DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first inventor provisions.
Response to Arguments
Applicant's arguments filed 3/13/2026 have been fully considered but they are not persuasive.
Regarding the 35 UCS 102 and 103 arguments.
Applicant’s representative argues that one of ordinary skill in the art would understand that the
claimed system’s ability for “creating the prepaid account” is much mor different form the applied reference, Briscoe’s disclosure of simply assigning a preexisting account to a customer pursuant to a customer request.
Applicant’s representative further states that Briscoe only discloses that an already existing
account is activated -not that a new account is created for the customer based on the customer request.
In response, what should be at issue is to determine whether Briscoe teaches or inherently
discloses all the claimed invention.
Briscoe teaches a system and method for allowing a user to create a financial card to be used at selected merchants. See the abstract of Briscoe. Accordingly, Briscoe states:
A client (not shown in FIG. 1) interfaces with the card creator 14 to navigate to a merchant selector page 15 to select one or multiple merchants that would accept the card 12 and become redemption options for use of the card 12. The card 12 would be assigned a unique account number which would be associated with only the selected merchants. The merchant selector page 15 then transmits the merchant selections and the associated account number to a merchant management system 16 which maintains the appropriate profile 17 and configuration data to establish and manage a commission and a merchant filter 18 associated with the account number (see, for example, U.S. Pat. Nos. 5,689,100 and 5,956,695 regarding merchant filtering). Alternatively, the merchant management system 16 may assign the account number and provide it to the card creator 14. Meanwhile, the card creator produces the card 12 and provides it to the client.
Accordingly, Briscoe allows a user to firstly select a merchant for the creation of prepaid card to be used at a particular merchant’s store or location. Before creating the account, a user selects the merchant, the card would be assigned a unique account number (implying the account was not previously created) which would be associated with the selected merchant or merchants. (See also column 4, line 63 to column 5, line 7 of Briscoe) Data is sent to the merchant which then transmits the information to a card creator.
Briscoe further teaches that the card may be a pre-loaded card or funds may be added to the card before or after creation of the card. See column 6, lines 23-40 of Briscoe.
Briscoe further teaches using an encoder to print data, logo and card information onto the card. See column 5, line 59 to column 6, line 3 of Briscoe.
Accordingly, the applicant’s arguments are not persuasive.
Regarding the 35 UCS 101 arguments.
Applicant’s representative argues that the claims do not recite an abstract idea. Applicant’s
representative particularly states: The Office Action's summary disregards the bolded limitations which are the additional elements in analyzing whether the claims recite an abstract idea.
In response, in evaluating whether the claims recite an abstract idea, the Examiner must remove the additional elements to determine if the claimed limitation recite an abstract idea (as noted below). In so doing, it is clearly noted that the claims recite:
“allowing a user to load a prepaid account with value or funds. The loading of a prepaid account with funds involves a fundamental business practice, and thus, the claims include an abstract idea” which are drawn to an abstract idea.
Each of the independent claims uses generic computer technology (such as a generic processor) for identifying a request for a prepaid account as noted in independent claims 1 and 17, and a processor with a memory as recited in independent claim 10.
None of the steps, functions and/or elements recited in the claims provide, and nowhere in the applicant’s shows any description or explanation as to how the claimed processor or memory to provide: (1) a “solution . . . necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks,” as explained by the Federal Circuit in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014); (2) “a specific improvement to the way computers operate,” as explained in Enfish, 822 F.3d at 1336; or (3) an “unconventional technological solution ... to a technological problem” that “improve[s] the performance of the system itself,” as explained in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1299-1300 (Fed. Cir. 2016).
Accordingly, claims 1-20 are directed to an abstract idea.
Applicant’s representative then argues that the claims integrate the alleged abstract idea into a practical application. Applicant’s representative states “the claims recite a processor as understood to be a manufacturer, a product claim to the microprocessor or a system comprising the microprocessor satisfies Step 1 regardless of whether the claim falls within any other statutory category… and the claims recite a particular machine.
In response, the claims fail to recite technological implementation details of how the claimed functions are being realized. Claims of this nature are almost always found to be ineligible for patenting under Section 101." Beteiro, LLC V. DraftKings Inc., 104 F.4th 1350, 1356 (Fed. Cir. 2024). The specification does not even provide details of a specific architecture or means or structures or specific computer executed modules for performing the claimed functions.
The claims "do[es] not improve the functioning of the processor with a memory or make it operate more efficiently, or solve any technological problem." Trading Techs. Int'l, Inc. V. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019). "Nothing in the claim[s], understood in light of the specification, calls for anything but preexisting computers and displays, programmed using techniques known to skilled artisans, to present the new arrangement of information." Brumfield V. IBG LLC, 97 F Ath 854, 868 (Fed. Cir. 2024). The claims also do not show a technical improvement in the architecture of a processor using a computing logic of the processor and memory. The recited functions involve generic or conventional functions and setup of a basic processor and memory.
The mere recitation of a generic processor and memory device performing their expected functions cannot transform a patent-ineligible abstract idea into a patent-eligible invention as stated in Alice Corp., 134S.Ct. at 2358; DDR Holdings, LLC V. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cri. 2014) ("And after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible. (citation omitted)). Thus, if a patent's recitation of a computer amounts to a mere instruction to 'implement' an abstract idea 'on a computer', that addition cannot impart patent eligibility." Alice Corp., 134 S. Ct. at 2358 (internal citation omitted). The claimed processor and memory are merely a field of use that attempts to limit the abstract idea to a particular technological environment.
Each of the independent claims uses generic computer technology for receiving a selection of a prepaid account and loading the prepaid account with value wherein information associated with the prepaid account is encoded onto a physical card, as such do not recite an improvement to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F .3 d 1299, 1314-1315 (Fed. Cir. 2016) ( finding claims not abstract because they "focused on a specific asserted improvement in computer animation").
Accordingly, the additional elements (such as a generic processor with a memory) do not improve (1) the processor or memory, or (2) another technology or technical field. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)). Rather, the above-noted additional elements merely (1) apply the abstract idea on a computer or processor; (2) include instructions to implement the abstract idea on a computer (processor with a memory) or system) ; or (3) use the computer or processor as a tool to perform the abstract idea. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05. Therefore, the recited additional elements do not integrate the abstract idea into a practical application when reading the claims.
The 35 USC 101 rejection remains outstanding as stated in the prior Office action.
The prior Office action is repeated 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 1-20 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.
Subject Matter Eligibility Standard
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.
Specifically, claims 1 and 17 are directed to a method. Claim 10 is directed to a system. Each of the claims falls under one of the four statutory classes of invention. 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).
Claim 1 recites :
A method comprising:
identifying, via processor, a request for a prepaid account;
receiving a selection of a merchant for the prepaid account;
creating the prepaid account based on receiving the selection of the merchant:
loading the prepaid account with value, wherein information associated with the prepaid account is encoded onto a physical card, and wherein merchant information is printed on the physical card according to an authorization from the merchant.
Claim 2 recites: wherein the prepaid account is branded by a payment network association.
Claim 3 recites: wherein the prepaid account is an open loop account.
Claim 4 recites: wherein the prepaid account is a closed loop account.
Claim 5 recites: wherein the merchant pays a commission to a prepaid account issuer, a program manager, or a combination thereof based on a percentage of gross purchases made by the prepaid account at the merchant.
Claim 6 recites: wherein the merchant comprises a local merchant.
Claim 7 recites: wherein the merchant comprises a national merchant.
Claim 8 recites: wherein the prepaid account value loaded is based on a customer request.
Claim 9 recites: wherein the merchant pays a fee to a prepaid account issuer, a program manager, or combinations thereof for printing the merchant information on the physical card.
Claim 10 recites: A system comprising:
a processor; and
a memory storing instructions which, when executed by the processor, cause the
processor to perform a method comprising:
identifying a request for a prepaid account;
receiving a selection of a merchant for the prepaid account, and based on receiving the selection of the merchant:
creating the prepaid account; and
loading the prepaid account with value, wherein information associated with the prepaid account is encoded onto a physical card, and wherein merchant information is printed on the physical card according to an authorization from the merchant.
Claim 11 recites: wherein the prepaid account is branded by a payment network association.
Claim 12 recites: wherein the prepaid account is an open loop account.
Claim 13 recites: wherein the merchant pays a commission to a prepaid account issuer, a program manager, or a combination thereof based on a percentage of gross purchases made by the prepaid account at the merchant.
Claim 14 recites: wherein the merchant comprises a local merchant.
Claim 15 recites: wherein the merchant comprises a national merchant.
Claim 16 recites: wherein the merchant pays a fee to a prepaid account issuer, a program manager, or combinations thereof for printing the merchant information on the physical card.
Claim 17 recites:
A computer-readable medium having stored therein instructions which, when executed by a processor, cause the processor to perform a method comprising:
identifying a request for a prepaid account;
receiving a selection of a merchant for the prepaid account, and based on receiving the
selection of the merchant:
creating the prepaid account; and
loading the prepaid account with value, wherein information associated with the prepaid account is encoded onto a physical card, and wherein merchant information is printed on the physical card according to an authorization from the merchant.
Claim 18 recites: wherein the prepaid account is branded by a payment network association.
Claim 19 recites: wherein the prepaid account is an open loop account.
Claim 20 recites: wherein the merchant pays a commission to a prepaid account issuer, a program manager, or a combination thereof based on a percentage of gross purchases made by the prepaid account at the merchant.
The claims in general are directed to allowing a user to load a prepaid account with value or funds. The loading of a prepaid account with funds involves a fundamental business practice, and thus, the claims include an abstract idea.
Applicant is reminded that a system, apparatus or method for performing business, however, novel, useful, or commercially successful, is not patentable apart from the means for making the system practically useful or carrying it out.
Here, the claimed concept falls into the category of functions of organizing human activities such as managing commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations) because it amounts to the functions of performing a financial transaction.
The BRI of the claimed limitations describe functions of allowing a user to load a prepaid account with value or funds.
Step 2A, Prong Two: The judicial exception is not integrated into a practical application, In particular, the clams recite the above noted bolded limitations understood to be additional limitations.
These limitations performing steps or functions of creating a prepaid account and loading the account with values or funds. Creating the account and load the account with a value amount to instructions to implement an abstract idea on a computer or merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(1)), also see applicant's specification for guiding interpretation of these claim features, describing implementation with generic commercially available devices or any machine capable of executing a set of instructions, similarly describing usage of general and special purpose computer, including generic commercially available devices.
The claimed “processor” of claims 1, 10 and 17 and the claimed “memory” of claim 10 are similarly understood in light of applicant's specification as mere usage of any arrangement of computer software or hardware intermediate components potentially using networks to communicate with instructions are properly understood to be mere instructions to apply the abstraction using a computer or device or computer system.
Performing steps by a generic machine, computing device or one or more processors with memories merely limit the abstraction to a computer field by execution by generic computers. See MPEP 2106.05 (h).
As noted in MPEP 2106.04(d), limitations which amount to instructions to implement an abstract idea on a computer or merely using a computer as a tool, limitations which amount to
insignificant extra-solution activity, and limitations which amount to generally linking to a particular technological environment do not integrate a practical exception into a practical application.
Creating and loading funds which are data are similar to Alappat, which as noted in MPEP 2106. 05(b)(1) is superseded, and the correct analysis is to look whether the added elements integrate the exception into a practical application or provide significantly more than the judicial exception. The claims in the instant application are performed by one or more processors or computing device which create an account and load the account with funds.
Consideration of these steps as a combination does not change the analysis as they do not add anything compared to when the steps are considered separately. The claims recite a particular sequence of functions of facilitating a transaction.
Performance of these steps or functions technologically may present a meaningful limit to the scope of the claim does not reasonably integrate the abstraction into a practical application.
Step 2B: The elements discussed above with respect to the practical application in Step 2A, prong 2 are equally applicable to consideration of whether the claims amount to significantly more. Accordingly, the clams fail to recite additional elements which, when considered individually and in combination, amount to significantly more. Reconsideration of these elements identified as insignificant extra-solution activity as part of Step 2B does not change the analysis.
The function of receiving data has been recognized by the courts as routine, and conventional (See MPEP 2106.05(d)UD, citing Symantec, 835 F.3d at 1321, 120 OSPQ2d at 1362 (Utilizing an intermediary computer to forward information); TL Communications LEC v. AV Auto. LLC, 823 F.3d 607, G10, L18 USPO2d 1744, 1748 (ed. Cir. 2016) Casing a telephone for image transmission); OFF Techs., fac. v. Amazon.com, fic., 788 B.Ad 1359, 1363, Lis USPO2d 1090, 1093 (ed, Cir. 2015) (sending messages over a network}, buySAFE, fic. v. Google, Inc.. 768 F.3d 1350, 1355, 112 USPQ2d 1093, 1996 (Pod, Cyr. 2014) (computer receives and sends information over a network).
Positively reciting a “processor”, and a “memory” does not change the analysis as these aspects are properly considered as additional elements which amount to instructions to apply it with a computer.
These claimed elements also as found in the dependent claims are also recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using a generic component.
In processing the claims, it is noted that the recitation of these additional elements do not impact the analysis of the claims because these elements in combination are noted only to be a general purpose computer for performing basic or routine computer functions. These claimed
elements are noted to a be a generic computer for receiving data and performing routine and conventional functions. These additional elements do not overcome the analysis as these elements are merely considered as additional elements which amount to instructions to be applied to the generic computer.
The judicial exception is not integrated into a practical application. In particular, the claimed “processors” and “memory” are recited at a high level of generality such they amount to no more than mere instructions to apply the exception using generic components. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Accordingly, claims 1, 10 and 17 are is directed to an abstract idea.
The dependent claim(s) when analyzed and each taken as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent.
The changes made to 35 U.S.C. 102(e) by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 do not apply when the reference is a U.S. patent resulting directly or indirectly from an international application filed before November 29, 2000. Therefore, the prior art date of the reference is determined under 35 U.S.C. 102(e) prior to the amendment by the AIPA (pre-AIPA 35 U.S.C. 102(e)).
Claim(s) 1-2, 5, 6, 7, 8, 10-11, 13, 14, 15, 17, 18 and 20 is/are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Briscoe (US Patent No. 8,464,938).
As per claims 1, 10 and 17, Briscoe discloses a system, method and computer program product for facilitating the sales/purchase of a personalized merchant prepaid card. See the abstract of Briscoe. The system comprises a user using a smart phone or personal computer to access a remote server or database having a plurality of merchant prepaid cards available for sale. The prepaid cards can be searched or presented for selection by the user. See the abstract of Briscoe. Particularly, Briscoe discloses:
identifying, via a processor, a request for a prepaid account (column 3, lines 50-66) of Briscoe;
receiving a selection of a merchant for the prepaid account, and based on receiving the selection of the merchant (column 5, lines 8-58 of Briscoe);
As per the claimed limitations of :
“creating the prepaid account; and
loading the prepaid account with value, wherein information associated with the prepaid account is encoded onto a physical card, and wherein merchant information is printed on the physical card according to an authorization from the merchant”, see column 6, lines 16-40 and 7, lines 19-31 of Briscoe.
Briscoe further teaches changing a wireless giftcard to a physical card (see column 5, lines 27- 58).
The Examiner notes that in the system of Briscoe, a customer may opt to incorporate or brand the logo of VISA or MasterCard onto their customer selected merchant card thus, altering the card to an open loop card which may be accepted by a variety of non-selected merchants.
As per claims 2, 11 and 18, Briscoe discloses the loop prepaid gift account is branded by a payment network association as done by most prepaid gift card issuers. See column 7, lines 19-32 of Briscoe.
As per claims 5, 13 and 20, Briscoe discloses the merchant pays a commission to a prepaid account issuer, a program manager or a combination thereof based on a percentage of gross purchases made by the prepaid account at the merchant. See column 3, lines 57-66 of Briscoe.
As per claims 6 and 14, Briscoe discloses the merchant comprises a local merchant. See column 6, line 63 to column 7, line 60 of Briscoe.
As per claims 7 and 15, Briscoe discloses the menu comprises a list of merchants being national merchants. See column 6, line 63 to column 7, line 60 of Briscoe.
As per claim 8, Briscoe discloses the amount of money is based on a customer request. See column 8, line 65 to column 9, line 21 of Briscoe.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 3, 4, 12 and 19 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable
over Briscoe (US Patent No. 8,464,938) in view of Vaccaro et al (US Pub. No. US-20120031545-A1).
As per claims 3, 4, 12 and 19, the teachings of Briscoe are discussed above. Briscoe does not specifically sate the prepaid account is an open loop or closed loop.
Providing a selection of an open loop or close loop card selection system would not alter significantly the programming or the structure of the system, method and/or computer program product of Briscoe. Accordingly, such a provision would have been obvious to one of ordinary skill in the art at the time the invention in order to provide a more attractive system providing a customer the option of selection one or both of an open loop card or close loop card system.
Alternatively, one of ordinary skill in the art would have turned to Vaccaro et al for this teaching. Vaccaro et al discloses a system, method and computer program product for allowing a user to customize a prepaid card to be used in an open loop or closed loop payment system. See paragraphs [0052], [0055] , [0056] and [0126] of Vaccaro et al.
It would have been obvious to one or ordinary skill in the art at the effective filing date of the invention to include this feature as taught by Vaccaro et al into the system, method and computer program product of Briscoe in order to allow a more versatile and attractive system.
Claims 9 and 16 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Briscoe
(US Patent No. 8,464,938).
As per claims 9 and 16, the teachings of Briscoe are discussed above. Briscoe does not explicitly state “wherein the merchant pays a fee to a prepaid account issuer, a program manager, or combinations thereof for printing the merchant information on the physical card”.
As per this feature, in conducting a business transaction, a fee or charge is usually required or paid for a given service. It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to add a feature of “the merchant pays a fee to a prepaid account issuer, a program manager, or combination thereof for printing the merchant information on the physical card” in the system and method of Briscoe because the merchant is accruing customers conducting business transactions with that merchant. Administering a fee to the merchant would have been for at least the maintenance of the overall system. .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970);and, In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 remain rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over respective claims 1-23 of U.S. Patent No. 11,715,152. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-20 of the instant application are directed to a similar subject matter contained in claims 1-23 of the '152 patent. The only difference between the instant application and the '152 patent is merely a labeling difference. It is noted that all the features of claims 1-20 are contained in respective claims 1-23 of the '152 patent.
Claims 1-20 remain rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over respective claims 1-24 of U.S. Patent No. 10,706,464. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-20 of the instant application are directed to a similar subject matter contained in claims 1-24 of the '464 patent. The only difference between the instant application and the '464 patent is merely a labeling difference. It is noted that all the features of claims 1-20 are contained in respective claims 1-24 of the '464 patent.
Claims 1-20 remain rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over respective claims 1-23 of U.S. Patent No. 12,169,865. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-20 of the instant application are directed to a similar subject matter contained in claims 1-23 of the '865 patent. The only difference between the instant application and the '865 patent is merely a labeling difference. It is noted that all the features of claims 1-20 are contained in respective claims 1-23 of the '865 patent.
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.
Conclusion
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/Fp/
/FRANTZY POINVIL/Primary Examiner, Art Unit 3693
March 30, 2026
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