of the limitations as noted above in claim 11. Curtis further discloses wherein the user interface includes an option for generating a physical gift card to dispense with the greeting card gift card combination (Curtis: paragraph [0070] - the GMS (0102) may then instruct a printer to print the gift card and dispense the gift card via the gift card dispenser (0111) at a physical kiosk after an amount has been paid with a card reader and a payment module).
Claim Rejections - 35 USC § 103
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 4, 5, 9, 10, 14, 15, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Curtis (US 2025/0272672 A1) in view of Sneed et al (US 8,351,190 B1).
Regarding claims 4 and 14, Curtis discloses all of the limitations as noted above in claims 1 and 11. Curtis does not expressly disclose a shell internally housing the computing device, the printer, and an envelope dispenser, and wherein the display is positioned on a front side of the shell. Sneed discloses:
a shell internally housing the computing device, the printer, and an envelope dispenser, and wherein the display is positioned on a front side of the shell (Sneed: Figure 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method and apparatus of Curtis to have included a shell internally housing the computing device, the printer, and an envelope dispenser, and wherein the display is positioned on a front side of the shell, as taught by Sneed because it would allow the user to fully create a greeting card (Sneed: column 1).
Regarding claim 5, Curtis and Sneed teach or suggest all the limitations of claim 4 as noted above. Sneed further discloses wherein the shell includes a slot positioned to dispense the greeting card and an envelope (Sneed: column 3 lines 40-42 The storages 46 provide storage and product dispensing).
Regarding claim 9 and 20, Curtis discloses all of the limitations as noted above in claims 8 and 19. Curtis does not expressly disclose dispense the physical gift card in tandem with the greeting card and the envelope. Sneed discloses:
dispense the physical gift card in tandem with the greeting card and the envelope (Sneed: column 3 lines 40-42 - The storages 46 provide storage and product dispensing).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method and apparatus of Curtis to have included dispense the physical gift card in tandem with the greeting card and the envelope, as taught by Sneed because it would allow the user to fully create a greeting card (Sneed: column 1).
Regarding claim 10, Curtis discloses all of the limitations as noted above in claim 1. Curtis does not expressly disclose wherein the printer comprises multiple paper trays adapted to dispense multiple types of card stock according to the user selected greeting card option. Sneed discloses:
wherein the printer comprises multiple paper trays adapted to dispense multiple types of card stock according to the user selected greeting card option (Sneed: column 2 lines 13-18 - the storage provided within the apparatus front provides for stocking the apparatus with needed card, paper, and envelope stock for a customer's needs, with storage sufficiently ample and separate to negate the need for constant apparatus attention by the supplier).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method and apparatus of Curtis to have included wherein the printer comprises multiple paper trays adapted to dispense multiple types of card stock according to the user selected greeting card option, as taught by Sneed because it would allow the user to fully create a greeting card (Sneed: column 1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
PTO-892 Reference U discloses Commodified family: A textual analysis of greeting card sentiments.
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KATHLEEN GAGE PALAVECINO
Primary Examiner
Art Unit 3688
/KATHLEEN PALAVECINO/Primary Examiner, Art Unit 3688
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