DETAILED ACTION
The present application is being examined under the first inventor to file provisions of the AIA . 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.
This Office Action is in response Applicant communication filed on 12/19/2024.
Claims
Claims 1-20 have been presented and are currently pending in the application.
Information Disclosure Statements
The Information Disclosure Statements (IDS) that were filed on 2/13/2025 and 6/9/2025 have been considered.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-19 are directed to a method and claim 20 is directed to a system. Therefore, these claims fall within the four statutory categories of invention.
Claim 1 recites personalizing the appearance and usage of a transaction card. Specifically, the claim recites “receiving a first input…, the first input indicative of a first selection associated with an appearance of a card; receiving a second input…, the second input indicative of a second selection associated with a usage of the card; personalizing the appearance of the card based on the first selection; personalizing the usage of the card based on the second selection; and providing the card with the appearance, wherein the card is usable to facilitate a transaction according to the usage”, which is grouped within the “Mental Processes” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test because the claims involve personalizing the appearance and usage of a transaction card which falls under the category of concepts performed in the human mind. Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; MPEP § 2106.04(a)). Claim 5 is directed to a second method that performs similar steps as that of claim 1 and claim 20 is directed to a system that performs similar functions as that of claim 1. Therefore Claims 5 and 20 are also directed to the abstract idea of personalizing the appearance and usage of a transaction card.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test, the additional element(s) of claims 1, 5, and 20, such as the use of the application on a device, one or more processors, one or more memory units, and user interface, merely use(s) a computer as a tool to perform an abstract idea. Specifically, the application on a device, one or more processors, one or more memory units, and user interface perform(s) the steps or functions of personalizing the appearance and usage of a transaction card. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP § 2106.05(a)), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP § 2106.05(b)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP § 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
Claims 1, 5, and 20 does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP § 2106.05), the additional element(s) of using a application on a device, one or more processors, one or more memory units, and user interface to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of personalizing the appearance and usage of a transaction card. As discussed above, taking the claim elements separately, the application on a device, one or more processors, one or more memory units, and user interface perform(s) the steps or functions of the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of personalizing the appearance and usage of a transaction card. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
The dependent claims 2-4 and 6-19 further describe the abstract idea.
Claims 2 and 6 describe the card/transaction medium.
Claims 3 and 7 describe the appearance of the card/transaction medium.
Claims 4 and 9 describes the usage of the card/transaction medium.
Claim 8 describes the appearance of a virtual transaction medium.
Claims 10 and 11 describe the usage of the transaction medium.
Claims 12 and 13 describes the transaction medium.
Claim 14 recites the abstract idea of providing the transaction medium by sending the transaction medium.
Claim 15 recites the abstract idea of adding a transaction dataset associated with the transaction medium to an application that includes shortcuts to transaction datasets. The use of the transaction dataset and application is generally linking the abstract idea to the particular technological environment of digital wallets.
Claim 16 describes the user interface as being part of the application. The use of a software application is merely using a computer as a tool to perform the abstract idea.
Claim 17 recites the abstract idea of facilitating a transaction using the transaction dataset. The use of the application is merely using a computer as a tool to perform the abstract idea.
Claims 18 and 19 describe the abstract idea of a user performing the card personalization for themselves and the user performing the card personalization for another user.
The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Rejections under 35 § U.S.C. 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 1-14, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as disclosed by US 20110178924 A1 to Briscoe.
Per claim 1, Briscoe discloses:
receiving a first input within an application on a device, the first input indicative of a first selection associated with an appearance of a card (e.g. The client interface 110 receives design data from the client 102 indicating a selected card background from the displayed card backgrounds. The client interface 110 receives additional design data from the client for customizing the appearance of the selected background of the card. For example, the client 102 can drag the background to a particular position on the card and adjust the scale of the background with respect to the card) (Section [0050]-[0053]);
receiving a second input within the application, the second input indicative of a second selection associated with a usage of the card (e.g. Each of the participating merchants is associated with a category based on the products (e.g., goods or services) sold by the merchant. In the example illustrated by FIG. 5B, Coach.RTM., Dillard's.RTM., Eddie Bauer.RTM., Gap.RTM., Lands' End.RTM., Macys'.RTM., Marshalls.RTM., Sephora.RTM., and Talbots.RTM. are associated with the "Apparel/Accessories" category because they sell apparel and/or accessories. In FIG. 5C, Gap.RTM. is selected as a merchant) (Section [0047]-[0049]);
personalizing the appearance of the card based on the first selection (e.g. Based on the design data received by the client interface 110, the client interface 110 displays a preview of the card according to the selected design data and allows the client 102 to change the selections until the client 102 indicates that the selections are final (e.g., requests the card is printed or transmitted)) (Section [0050]-[0053]).
personalizing the usage of the card based on the second selection (e.g. The client 102 may select between one and six merchants (or more) for a particular card from the various categories. The selected merchants are the exclusive merchants with whom a transaction using the card will be authorized) (Section [0048]-[0050]);
providing the card with the appearance, wherein the card is usable to facilitate a transaction according to the usage (e.g. responsive to the client interface 110 receiving an indication that the client 102 has completed the personalized message customization, the client interface 110 prompts the client 102 to finalize the creation of the card by the selecting that the card be printed (or, in the case of a virtual card, selecting that the card by transmitted)) (Section [0048]-[0050] and [0054]).
Per claims 5 and 20, Briscoe discloses:
receiving at least one input through a user interface, the at least one input indicative of a first selection associated with an appearance of a transaction medium, the at least one input indicative of a second selection associated with a usage of the transaction medium (e.g. In particular, the exemplary method illustrates a client's interaction with the client interface 110 to specify account parameters (e.g., merchants and amount) for the account represented by the card based on account parameters stored in an account parameters database 124 and design data (e.g., card background, client logo, personalized message) for the customizing the graphical material which is part of the card based on design data stored in a design database 108) (Section [0047]-[0053]);
personalizing the appearance of the transaction medium based on the first selection (e.g. Based on the design data received by the client interface 110, the client interface 110 displays a preview of the card according to the selected design data and allows the client 102 to change the selections until the client 102 indicates that the selections are final (e.g., requests the card is printed or transmitted)) (Section [0050]-[0053]).
personalizing the usage of the transaction medium based on the second selection (e.g. The client 102 may select between one and six merchants (or more) for a particular card from the various categories. The selected merchants are the exclusive merchants with whom a transaction using the card will be authorized) (Section [0048]-[0050]);
providing the transaction medium, wherein the transaction medium is personalized with the appearance, and wherein the transaction medium is usable to facilitate a transaction according to the usage (e.g. responsive to the client interface 110 receiving an indication that the client 102 has completed the personalized message customization, the client interface 110 prompts the client 102 to finalize the creation of the card by the selecting that the card be printed (or, in the case of a virtual card, selecting that the card by transmitted)) (Section [0048]-[0050] and [0054]).
Further Briscoe discloses one or more processors; and one or more memory units (e.g. In an embodiment, the client interface 110 further includes a memory for storing instructions and a processor for executing the stored instructions and Internet access. The processor communicates with the design database 108, the input component, the output component, the memory, and the card creator 112 and executes the stored instructions accordingly) (Section [0033]).
Per claims 2 and 6, Briscoe discloses all the limitations of claim 1 and 5 above. Briscoe further discloses:
wherein the transaction medium is a gift card (e.g. For example, the cards may be stored value cards (e.g., gift cards, phone cards, pre-paid credit/debit cards)) (Section [0027]).
Per claims 3 and 7, Briscoe discloses all the limitations of claim 1 and 5 above. Briscoe further discloses:
wherein the transaction medium is a physical transaction medium, and wherein the appearance includes at least one of an image, a text-based message, or a layout (e.g. The client 102 provides the message via the client interface 110 using text to enter the message. For example, the text may include the prospective recipient cardholder's name (e.g., "John Sales"). In another example, the text additionally or alternatively describes the employer's incentive program or theme (e.g., "great sales"). The client 102 may select via the client interface 110 additional design data for customizing the appearance of the entered company) (Section [0027] and [0051]-[0053]).
Per claims 4 and 9, Briscoe discloses all the limitations of claim 1 and 5 above. Briscoe further discloses:
wherein the usage indicates one or more merchants that the transaction medium is usable to transact with (e.g. The client 102 may select between one and six merchants (or more) for a particular card from the various categories. The selected merchants are the exclusive merchants with whom a transaction using the card will be authorized) (Section [0048]-[0049]).
Per claim 8, Briscoe discloses all the limitations of claim 5 above. Briscoe further discloses:
wherein the transaction medium is a digital transaction medium, and wherein the appearance includes at least one of an image, a video, audio data, a text-based message, or a layout (e.g. The client 102 provides the message via the client interface 110 using text to enter the message. For example, the text may include the prospective recipient cardholder's name (e.g., "John Sales"). In another example, the text additionally or alternatively describes the employer's incentive program or theme (e.g., "great sales"). The client 102 may select via the client interface 110 additional design data for customizing the appearance of the entered company) (Section [0027] and [0051]-[0053]).
Per claim 10, Briscoe discloses all the limitations of claim 5 above. Briscoe further discloses:
wherein the usage indicates at least one type of merchant that the transaction medium is usable to transact with (e.g. The categories of merchants (e.g., Apparel/Accessories, Sports/Recreation, Home Goods, Gifts, Spend Back to You) are displayed to the client 102 via the client interface 110 and the client 102 responds via the client interface 110 to indicate a selected category. When the client interface 110 receives the response from the client 102 indicating the selected category, the client interface 110 displays merchant identifying data for the merchants associated with the selected category. The client 102 may select between one and six merchants (or more) for a particular card from the various categories. The selected merchants are the exclusive merchants with whom a transaction using the card will be authorize) (Section [0048]-[0049]).
Per claim 11, Briscoe discloses all the limitations of claim 5 above. Briscoe further discloses:
wherein the usage indicates an amount of funds that are usable to transact with using the transaction medium (e.g. the client interface 110 displays value data for allowing the client 102 to select the amount for the balance of the card via the client interface 110. The amount may be a currency amount ($25, $50, $100) or a product amount (e.g., 1 DVD player model no. XYZ)) (Section [0050]).
Per claim 12, Briscoe discloses all the limitations of claim 5 above. Briscoe further discloses:
wherein the transaction medium is at least one of a credit card or a debit card (e.g. For example, the cards may be stored value cards (e.g., gift cards, phone cards, pre-paid credit/debit cards)) (Section [0027]).
Per claim 13, Briscoe discloses all the limitations of claim 5 above. Briscoe further discloses:
wherein the transaction medium includes an optical code that optically encodes transaction information, wherein the optical code is one of a 1-dimensional barcode, a 2-dimensional barcode, a quick response (QR) code, or a 3-dimensional barcode (e.g. Unless otherwise specified herein, "card" includes (1) a physical card including a plastic or paper card with a magnetic stripe, bar code or other indicator indicative of an account number or other account indicative information, and/or (2) a virtual card, such as a display or screen shot for a mobile phone or for another portable device (e.g., a flash drive, smart chip, a laptop or portable computer), or for a computer device (e.g., a desktop computer) in combination with data indicative of an account number or other account indicative information) (Section [0018]).
Per claim 14, Briscoe discloses all the limitations of claim 5 above. Briscoe further discloses:
wherein providing the transaction medium includes sending the transaction medium (e.g. responsive to the client interface 110 receiving an indication that the client 102 has completed the personalized message customization, the client interface 110 prompts the client 102 to finalize the creation of the card by the selecting that the card be printed (or, in the case of a virtual card, selecting that the card by transmitted) (Section [0054]).
Per claim 19, Briscoe discloses all the limitations of claim 5 above. Briscoe further discloses:
wherein the at least one input is associated with a user, and wherein providing the transaction medium includes providing the transaction medium to the user (e.g. responsive to the client interface 110 receiving an indication that the client 102 has completed the personalized message customization, the client interface 110 prompts the client 102 to finalize the creation of the card by the selecting that the card be printed (or, in the case of a virtual card, selecting that the card by transmitted) (Section [0054]).
Rejections under 35 § U.S.C. 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Briscoe, as applied to claim 5 above, in further view of US 20140074704 A1 (“White”).
Per claim 15, Briscoe discloses all the limitations of claim 5 above. Although Briscoe discloses providing the personalized transaction medium, Briscoe does not specifically disclose:
wherein providing the transaction medium includes adding a transaction dataset associated with the transaction medium to an application that includes shortcuts to transaction datasets.
However White, in analogous art of personalizing gift cards, discloses:
wherein providing the transaction medium includes adding a transaction dataset associated with the transaction medium to an application that includes shortcuts to transaction datasets (e.g. The unique ID code may be received from the web browser running on the recipient's portable electronic device. Responsive to determining the unique ID code at block 211, an electronic passbook file is created, for example, by the prepaid instrument provider server(s) at block 213. The electronic passbook file may include the balance, the name of the sender, and the URL associated with the selected electronic gift card. At block 215, the unique electronic passbook file is transmitted to the recipient for automatic exportation into the recipient's electronic passbook) (Section [0033] and [0048]).
It would have been obvious to one of ordinary skill in the art as of the effective filing date of the claimed invention to modify the transmission of the transaction medium of Briscoe to include the use of a digital wallet or passbook, as taught by White, in order to achieve the predictable result of providing convenience to the user by allowing them to organize and store all their virtual cards in an application for easy use.
Per claim 16, Briscoe/White discloses all the limitations of claim 15 above. Briscoe further discloses:
wherein the user interface is part of the application (e.g. A client interface 110 interacts with the client 102 of the kiosk 104 to customize the physical card. In particular, the client interface 110 is connected to the design database 108 and interacts with the client 102 to select design data from the design database 108 which is printed on a physical form of a physical card to create individualized, customized physical cards according client choices. In the alternative when the card is a virtual card, the system 100 includes a housing unit (e.g., kiosk 104) which houses a processor for defining plurality of customizable virtual cards 106. Each of the plurality of customizable virtual cards 106 represents unique account data between a cardholder and merchants to be selected by the client when creating the card. A design database 108 stores data for customizing the display of the virtual cards to be displayed on a mobile or other device) (Section [0024], [0026], and [0027]).
Per claim 17, Briscoe/White discloses all the limitations of claim 15 above. White further discloses:
facilitating a transaction using the transaction dataset retrieved from the application (e.g. The web pages 502, 602, 702 can include an indicium 508 indicating the amount of the selected electronic gift card and the name of the sender, along with the merchant's logo 504, and indication 506 that the selected electronic gift card is an electronic gift card (as opposed to, for example, a stored value or loyalty card, so as not to confuse the user 14), and the terms and conditions interface control button 528. Referring to FIG. 7, the third web page 702 includes a barcode 704, which can correspond to the barcode 514 if displayed on the web page 502, associated with the electronic gift card. A merchant can scan this barcode 704 at a point of sale (POS) terminal to complete a sales transaction using the remaining balance (in this example $54.95) selected electronic gift card to fund part or all of the purchase of an item or service. Alternately, the device 12 can include a near-field communication (NFC) module for transmitting at least the card number and PIN number associated with the selected electronic gift card) (Section [0033] and [0068]).
The motivation to combine White with Briscoe is disclosed above with reference to claim 15.
Per claim 18, Briscoe discloses all the limitations of claim 5 above. Although Briscoe discloses providing the personalized transaction medium, Briscoe does not specifically disclose:
wherein the at least one input is associated with a first user, and wherein providing the transaction medium includes providing the transaction medium to a second user.
However White, in analogous art of personalizing gift cards, discloses:
wherein the at least one input is associated with a first user, and wherein providing the transaction medium includes providing the transaction medium to a second user (e.g. As seen in FIG. 2A (left), the user (a fictitious "Derek F.") of the portable electronic device 112 has received an electronic notification, in the form of an email 140, indicating that another person (a fictitious "Jeremy P.") has sent to the user an electronic gift card (eGC)) (Section [0034], [0037], and Fig. 2a).
It would have been obvious to one of ordinary skill in the art as of the effective filing date of the claimed invention to modify the transmission of the transaction medium of Briscoe to include sending the personalized gift card to another user, as taught by White, in order to achieve the predictable result of providing convenience to the user by allowing the user to specify who to send the gift card to saving the user time by not having to manually provide the gift card to the intended recipient.
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US Publication Number 20080235095 A1 to Oles teaches a system and method that allows a user to personalize the appearance of a gift card. US Publication Number 20120031545 A1 to Vaccaro teaches a system and method that allows a user to personalize the appearance and the merchant network of a gift card.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY P SAX whose telephone number is (571) 272-2935. The examiner can normally be reached on M-F 8-4:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patrick McAtee can be reached at (571) 272-7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TS/
Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698