DETAILED ACTION
The following is a non-final, first office action in response to the application filed April 23, 2025. Claims 1-19 have been elected. Claim 20 has been withdrawn. Claims 1-19 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 .
Response to Arguments
Claim 20 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on April 28, 2022.
Applicant's election with traverse has been fully considered but is not persuasive. Claim 20 has separate utility such as selecting a greeting card option on a user interface; selecting a recipient for the greeting card; personalizing the greeting card; such that an application programming interface (API) is generated and transmitted to the retailer that identifies a pre-purchased gift, a name of the recipient, and an address for the recipient and completes an ecommerce order to provide the pre-purchased gift to the recipient. While claim 1 requires a computing device; a display responsive to the computing device with a user interface displayed on the display; a selectable link or scannable gift code printed on the greeting card for a recipient to redeem the gift option not required by claim 20. Independent claims 1 and 20 may overlap but require different searches, therefore the restriction is proper.
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 1-19 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 1-19 are directed towards a system. The claims are directed to a statutory category: a machine as defined under 35 U.S.C. § 101.
Regarding Claim 1:
Step 2A, Prong One: Judicial Exception – Abstract Idea
(MPEP § 2106.04)
Claim 1 recites an abstract idea. In particular, the claim recites displaying a greeting card option and a gift option to a user, permitting the user to associate the greeting card option with the gift option, and providing a greeting card corresponding to the user's selection that includes information representing the selected gift option. These limitations describe the commercial interaction of selecting a greeting card, selecting a gift, and associating the selected gift with the greeting card.
Accordingly, the claim recites certain methods of organizing human activity, including commercial interactions such as sales activities or behaviors and business relations. The additional recitation that the gift is represented by a scannable gift code does not alter the character of the underlying commercial interaction, but instead specifies the form in which information representing the selected gift is provided.
Step 2A, Prong Two: Integration into a Practical Application
(MPEP § 2106.04(d))
The claim does not integrate the judicial exception into a practical application. The additional elements include a computing device, a display responsive to the computing device having a user interface, and a printer. These elements are used according to their ordinary functions to display selectable information and print the resulting greeting card. The claimed printer merely prints the greeting card based on the user's selection, and the recited scannable gift code merely represents the selected gift option on the printed card.
The claim does not recite an improvement to the functioning of a computer, display, printer, scanning technology, or other technology or technical field. For example, the claim does not recite a particular improvement in how the scannable code is generated, encoded, printed, or subsequently scanned, nor does it recite an improvement in printer operation. Rather, the computing device, user interface, and printer are used as tools to implement the abstract commercial interaction of selecting and associating a greeting card with a gift.
Nor does the claim effect a particular treatment or transformation of an article into a different state or thing in a manner that integrates the exception into a practical application. Although a physical greeting card is printed, the printer merely outputs the selected greeting card containing information representing the selected gift. Such use of a printer is incidental to carrying out the underlying abstract idea and does not impose a meaningful limit on the judicial exception.
Step 2B: Inventive Concept
(MPEP § 2106.05)
The claim also does not recite additional elements that amount to significantly more than the judicial exception. The computing device, display/user interface, and printer perform their ordinary and conventional functions of processing information, displaying information and options to a user, receiving a user selection, and printing information. The use of a scannable code to represent the selected gift option likewise merely implements the underlying commercial interaction using a machine-readable representation of information.
Considered individually and as an ordered combination, the additional elements do not provide an inventive concept sufficient to transform the claimed abstract idea into patent-eligible subject matter. Rather, the claim applies the abstract idea using generic computer and printing components performing their conventional functions.
Therefore, the claim is not directed to patent-eligible subject matter under 35 U.S.C. § 101.
Regarding Claim 10
Independent claim 10 is parallel in scope to claim 1 and ineligible for similar reasons.
Regarding Claims 2-9 and 11-19
Dependent claims 2-9 and 11-19 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 § 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 and 5-19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Curtis (US 2025/0272672 A1).
Regarding claim 1, Curtis discloses An electronic greeting card system for a user to customize a greeting card, comprising:
a display responsive to the computing device with a user interface displayed on the display; a greeting card option and a gift option displayed on the user interface, so the user can associate the greeting card option with the gift option; 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.);
a printer that prints the greeting card based on a user selection associated with the greeting card option, the greeting card including a scannable gift code representing the gift option (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, paragraph [0232] - In yet another embodiment, the determined gift card number and PIN are alternatively printed onto the gift card. In such embodiments, the gift card printer is included within a gift card kiosk (1770) of the type disclosed herein. In advantageous embodiments, the kiosk interface receives the gift card number and PIN in an encrypted format. The gift card printer is thus configured to be the component that decrypts the data in order to print the actual number and PIN on the gift card, paragraph [0037] - 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 11, Curtis discloses all of the limitations as noted above in claims 1 and 10. Curtis further discloses a payment processor responsive to the computing device, wherein the payment processor 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 12, Curtis discloses all of the limitations as noted above in claims 1 and 10. Curtis further discloses wherein the user interface on the display receives a tactile input from the user and wherein the computing device processes the 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 5 and 14, Curtis discloses all of the limitations as noted above in claims 1 and 10. Curtis further discloses wherein the scannable gift code represents a pre-purchased gift (Curtis: paragraph [0232] - In yet another embodiment, the determined gift card number and PIN are alternatively printed onto the gift card. In such embodiments, the gift card printer is included within a gift card kiosk (1770) of the type disclosed herein. In advantageous embodiments, the kiosk interface receives the gift card number and PIN in an encrypted format. The gift card printer is thus configured to be the component that decrypts the data in order to print the actual number and PIN on the gift card.).
Regarding claims 6 and 16, Curtis discloses all of the limitations as noted above in claims 1 and 10. Curtis further discloses wherein the scannable gift code initiates computer readable instructions such that, when a recipient scans the scannable gift code, an application programming interface (API) is generated and electronically transmitted to a retailer, the API representing a pre-purchased gift, a name of the recipient, and an address for the recipient; and an order is created by the API, wherein the order is received by the retailer and completed as an ecommerce order (Curtis: paragraph [0222] - In accordance with the disclosed principles, all open and closed loop gift/debit cards purchased at retail locations would then only require a scannable UPC code or other easily identifiable codes (such as bar code, QR code, etc.) and a blank magstripe, chip, or other storage device on the card to be purchased. The codes/numbers which reflect the brand and value on the card would be provided by the Encompass platform in conjunction with retailers' APIs, and then encoded onto the magstripe or other storage device. Advantageously, with the disclosed technology, all card values could now be open (i.e., any desired amount, rather than a fixed amount) allowing consumers to choose their specifically desired values).
Regarding claims 7 and 17, Curtis discloses all of the limitations as noted above in claims 6 and 16. Curtis further discloses wherein the computing device includes a medium storing computer readable instructions, wherein the computer readable instructions cause the computing device to send an electronic version of the greeting card 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 claim 8, Curtis discloses all of the limitations as noted above in claim 1. Curtis further discloses wherein the gift option allows the user to select a gift from an available retailer (Curtis: Figure 5 - select a vedor to purchase a gift card).
Regarding claims 9 and 13, Curtis discloses all of the limitations as noted above in claims 1 and 10. Curtis further discloses wherein the user interface presents to the user a delivery method option, the delivery method option includes one of pick up, direct mail, or electronic delivery (Curtis: paragraph [0204] - Such greeting cards may be selected/designed alone by the purchaser via the kiosk and sent to a receiver via a second (or the same) kiosk, or may be transmitted to the receiver using any type of technique, such as email, messaging, and even the printing and mailing of a physical card (for example, using an affiliate associated with the kiosk) if that option is selected by the purchaser via the kiosk. Additionally, such optional greeting cards may be purchased and provided to a receiver along with a gift card that is purchased and provided as disclosed herein).
Regarding claim 10, Curtis discloses An electronic greeting card system for a user to create a greeting card, comprising:
a computing device; a display responsive to the computing device with a user interface displayed on the display; a greeting card option and a gift option displayed on the user interface, so the user can associate the greeting card option with the gift option (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.);
an available retailer option for a user to select the gift option from to create the greeting card and a pre-purchased gift combination; and (Curtis: Figure 5 - select a vedor to purchase a gift card);
a selectable link or scannable gift code printed on the greeting card for a recipient to redeem the gift option (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, paragraph [0232] - In yet another embodiment, the determined gift card number and PIN are alternatively printed onto the gift card. In such embodiments, the gift card printer is included within a gift card kiosk (1770) of the type disclosed herein. In advantageous embodiments, the kiosk interface receives the gift card number and PIN in an encrypted format. The gift card printer is thus configured to be the component that decrypts the data in order to print the actual number and PIN on the gift card, paragraph [0037] - 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 claim 15, Curtis discloses all of the limitations as noted above in claim 10. Curtis further discloses wherein when the user selects the gift option from the available retailer, the gift option selection is presented to the user on the customized card on the display (Curtis: Figure 5 - select a vendor to purchase a gift card).
Regarding claim 18, Curtis discloses all of the limitations as noted above in claim 10. Curtis does not expressly disclose wherein the scannable gift code or selectable link is printed on an inside section or a back side of the greeting card. However these differences are only found in the nonfunctional descriptive material and are not functionally involved in the steps recited. The filtering steps would be performed the same regardless of the location. This descriptive material will not distinguish the claimed invention from the prior art in terms of patentability, see In re Gulack, 70 F.2d 1381, 1385, 217 USPQ 401 (Fed. Cir. 1983); In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994).
Regarding claim 19, Curtis discloses all of the limitations as noted above in claim 10. Curtis further discloses wherein the user interface presents a preview of the greeting card and a pre-purchased gift combination (Curtis: paragraph [0204] - Such greeting cards could be premade greeting cards and selected via the kiosk, or may be customized by the purchaser using the kiosk as disclosed herein. Such greeting cards may be selected/designed alone by the purchaser via the kiosk and sent to a receiver via a second (or the same) kiosk).
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, the shell includes a slot positioned to dispense the greeting card and an envelope, 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, the shell includes a slot positioned to dispense the greeting card and an envelope, wherein the display is positioned on a front side of the shell (Sneed: Figure 2, 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 a shell internally housing the computing device, the printer, and an envelope dispenser, the shell includes a slot positioned to dispense the greeting card and an envelope, 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).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHLEEN G PALAVECINO whose telephone number is (571)270-1355. The examiner can normally be reached M-F 9-4.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marissa Thein can be reached at (571) 272-6764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KATHLEEN GAGE PALAVECINO
Primary Examiner
Art Unit 3688
/KATHLEEN PALAVECINO/Primary Examiner, Art Unit 3688
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