DETAILED ACTION
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 .
Claims 1-20 have been examined.
Claim Objections
Claims 1-10 are objected to because of the following informalities: In the twelfth and thirteenth lines of claim 1, “via the token provider selection” poses a technical antecedent basis problem, and is therefore presumed for examination purposes to be an error for “via the token provider selection interface”. Appropriate correction is required.
Claims 2, 3, 4, 6, 7, 8, and 9 are objected to because of the following informalities: In the fourth and fifth lines of claim 2, “with the order” lacks antecedent basis. In the sixth line of claim 2, “with an order for the value storage token” is recited. Therefore, “with the order” is presumed for examination purposes to mean “with an order for the value storage token”. Also, there should by preference be an “and” at the end of the fifth line. Appropriate correction is required.
Claims 11-20 are objected to because of the following informalities: In the ninth line of claim 11, “via the token provider selection” poses a technical antecedent basis problem, and is therefore presumed for examination purposes to be an error for “via the token provider selection interface”. Appropriate correction is required.
Claims 12, 13, 14, 16, 17, 18, and 19 are objected to because of the following informalities: In the third and fourth lines of claim 12, “with the order” lacks antecedent basis. In the fifth line of claim 12, “with an order for the value storage token” is recited. Therefore, “with the order” is presumed for examination purposes to mean “with an order for the value storage token”. Also, there should by preference be an “and” at the end of the fourth line. Appropriate correction is required.
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 (abstract idea) without significantly more.
First, it is determined that the claims are directed to a statutory category of invention. See MPEP 2106.03 (II). In the instant case, claims 1-10 are directed to a computing system comprising a processor and a memory, and therefore fall within the statutory category of machine. Claims 11-20 are directed to a method, and therefore fall within the statutory category of process. Therefore, claims 1-20 are directed to statutory subject matter under Step 1 of the Alice/Mayo test. (Step 1: YES).
The claims are then analyzed to determine whether the claims are directed to a judicial exception. See MPEP 2106.04. The claims are analyzed to evaluate whether they recite a judicial exception (Step 2A, Prong One) as well as analyzed to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of the judicial exception (Step 2A, Prong Two). See MPEP 2106.04.
Under Step 2A, Prong One, claim 1 and parallel claim 11 are directed to an abstract idea in the field of Certain Methods of Organizing Human Activity, and specifically in fundamental economic principles or practices. Arranging for a value storage token to be given, sold, or otherwise made available to a recipient is a fundamental economic practice, such value storage tokens including coupons, gift cards, letters of credit, cashier’s checks, and the Green Stamps and books thereof with which Examiner was familiar as a child. Thus, claims 1, 11, and their respective dependents are directed to a judicial exception (abstract idea).
Furthermore, claim 2, which depends from claim 1, and from which 3, 4, 6, 7, 8, and 9 depend, recites: “obtain the digital representation of the value storage token associated with the order; process a transaction associated with an order for the value storage token”. Therefore, claim 2 and its dependents are also directed to an abstract idea in the field of commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); this also applies to parallel claim 12, and its dependents 13, 14, 16, 17, 18, and 19.
Yet further, claim 10, which depends from claim 1, recites, “wherein the unique code is generated responsive to receiving a request to process an order for the value storage token, the request indicating order parameters identifying one or more supported token providers in connection with the value storage token.” Therefore, claim 10 is also directed to an abstract idea in the field of commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); this also applies to parallel claim 20. (Step 2A, Prong One, for claims 1-20: YES)
Proceeding to Step 2A, Prong Two, claim 1 recites (emphasis added):
A computing system, comprising:
a processor; and
a memory coupled to the processor, the memory storing computer-executable instructions that, when executed by the processor, configure the processor to:
generate a unique code for a recipient of a value storage token;
send, to a messaging address associated with the recipient, a first message including a link for accessing a token provider selection interface, the link associated with the unique code for the recipient;
detect activation of the link by the recipient;
in response to detecting activation of the link by the recipient, provide, on a computing device associated with the recipient, the token provider selection interface, wherein the providing includes presenting, via the token provider selection [interface], a defined set of one or more supported token providers for the value storage token as selectable options;
receive, via the token provider selection interface, a selection of a first token provider; and
in response to receiving the selection of the first token provider, send a digital representation of the value storage token to the messaging address associated with the recipient.
The recited operations do not involve improvements to the functioning of a computer, or to any other technology or technical field. They do not effect a transformation or reduction of a particular article to a different state or thing, and do not otherwise apply or use the judicial exception in some meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. Insignificant extra-solution activity does not provide reason to treat a claim directed to a judicial exception as significantly more than the judicial exception. Claims 2 through 10, which depend directly or indirectly from claim 1, also do not involve improvements to the functioning of a computer, or to any other technology or technical field, and do not otherwise raise the recited computing system to significantly more than an abstract idea.
The same analysis applies to claim 11, which is a method claim parallel to system claim 1, and to claims 12 through 20, which depend directly or indirectly from claim 11, and are essentially parallel to claims 2 through 10, respectively. (Step 2A, Prong Two, for claims 1-20: NO)
Next, under Step 2B of the Alice/Mayo test, the claims are analyzed to determine whether there are additional claim limitations that individually, or as an ordered combination, ensure that the claims amount to significantly more than the abstract idea. See MPEP 2106.05.
Independent claim 1 recites, as set forth above, “A computing system, comprising: a processor; and a memory coupled to the processor, the memory storing computer-executable instructions”. Avidan et al. (U.S. Patent Application Publication 2017/0193592) discloses (paragraph 25, emphasis added), “Although not illustrated, it should be appreciated that the commerce server 110, the merchant computer 120, and the customer computer 130 each include conventional components, such as a processor and a memory medium storing computer-readable instructions that are executable by the processor to perform various operations including those described herein.” Hence, the processor and memory were well-understood, routine, and conventional technology on the date of inventors’ earliest priority.
The courts have recognized the following computer functions as well-understood, routine and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090,1093 (Fed. Cir. 2015) sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network). Hence, the sending and receiving operations of claim 1 require only the use of well-understood, routine, and conventional functions and technology. The step of generating a unique code for recipient of a value storage token is not in itself technological.
Bokarius et al. (U.S. Patent Application Publication 2014/0181931) discloses (paragraph 64, emphasis added), “System functions like presenting windows and pop-ups, supporting pointing devices, responding to clickable links and buttons, opening up network sessions and accessing websites, are all conventional technologies provided by widely available commercial products like Microsoft’s WINDOWS operating system.” Hence, a link for accessing a token provider selection interface would have required only the use of well-understood, routine and conventional technology as of the date of inventors’ earliest priority. The limitations of claim 1, whether considered separately or in combination with each other, do not raise the recited system to significantly more than an abstract idea.
The above analysis of claim 1 also applies to parallel independent method claim 11, except that since claim 11 does not recite a processor, and a memory coupled to the processor, the memory storing computer-executable instructions, it is unnecessary to apply Avidan in analyzing claim 11 under Step 2B of the Alice-Mayo test.
Claim 2, which depends from claim 1, does not recite specific technology beyond that in claim 1. Claim 3, which depends from claim 2, recites that the processor is configured to “establish communication connection with a token provider server system associated with the first token provider through an application programming interface (API) for the first token provider, wherein obtaining the digital representation of the value storage token generating on or more API calls for requesting to obtain the digital representation.” A et al. (U.S. Patent Application Publication 2020/0106658) discloses (paragraph 43, emphasis added), “In conventional systems, applications would issue multiple resource application programming interface (API) calls and run business logic to get filtered information resulting from such queries.” Hence, application programming interfaces (APIs) and API calls require only the use of well-understood, routine and conventional technology as of the date of inventors’ earliest priority. Claim 4, which depends from claim 3, recites, “wherein the one or more API calls define a requested demonstration associated with the value storage token”, which is not in itself technological. Therefore, the limitations of claims 2, 3, and 4, whether considered separately or in combination with each other and with the limitations of claim 1, do not raise the claimed system to significantly more than an abstract idea.
The above analysis of claims 2, 3, and 4 also applies to parallel claims 12, 13, and 14, which depend from claim 11.
Claim 5, which depends from claim 1, does not recite specific technology beyond that in claim 1. Hence, the limitations of claim 5, whether considered separately or in combination with each other and with the limitations of claim 1, do not raise the claimed system to significantly more than an abstract idea.
The above analysis of claim 5 also applies to parallel claim 15, which depends from claim 11.
Claim 6, which depends from claim 2, does not recite specific technology beyond that in claims 1 and 2. Hence, the limitation of claim 6, whether considered separately or in combination with the limitations of claims 1 and 2, does not raise the claimed system to significantly more than an abstract idea.
The above analysis of claim 6 also applies to parallel claim 16, which depends from claim 12.
Claim 7, which depends from claim 2, recites that the digital representation of the value storage token comprises a machine-readable code. It is questionable how technological this is, but in any event, Leason et al. (U.S. Patent 8,639,571) discloses (column 4, lines 36-40, emphasis added), “The product can be identified in any conventional manner such as by scanning a machine-readable code, as indicated in the Figure, or by inputting a product identifier at the interface to the transaction processor.” Hence, having the digital representation of the value storage token comprise a machine-readable code requires only the use of well-understood, routine and conventional technology as of the date of inventors’ earliest priority. Hence, the limitation of claim 7, whether considered separately or in combination with the limitations of claims 1 and 2, does not raise the claimed system to significantly more than an abstract idea.
The above analysis of claim 7 also applies to parallel claim 17, which depends from claim 12.
Claim 8, which depends from claim 2, does not recite specific technology beyond that in claims 1 and 2, and having a message sent to the messaging address associated with the recipient requires only the use of well-understood, routine, and conventional functions and technology, based on judicial precedents, as cited above with regard to claim 1. Hence, the limitations of claim 8, whether considered separately or in combination with each other and with the limitations of claim 1 and claim 2, do not raise the claimed system to significantly more than an abstract idea.
The above analysis of claim 8 also applies to parallel claim 18, which depends from claim 12.
Claim 9, which depends from claim 2, does not recite specific technology beyond that in claims 1 and 2. Hence, the limitation of claim 9, whether considered separately or in combination with the limitations of claims 1 and 2, does not raise the claimed system to significantly more than an abstract idea.
The above analysis of claim 9 also applies to parallel claim 19, which depends from claim 12.
Claim 10, which depends from claim 1, does not recite specific technology beyond that in claim 1, and the mention of “responsive to receiving a request to process an order for the value storage token” requires only the use of well-understood, routine, and conventional functions and technology, based on judicial precedents, as cited above with regard to claim 1. Hence, the limitation of claim 10, whether considered separately or in combination with the limitations of claim 1, does not raise the claimed system to significantly more than an abstract idea.
The above analysis of claim 10 also applies to parallel claim 20, which depends from claim 11.
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. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); 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); 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) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 3, 4, 5, 6, 7, 8, 9, and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 5, 6, 7, 8, and 9 of U.S. Patent No. 12,321,979. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the instant application is merely a broader version of claim 1 of the ‘979 patent, omitting some language of claim 1 of the ‘979 patent, but reciting nothing to further narrow the claimed computing system. This may be seen in Table 1 below, where claim 1 of the instant application and claim 1 of the ‘979 patent are shown in parallel, with language of claim 1 of the ‘979 patent not present in claim 1 of the instant application shown in bold. Claim 2 of the instant application is then directly parallel to claim 2 of the ‘979 patent. Claim 3 of the instant application is then directly parallel to claim 3 of the ‘979 patent. Claim 4 of the instant application is then directly parallel to claim 4 of the ‘979 patent. Claim 5 of the instant application is then directly parallel to claim 9 of the ‘979 patent. Claim 6 of the instant application is then directly parallel to claim 5 of the ‘979 patent. Claim 7 of the instant application is then directly parallel to claim 6 of the ‘979 patent. Claim 8 of the instant application is then directly parallel to claim 7 of the ‘979 patent. Claim 9 of the instant application is then directly parallel to claim 8 of the ‘979 patent. The above parallelisms are shown in Table 1 below. Furthermore, claim 10 of the instant application corresponds to language of claim 1 of the ‘979 patent not included in claim 1 of the instant application, as may also be verified from Table 1 below.
Table 1
Instant Application
U.S. Patent 12,321,979
1. A computing system, comprising:
a processor; and
a memory coupled to the processor, the memory storing computer-executable instructions that, when executed by the processor, configure the processor to:
generate a unique code for a recipient of a value storage token;
send, to a messaging address associated with the recipient, a first message including a link for accessing a token provider selection interface, the link associated with the unique code for the recipient;
detect activation of the link by the recipient;
in response to detecting activation of the link by the recipient, provide, on a computing device associated with the recipient, the token provider selection interface, wherein the providing includes presenting, via the token provider selection, a defined set of one or more supported token providers for the value storage token as selectable options;
receive, via the token provider selection interface, a selection of a first token provider; and
in response to receiving the selection of the first token provider, send a digital representation of the value storage token to the messaging address associated with the recipient.
2. The computing system of claim 1, wherein the instructions, when executed, further configure the processor to, in response to receiving the selection of the first token provider:
obtain the digital representation of the value storage token associated with the order;
process a transaction associated with an order for the value storage token.
3. The computing system of claim 2, wherein the instructions, when executed, further configure the processor to:
establish a communication connection with a token provider server system associated with the first token provider through an application programming interface (API) for the first token provider, wherein obtaining the digital representation of the value storage token comprises generating one or more API calls for requesting to obtain the digital representation.
4. The computing system of claim 3, wherein the one or more API calls define a requested denomination associated with the value storage token.
5. The computing system of claim 1, wherein the link has an associated expiry time and wherein the token provider selection interface is accessible via the link only before the expiry time.
6. The computing system of claim 2, wherein processing the transaction associated with the order for the value storage token comprises posting, to a customer account associated with a client device, a charge in connection with the order.
7. The computing system of claim 2, wherein the digital representation of the value storage token comprises a machine-readable code.
8. The computing system of claim 2, wherein the digital representation of the value storage token is included in a second message that is sent to the messaging address associated with the recipient, the second message including an indication of a sender of the value storage token.
9. The computing system of claim 2, wherein the digital representation of the value storage token is sent to the messaging address only in response to verifying that the transaction was successfully processed.
10. The computing system of claim 1, wherein the unique code is generated responsive to receiving a request to process an order for the value storage token, the request indicating order parameters identifying one or more supported token providers in connection with the value storage token.
1. A computing system,
a processor; and
a memory coupled to the processor, the memory storing computer-executable instructions that, when executed by the processor, configure the processor to:
generate a unique recipient-specific code for a recipient of a value storage token, wherein the unique code is generated responsive to receiving a request to process an order for the value storage token, the request indicating order parameters identifying one or more supported token providers in connection with the value storage token;
send, to a messaging address associated with the recipient, a first message including a link for accessing a token provider selection interface, the link associated with the unique code for the recipient;
detect activation of the link by the recipient;
in response to detecting activation of the link by the recipient, provide, on a computing device associated with the recipient, the token provider selection interface, wherein the providing includes presenting, via the token provider selection interface, a defined set of one or more supported token providers for the value storage token as selectable options;
receive, via the token provider selection interface, a selection of a first token provider; and
in response to receiving the selection of the first token provider, send a digital representation of the value storage token to the messaging address associated with the recipient.
2. The computing system of claim 1, wherein the instructions, when executed, further configure the processor to, in response to receiving the selection of the first token provider:
obtain the digital representation of the value storage token associated with the order;
process a transaction associated with an order for the value storage token.
3. The computing system of claim 2, wherein the instructions, when executed, further configure the processor to:
establish a communication connection with a token provider server system associated with the first token provider through an application programming interface (API) for the first token provider, wherein obtaining the digital representation of the value storage token comprises generating one or more API calls for requesting to obtain the digital representation.
4. The computing system of claim 3, wherein the one or more API calls define a requested denomination associated with the value storage token.
9. The computing system of claim 1, wherein the link has an associated expiry time and wherein the token provider selection interface is accessible via the link only before the expiry time.
5. The computing system of claim 2, wherein processing the transaction associated with the order for the value storage token comprises posting, to a customer account associated with a client device, a charge in connection with the order.
6. The computing system of claim 2, wherein the digital representation of the value storage token comprises a machine-readable code.
7. The computing system of claim 2, wherein the digital representation of the value storage token is included in a second message that is sent to the messaging address associated with the recipient, the second message including an indication of a sender of the value storage token.
8. The computing system of claim 2, wherein the digital representation of the value storage token is sent to the messaging address only in response to verifying that the transaction was successfully processed.
Claims 11, 12, 13, 14, 15, 16, 17, 18, 19, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10, 11, 12, 13, 14, 15, 16, 17, and 18 of U.S. Patent No. 12,321,979. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 of the instant application is merely a broader version of claim 10 of the ‘979 patent, omitting some language of claim 10 of the ‘979 patent, but reciting nothing to further narrow the claimed computing system. This may be seen in Table 2 below, where claim 11 of the instant application and claim 10 of the ‘979 patent are shown in parallel, with language of claim 10 of the ‘979 patent not present in claim 11 of the instant application shown in bold. Claim 12 of the instant application is then directly parallel to claim 11 of the ‘979 patent. Claim 13 of the instant application is then directly parallel to claim 12 of the ‘979 patent. Claim 14 of the instant application is then directly parallel to claim 13 of the ‘979 patent. Claim 15 of the instant application is then directly parallel to claim 18 of the ‘979 patent. Claim 16 of the instant application is then directly parallel to claim 14 of the ‘979 patent. Claim 17 of the instant application is then directly parallel to claim 15 of the ‘979 patent. Claim 18 of the instant application is then directly parallel to claim 16 of the ‘979 patent. Claim 19 of the instant application is then directly parallel to claim 17 of the ‘979 patent. The above parallelisms are shown in Table 2 below. Furthermore, claim 20 of the instant application corresponds to language of claim 10 of the ‘979 patent not included in claim 11 of the instant application, as may also be verified from Table 2 below.
Table 2
Instant Application
U.S. Patent 12,321,979
11. A computer-implemented method, comprising:
generating a unique code for a recipient of a value storage token;
sending, to a messaging address associated with the recipient, a first message including a link for accessing a token provider selection interface, the link associated with the unique code for the recipient;
detecting activation of the link by the recipient;
in response to detecting activation of the link by the recipient, providing, on a computing device associated with the recipient, the token provider selection interface, wherein the providing includes presenting, via the token provider selection, a defined set of one or more supported token providers for the value storage token as selectable options;
receiving, via the token provider selection interface, a selection of a first token provider; and
in response to receiving the selection of the first token provider, sending a digital representation of the value storage token to the messaging address associated with the recipient.
12. The method of claim 11, further comprising, in response to receiving the selection of the first token provider:
obtaining the digital representation of the value storage token associated with the order;
processing a transaction associated with an order for the value storage token.
13. The method of claim 12, further comprising establishing a communication connection with a token provider server system associated with the first token provider through an application programming interface (API) for the first token provider, wherein obtaining the digital representation of the value storage token comprises generating one or more API calls for requesting to obtain the digital representation.
14. The method of claim 13, wherein the one or more API calls define a requested denomination associated with the value storage token.
15. The method of claim 11, wherein the link has an associated expiry time and wherein the token provider selection interface is accessible via the link only before the expiry time.
16. The method of claim 12, wherein processing the transaction associated with the order for the value storage token comprises posting, to a customer account associated with a client device, a charge in connection with the order.
17. The method of claim 12, wherein the digital representation of the value storage token comprises a machine-readable code.
18. The method of claim 12, wherein the digital representation of the value storage token is included in a second message that is sent to the messaging address associated with the recipient, the second message including an indication of a sender of the value storage token.
19. The method of claim 12, wherein the digital representation of the value storage token is sent to the messaging address only in response to verifying that the transaction was successfully processed.
20. The method of claim 11, wherein the unique code is generated responsive to receiving a request to process an order for the value storage token, the request indicating order parameters identifying one or more supported token providers in connection with the value storage token.
10. A computer-implemented method, comprising:
generating a unique recipient-specific code for a recipient of a value storage token, wherein the unique code is generated responsive to receiving a request an order for the value storage token, the request indicating order parameters identifying one or more supported token providers in connection with the value storage token;
sending, to a messaging address associated with the recipient, a first message including a link for accessing a token provider selection interface, the link associated with the unique code for the recipient;
detecting activation of the link by the recipient;
in response to detecting activation of the link by the recipient, providing, on a computing device associated with the recipient, the token provider selection interface, wherein the providing includes presenting, via the token provider selection interface, a defined set of one or more supported token providers for the value storage token as selectable options;
receiving, via the token provider selection interface, a selection of a first token provider; and
in response to receiving the selection of the first token provider, sending a digital representation of the value storage token to the messaging address associated with the recipient.
11. The method of claim 10, further comprising, in response to receiving the selection of the first token provider:
obtaining the digital representation of the value storage token associated with the order; and
processing a transaction associated with an order for the value storage token.
12. The method of claim 10, further comprising establishing a communication connection with a token provider server system associated with the first token provider through an application programming interface (API) for the first token provider, wherein obtaining the digital representation of the value storage token comprises generating one or more API calls for requesting to obtain the digital representation.
13. The method of claim 12, wherein the one or more API calls define a requested denomination associated with the value storage token.
18. The method of claim 10, wherein the link has an associated expiry time and wherein the token provider selection interface is accessible via the link only before the expiry time.
14. The method of claim 11, wherein processing the transaction associated with the order for the value storage token comprises posting, to a customer account associated with a client device, a charge in connection with the order.
15. The method of claim 11, wherein the digital representation of the value storage token comprises a machine-readable code.
16. The method of claim 11, wherein the digital representation of the value storage token is included in a second message that is sent to the messaging address associated with the recipient, the second message including an indication of a sender of the value storage token.
17. The method of claim 11, wherein the digital representation of the value storage token is sent to the messaging address only in response to verifying that the transaction was successfully processed.
Claims 1, 2, 3, 4, 5, 6, 7, 8, 9, and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 5, 6, 8, and 9 of U.S. Patent No. 11,599,934. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-10 of the instant application essentially amount to a broader equivalent of the system recited in claims 1-6, 8, and 9 of the ‘934 patent. As may be seen in Table 3 below, claim 1 of the instant application is a broader version of claim 1 of the ‘934 patent, omitting some limitations, and varying the phrasing, but reciting no substantial limitations not present in claim 1 of the ‘934 patent; claim 2 of the instant application corresponds to further limitations of claim 1 of the ‘934 patent. As may further be seen in Table 3 below, claim 3 of the instant application corresponds to claim 2 of the ‘934 patent. Then claim 4 of the instant application corresponds to claim 3 of the ‘934 patent, claim 5 of the instant application corresponds to claim 4 of the ‘934 patent, claim 6 of the instant application corresponds to claim 5 of the ‘934 patent (there is not believed to be, in context, a major difference between “order of” and “order for”), claim 7 of the instant application corresponds to claim 6 of the ‘934 patent, claim 8 of the instant application corresponds to claim 8 of the ‘934 patent, and claim 9 of the instant application corresponds to claim 9 of the ‘934 patent. Claim 10 of the instant application corresponds essentially to language of claim 1 of the ‘934 patent, since in claim 1 of the ‘934 patent, “generate a unique code for the recipient entity” is preceded by “receive, via a client device, a request to process an order of a value storage token, the request indicating order parameters identifying one or more supported token providers in connection with the value storage token”. The claims are set forth in full in Table 3 below.
Table 3
Claims 1-10 of the Instant Application
Claims 1-6, 8, and 9 of Pat. 11,599,934
1. A computing system, comprising:
a processor; and
a memory coupled to the processor, the memory storing computer-executable instructions that, when executed by the processor, configure the processor to:
generate a unique code for a recipient of a value storage token;
send, to a messaging address associated with the recipient, a first message including a link for accessing a token provider selection interface, the link associated with the unique code for the recipient;
detect activation of the link by the recipient;
in response to detecting activation of the link by the recipient, provide, on a computing device associated with the recipient, the token provider selection interface, wherein the providing includes presenting, via the token provider selection [interface], a defined set of one or more supported token providers for the value storage token as selectable options;
receive, via the token provider selection interface, a selection of a first token provider; and
in response to receiving the selection of the first token provider, send a digital representation of the value storage token to the messaging address associated with the recipient.
2. The computing system of claim 1, wherein the instructions, when executed, further configure the processor to, in response to receiving the selection of the first token provider:
obtain the digital representation of the value storage token associated with the order; [and]
process a transaction associated with the order for the value storage token.
3. The computing system of claim 2, wherein the instructions, when executed, further configure the processor to:
establish a communication connection with a token provider server system associated with the first token provider through an application programming interface (API) for the first token provider, wherein obtaining the digital representation of the value storage token comprises generating one or more API calls for requesting to obtain the digital representation.
4. The computing system of claim 3, wherein the one or more API calls define a requested denomination associated with the value storage token.
5. The computing system of claim 1, wherein the link has an associated expiry time wherein the token provider selection interface is accessible via the link only before the expiry time.
6. The computing system of claim 2, wherein processing the transaction associated with the order for the value storage token comprises posting, to a customer account associated with a client device, a charge in connection with the order.
7. The computing system of claim 2, wherein the digital representation of the value storage token comprises a machine-readable code.
8. The computing system of claim 2, wherein the digital representation of the value storage token is included in a second message that is sent to the messaging address associated with the recipient, the second message including an indication of a sender of the value storage token.
9. The computing system of claim 2, wherein the digital representation of the value storage token is sent to the messaging address only in response to verifying that the transaction was successfully processed.
10. The computing system of claim 1, wherein the unique code is generated responsive to receiving a request to process an order for the value storage token, the request indicating order parameters identifying one or more supported token providers in connection with the value storage token.
1. A computing system, comprising:
a processor;
a communications module coupled to the processor; and
a memory coupled to the processor, the memory storing computer-executable instructions that, when executed by the processor, configure the processor to:
receive, via a client device, a request to process an order of a value storage token, the request indicating order parameters identifying one or more supported token providers in connection with the value storage token and a messaging address associated with a recipient entity for the value storage token;
generate a unique code for the recipient entity;
store, in the memory, the unique code in association with the messaging address associated with the recipient entity;
send, to the messaging address associated with the recipient entity, a first message including a unique link for accessing a token provider selection interface[,] the unique link associated with the unique code for the recipient entity;
detect activation of the unique link by the recipient entity;
in response to detecting activation of the unique link by the recipient entity, provide, on a computing device associated with the recipient entity, the token provider selection interface, wherein providing the token provider selection interface includes presenting only the one or more supported token providers as selectable options via the token provider selection interface;
receive, via the token provider selection interface, a selection of a token provider;
in response to receiving the selection of the token provider:
obtain a digital representation of the value storage token associated with the order;
process a transaction associated with the order of the value storage token; and
send the digital representation of the value storage token to the messaging address associated with the recipient entity.
2. The computing system of claim 1, wherein the instructions, when executed, further configure the processor to:
establish a communication connection with a token provider server system associated with the selected token provider through an application programming interface (API) for the selected token provider, wherein obtaining the digital representation of the value storage token associated with the order comprises generating one or more API calls for requesting to obtain the digital representation.
3. The computing system of claim 2, wherein the one or more API calls define a requested denomination associated with the value storage token.
4. The computing system of claim 1, wherein the unique link has an associated expiry time and wherein the token provider selection interface is accessible via the unique link only before the expiry time.
5. The computing system of claim 1, wherein processing the transaction associated with the order of the value storage token comprises posting, to a customer account associated with the client device, a charge in connection with the order.
6. The computing system of claim 1, wherein the digital representation of the value storage token comprises a machine-readable code.
8. The computing system of claim 1, wherein the digital representation of the value storage token is included in a second message that is sent to the messaging address associated with the recipient entity, the second message including an indication of a sender of the value storage token.
9. The computing system of claim 1, wherein the digital representation of the value storage token is sent to the messaging address only in response to verifying that the transaction was successfully processed.
Claims 11, 12, 13, 14, 15, 16, 17, 18, 19, and *20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10, 11, 12, 13, 14, 15, 17, and 18, of U.S. Patent No. 11,599,934. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 11-20 of the instant application essentially amount to a broader equivalent of the system recited in claims 10-15, 17, and 18 of the ‘934 patent. As may be seen in Table 4 below, claim 11 of the instant application is a broader version of claim 10 of the ‘934 patent, omitting some limitations, and varying the phrasing, but reciting no substantial limitations not present in claim 10 of the ‘934 patent; claim 12 of the instant application corresponds to further limitations of claim 10 of the ‘934 patent. As may further be seen in Table 4 below, claim 13 of the instant application corresponds to claim 11 of the ‘934 patent. Then claim 14 of the instant application corresponds to claim 12 of the ‘934 patent, claim 15 of the instant application corresponds to claim 13 of the ‘934 patent, claim 16 of the instant application corresponds to claim 14 of the ‘934 patent (there is not believed to be, in context, a major difference between “order of” and “order for”), claim 17 of the instant application corresponds to claim 15 of the ‘934 patent, claim 18 of the instant application corresponds to claim 17 of the ‘934 patent, and claim 19 of the instant application corresponds to claim 18 of the ‘934 patent. Claim 20 of the instant application corresponds essentially to language of claim 10 of the ‘934 patent, since in claim 10 of the ‘934 patent, “generating a unique code for the recipient entity” is preceded by “receiving, via a client device, a request to process an order of a value storage token, the request indicating order parameters identifying one or more supported token providers in connection with the value storage token”. The claims are set forth in full in Table 4 below.
Table 4
Claims 11-20 of the Instant Application
Claims 10-15, 17, and 18 of Pat. 11,599,934
11. A computer-implemented method, comprising:
generating a unique code for a recipient of a value storage token;
sending, to a messaging address associated with the recipient, a first message including a link for accessing a token provider selection interface, the link associated with the unique code for the recipient;
detecting activation of the link by the recipient;
in response to detecting activation of the link by the recipient, providing, on a computing device associated with the recipient, the token provider selection interface, wherein the providing includes presenting, via the token provider selection [interface], a defined set of one or more supported token providers for the value storage token as selectable options;
receiving, via the token provider selection interface, a selection of a first token provider; and
in response to receiving the selection of the first token provider, sending a digital representation of the value storage token to the messaging address associated with the recipient.
12. The method of claim 12, further comprising, in response to receiving the selection of the first token provider:
obtaining the digital representation of the value storage token associated with the order; [and]
processing a transaction associated with the order for the value storage token
13. The method of claim 12, further comprising establishing a communication connection with a token provider server system associated with the first token provider through an application programming interface (API) for the first token provider, wherein obtaining the digital representation of the value storage token comprises generating one or more API calls for requesting to obtain the digital representation.
14. The method of claim 13, wherein the one or more API calls define a requested denomination associated with the value storage token.
15. The method of claim 11, wherein the link has an associated expiry time and wherein the token provider selection interface is accessible via the link only before the expiry time.
16. The method of claim 12, wherein processing the transaction associated with the order for the value storage token comprises posting, to a customer account associated with a client device, a charge in connection with the order.
17. The method of claim 12, wherein the digital representation of the value storage token comprises a machine-readable code.
18. The method of claim 12, wherein the digital representation of the value storage token is included in a second message that is sent to the messaging address associated with the recipient, the second message including an indication of a sender of the value storage token.
19. The method of claim 12, wherein the digital representation of the value storage token is sent to the messaging address only in response to verifying that the transaction was successfully processed
20. The method of claim 11, wherein the unique code is generated responsive to receiving a request to process an order for the value storage token, the request indicating order parameters identifying one or more supported token providers in connection with the value storage token.
10. A computer-implemented method, comprising:
receiving, via a client device, a request to process an order of a value storage token, the request indicating order parameters identifying one or more supported token providers in connection with the value storage token and a messaging address associated with a recipient entity for the value storage token;
generating a unique code for the recipient entity;
storing, in a memory, the unique code in association with the messaging address associated with the recipient entity;
sending, to the messaging address associated with the recipient entity, a first message including a unique link for accessing a token provider selection interface, the unique link associated with the unique code for the recipient entity;
detecting activation of the unique link by the recipient entity;
in response to detecting activation of the unique link by the recipient entity, providing, on a computing device associated with the recipient entity, the token provider selection interface, wherein providing the token provider selection interface includes presenting only the one or more supported token providers as selectable options via the token provider selection interface;
receiving, via the token provider selection interface, a selection of a token provider;
in response to receiving the selection of the token provider:
obtaining a digital representation of the value storage token associated with the order;
processing a transaction associated with the order of the value storage token; and
sending the digital representation of the value storage token to the messaging address associated with the recipient entity.
11. The method of claim 10, further comprising establishing a communication connection with a token provider server system associated with the selected token provider through an application programming interface (API) for the selected token provider, wherein obtaining the digital representation of the value storage token comprises generating one or more API calls for requesting to obtain the digital representation of the value storage token.
12. The method of claim 11, wherein the one or more API calls define a requested denomination associated with the value storage token.
13. The method of claim 10, wherein the unique link has an associated expiry time and wherein the token provider selection interface is accessible via the unique link only before the expiry time.
14. The method of claim 10 wherein processing the transaction associated with the order for the value storage token comprises posting, to a customer account associated with the client device, a charge in connection with the order.
15. The method of claim 10, wherein the digital representation of the value storage token comprises a machine-readable code.
17. The method of claim 10, wherein the digital representation of the value storage token is included in a second message that is sent to the messaging address associated with the recipient entity, the second message including an indication of a sender of the value storage token.
18. The method of claim 10, wherein the digital representation of the value storage token is sent to the messaging address only in response to verifying that the transaction was successfully processed.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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, 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 1, 2, 7, 11, 12, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over White (U.S. Patent 9,436,942) in view of Stone et al. (U.S. Patent Application Publication 2017/0316491) and Maeng et al. (U.S. Patent 10,075,300). As per claim 1, White discloses a computing system, namely server 320 in communication with at least two other devices (Figure 3; column 6, lines 37-66), and discloses processors and device memories, the memories able to store software and other logic, the logic having the form of instruction signals and/or data that may be applied to affect the operations of a processor (column 4, lines 36-53), emphasis added: “‘Logic,’ as used herein and throughout this disclosure, refers to any information having the form of instruction signals and/or data that may be applied to affect the operation of a processor. Examples of processors are computer processors (processing units), microprocessors, digital signal processors, controllers and microcontrollers, etc. Logic may be formed from signals stored in a device memory. Examples of device memories may include RAM (random access memories), flash memories, ROMS (read-only memories), EPROMS (erasable programmable read-only memories), and EEPROMS (electrically erasable programmable read-only memories). Logic may also be provided by digital and/or analog hardware circuits, for example, hardware circuits comprising logical AND, OR, NAND, NOR, and other logical operations. Logic may be formed from combinations of software and hardware.” Hence, the computing system comprises: a processor and a memory coupled to the processor, the memory storing instructions that when executed, configure the processor to perform operations; a communications module coupled to the processor is at least obvious, as requisite to enable communication disclosed by White to take place.
White discloses receiving, via a client device, a request to process an order of a gift card (a form of value storage token) (Abstract; column 2, line 65, through column 3, line 8; column 5, lines 8-22). In particular, White discloses (column 5, lines 8-22, emphasis added), “In this embodiment, a consumer buys a variable gift card for a recipient. The consumer chooses predetermined merchant 124, which is reflected on the variable gift card. However, the amount paid is held in escrow. The consumer then elects to send the gift card to recipient mobile device 110. Gift card server 120 transfers the gift card to recipient mobile device 110. Recipient mobile device 110 receives the variable gift card along with an offer to switch predetermined merchant 124 to select desired merchant 126. Recipient mobile device 110 communicates with gift card server 120 to confirm the selection. Once confirmed, gift card server 120 transfers the amount from escrow to desired merchant 126.”
White further discloses sending to a messaging address associated with the recipient, a first message including a link for accessing a token provider selection interface (column 5, lines 39-63); in particular, White discloses (column 5, lines 39-54, emphasis added and with a grandson as gift recipient), “For example, a grandson receives the gift card from his grandmother for BASS PRO SHOPS and the gift card is received on his mobile device. The gift card can be sent as a Short Message Service (SMS) text message, MultiMedia Service (MMS) message, email, etc. The message may contain a multimedia greeting gift card with a link at the bottom. The link says, for example, ‘Not interested in Bass Pro? Click here to learn how to apply this to any other merchant that you like.’ When the grandson selects the link, he can search a list of any merchant that is in the service provider’s catalog, or that the service provider has a business relationship with. The grandson prefers BORDER’S BOOKS to BASS PRO SHOPS. According to the present invention, the grandson uses the link to switch from the previously selected BASS PRO SHOPS gift card to a BORDER’S BOOKS gift card.”
White does not disclose generating a unique code for the recipient of a value storage token, but Stone teaches such generating (paragraph 85, emphasis added), “According to one embodiment, the system also generates a virtual gift card code that can be uniquely associated with the virtual gift card being created. The virtual gift card code may be generated at any point in the process of creating the virtual gift card and associated with the recipient at any point in the process of creating the virtual gift card.” Hence, it would have been obvious to one of ordinary skill in the art of electronic commerce on the date of inventors’ earliest priority to generate a unique code for the recipient of a value storage token, for at least the obvious advantage of distinguishing different recipients and their respective gift cards or other stored value tokens. Likewise, it would have been obvious to one of ordinary skill in the art of electronic commerce on the date of inventors’ earliest priority to associate the unique code with the link disclosed by White, for at least the same purpose.
White discloses in response to detecting activation of the link by the recipient, providing, on a computing device associated with the recipient, the token provider selection interface, wherein the providing includes presenting, via the token provider interface, a defined set of one or more supported token providers for the value storage token as selectable options, as cited above, in particular (column 5, lines 47-54, emphasis added), “When the grandson selects the link, he can search a list of any merchant that is in the service provider’s catalog, or that the service provider has a business relationship with. The grandson prefers BORDER’S BOOKS to BASS PRO SHOPS. According to the present invention, the grandson uses the link to switch from the previously selected BASS PRO SHOPS gift card to a BORDER’S BOOKS gift card.” White also discloses receiving, via the token provider selection interface, a selection of a first token provider, as above, and also (column 5, lines 54-61, with emphasis), “The grandson authorizes the service provider to issue or activate the gift card. The service provider then reaches out to the payment processor to finalize the issuance. The amount of money is applied to BORDER’S gift card with an account number. The payment is made at this stage because the service provider holds these funds in an intermediary or escrow account until the recipient finalizes the choice of gift card.” White does not expressly disclose, in response to receiving the selection of the first token provider, sending a digital representation of the value storage token to the messaging address associated with the recipient, but digital representations are well known, and can be sent to recipients, as taught, for example, by Maeng (column 4, lines 38-40, emphasis added), “In some examples, these elements may be issued by sending the digital representations to one or more mobile wallet recipients.” Hence, it would have been obvious to one of ordinary skill in the art of electronic commerce on the date of inventors’ earliest priority to send a digital representation of the value storage token to the messaging address associated with the recipient, for at least the obvious advantage of enabling the recipient to view and manipulate (e.g., select for use) a digital representation of the value storage token.
As per claim 11, this is a method claim parallel to system claim 1, and obvious on the same grounds.
As per claim 2, White makes relevant disclosures of processing a transaction associated with an order for the value storage token in column 5, lines 39-63, mostly quoted above with regard to claim 1. The final sentence of that paragraph (not previously quoted) is (emphasis added), “The service provider may charge a convenience fee to the consumer to allow for the ability to switch between merchants.” This indicates a transaction. White further discloses (column 6, lines 46-66, emphasis added), “Consumer mobile device 300 requests a gift card from S350 from gift card server 320. Gift card server 320 then offers a variable gift card S351 to consumer mobile device 300 accepts the offer by paying an amount for a predetermined merchant to purchase the variable gift card S352. Gift card server 320 sends the variable gift card S353 to consumer mobile device 300. Consumer mobile device 300 then forwards the variable gift card S354 to recipient mobile device 310. Once received, recipient mobile device 310 communicates with gift card server 320 to activate the variable gift card S355. Gift card server 320 then offers the recipient an option to switch merchants S355. Recipient mobile device 310 sends the selection of the desired merchant S357 to gift card server 320. Gift card server 320 then requests the recipient to confirm the desired merchant S358. Recipient mobile device 310 sends a final confirmation S359 to gift card server 320. Gift card server 320 then transfers the amount S360 to desired merchant 326, and the variable gift card is activated. Desired merchant 326 sends confirmation of the activation S361 to gift card server 320, which forwards the activation S362 to recipient mobile device 310.” See also Figure 3. White does not disclose obtaining the digital representation of the value storage token associated with the order, but, as set forth above with regard to claim 1, Maeng teaches (column 4, lines 38-40) that digital representations are well known. Hence, it would have been obvious to one of ordinary skill in the art of electronic commerce on the date of inventors’ earliest priority to obtain a digital representation of the value storage token associated with the order, for at least the obvious advantage enabling the recipient to view and manipulate (e.g., select for use) the digital representation of the value storage token associated with the order.
As per claim 12, this is a method claim parallel to system claim 2, and obvious on the same grounds.
As per claim 7, Stone teaches that a recipient’s virtual gift card code may be displayed as a 1D- or 2D-bar code, for example, in paragraph 89, emphasis added: “The webpage 300 likewise may include a display of the recipient’s virtual gift card code, either alphanumerically 302 or in an encoded form such as a 1D- or 2D-bar code 304, or in both forms.” Stone also teaches (paragraph 97, emphasis added), “In another embodiment, the virtual gift card code may be displayed on the virtual gift card as a 16-bit alphanumeric number or a 1D or 2D barcode.” Stone also teaches a bar code being computer readable, and thus machine-readable (paragraph 90, emphasis added), “To use the virtual gift card in a physical store location, the recipient may print out the email 200 and/or the webpage 300 and bring the printout to the physical store, where the recipient’s virtual gift card code may be keyed (or, in embodiments in which the email or the webpage includes a barcode, scanned) or otherwise entered into a computer which requests a debit from the recipient’s virtual gift card of the amount of purchase.” Hence, it would have been obvious to one of ordinary skill in the art of electronic commerce on the date of inventors’ earliest priority for the digital representation of the value storage token to comprise a machine-readable code, for at least the obvious advantage of enabling the value storage token to be read by a computer of a merchant for an on-line transaction, or otherwise by a computer of someone receiving some or all of the stored value.
As per claim 17, this is a method claim parallel to system claim 7, and obvious on the same grounds.
Claims 3, 4, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over White (U.S. Patent 9,436,942), Stone et al. (U.S. Patent Application Publication 2017/0316491), and Maeng et al. (U.S. Patent 10,075,300) as applied to claim 2 above (for claims 3 and 4) and claim 12 above (for claims 13 and 14), and further in view of Lin et al. (U.S. Patent Application Publication 2017/0046651). As per claim 3, Lin teaches making application program interface (API) calls to the computer system of an e-commerce retailer (such as Amazon or Starbucks) to request and obtain a digital representation of a value storage token (e.g., pre-paid digital gift card) (paragraphs 162, 163, 174, and 175; see also Figure 6, in particular 616). Specifically, Lin teaches (paragraph 162, emphasis added), “In some aspects, system 140 may perform operations that initiate an electronic transfer of funds consistent with a financial benefit to an account of the corresponding employee. In other aspects, and through a corresponding API call to one or more external computer systems, system 140 may perform operations that generate and/or provide a non-cash award to the corresponding employee. For example, system 140 may execute software applications that, through a corresponding API call to a computer system of the e-commerce retailer (e.g., Amazon.comTM, etc.), generate and deliver to the corresponding employee (e.g., through an appropriate email address) a pre-paid digital gift card loaded with a balance consistent with the financial award.” Lin further teaches (paragraph 174, emphasis added), “For instance, system 140 may determine that the financial services representative that realized the transfer of the customer’s investment portfolio should receive a sales reward of $200, and that the customer representative of the branch location should receive a pre-paid gift card (e.g., a StarbucksTM card or an Amazon.comTM card loaded with $50 in funds).” Lin yet further teaches (paragraph 175, emphasis added), “For example, and as described above, system 140 may perform operations that initiate an electronic transfer of $200 (e.g., the sales the sales reward determined in step 612, above) to an [sic] financial services account held by the financial services representative at the financial institution or at the other financial institutions. Additionally, and as described above, system 140 may execute software applications that, through a corresponding API call to a computer system of the e-commerce retailer (e.g., StarbucksTM, Amazon.comTM, etc.), generate and deliver to the corresponding employee (e.g., through an appropriate email address) a pre-paid digital gift card loaded with the referral reward of $50.” Servers are well known, so it would have been obvious for the computer systems of e-commerce retailers such as Amazon or Starbucks to be servers. As support for this minor point, Stone teaches (paragraph 130, emphasis added), “There are many examples of computer systems currently in use that may be suitable for implementing various aspects of the present invention. Some examples include, among others, network appliances, personal computers, workstations, mainframes, networked clients, servers, media servers, application servers, data servers and web servers.” Hence, it would have been obvious to one of ordinary skill in the art of electronic commerce on the date of inventors’ earliest priority to establish a communication connection with a token provider server system associated with the first token provider through an application programming interface (API) for the first token provider, wherein obtaining the digital representation of the value storage token comprises generating one or more API calls for requesting to obtain the digital representation, for at least the obvious advantage of readily obtaining, by well-known technology, an appropriate value storage token of a desired token provider.
As per claim 13, this is a method claim parallel to system claim 3, and obvious on the same grounds.
As per claim 4, Lin teaches, in the context of API calls, a requested denomination associated with a value storage token (paragraphs 174 and 175, as quoted above with respect to claim 3). Specifically, paragraph 174 includes (emphasis added), “For instance, system 140 may determine that the financial services representative that realized the transfer of the customer’s investment portfolio should receive a sales reward of $200, and that the customer representative of the branch location should receive a pre-paid gift card (e.g., a StarbucksTM card or an Amazon.comTM card loaded with $50 in funds).” Paragraph 175 includes, “Additionally, and as described above, system 140 may execute software applications that, through a corresponding API call to a computer system of the e-commerce retailer (e.g., StarbucksTM, Amazon.comTM, etc.), generate and deliver to the corresponding employee (e.g., through an appropriate email address) a pre-paid digital gift card loaded with the referral reward of $50.” Hence, it would have been obvious to one of ordinary skill in the art of electronic commerce on the date of inventors’ earliest priority for the one or more API calls to define a requested denomination with the value storage token, for at least the obvious advantage of causing the denomination of the value storage token to be the desired amount.
As per claim 14, this is a method claim parallel to system claim 4, and obvious on the same grounds.
Claims 5 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over White (U.S. Patent 9,436,942), Stone et al. (U.S. Patent Application Publication 2017/0316491), and Maeng et al. (U.S. Patent 10,075,300) as applied to claim 1 above (for claim 5) and claim 11 above (for claim 15), and further in view of Linden et al. (U.S. Patent 6,360,254). Linden discloses (column 5, lines 22-41, emphasis added), “In one embodiment, the issued tokens (and thus the private URLs) automatically expire following a predetermined time period, such as 3 days. This may be accomplished, for example, by encoding time information (such as a creation or expiration time/date) into the tokens, or by storing such time information in a look-up table. The tokens may additionally be caused to expire after a pre-specified number of uses. For example, if the information is sufficiently sensitive, the URL may be set to expire after a single access to the private Webpage. Upon the expiration of a user’s private URL, a new URL may be generated automatically and conveyed to the user (such as by email). Alternatively, the URLs may be generated and conveyed to the user when the user performs a particular type of action on a Website, such as submitting a form. Providing URLs which automatically expire further enhances security by (a) limiting the utility of a valid URL that is discovered by improper means, and (b) in implementations in which replacement URLs are not immediately generated upon expiration, reducing the number of valid tokens.” Hence, it would have been obvious to one of ordinary skill in the art of electronic commerce on the date of inventors’ earliest priority for the link to have an associated expiry time, and for the token provider selection interface to be accessible via the link only before the expiry time, for at least the stated advantages of enhancing security by limiting the utility of a valid link that is discovered by improper means, and by reducing the number of valid tokens.
As per claim 15, this is a method claim parallel to system claim 5, and obvious on the same grounds.
Claims 6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over White (U.S. Patent 9,436,942), Stone et al. (U.S. Patent Application Publication 2017/0316491), and Maeng et al. (U.S. Patent 10,075,300) as applied to claim 2 above (for claim 6) and claim 12 above (for claim 16), and further in view of Schimke et al. (U.S. Patent Application Publication 2018/0053243). As per claim 6, White discloses payment for the value storage token (for example, Abstract, emphasis added), “A consumer buys a variable gift card from a service provider for a set amount, pays the service provider that amount, and the service provider holds the amount in escrow.” White further discloses “a consumer mobile device 300 in communication with gift card server 320” (column 6, lines 40-41), and further describes the consumer mobile device 300 and how it is used in column 6, lines 45-66). However, White does not disclose that processing the transaction associated with the order for the value storage token comprises posting, to a consumer account associated with a client device, a charge in connection with the order. Schimke teaches (paragraph 20, emphasis added), “In addition, FIG. 1 depicts a gift-sender computing device 114, a gift-recipient computing device 116, and a gift-transfer service 118 that communicates with devices 114 and 116 by way of a network 120 (e.g., PAN, WAN, LAN, MAN, and the like). FIG. 1 also depicts a payment system 130 that helps facilitate payment for a digital gift transferred from the gift sender to the gift recipient.” See also Figure 1 and Figure 5C of Schimke. Schimke further teaches (paragraph 64, emphasis added), “Using the gift-sender mobile device 114 and the first copy of the gift-transfer application 122, a digital gift may be selected (e.g., input of monetary amount or selection of digital media or digital experience), and a financial amount may be selected to provide payment for the digital gift (e.g., by debiting a selected financial account). The first copy of the gift-transfer application produces a transaction-details interprocess communication 724 that includes a financial account identifier and an amount to be paid for the digital gift, which is transmitted 726 to the payment system 130.” Schimke yet further teaches (paragraph 65, emphasis added), “The payment system 130 facilitates 728 payment from the financial account that was selected, and provides 728 payment confirmation 730 to the first copy of the gift-transfer application 122.” Hence, it would have been obvious to one of ordinary skill in the art of electronic commerce on the date of inventors’ earliest priority for processing the transaction associated with the order for the value storage token to comprise posting, to a customer account associated with a client device, a charge in connection with the order, for such obvious advantages as arranging payment for a gift card, and providing records of charges for gifts.
As per claim 16, this is a method claim parallel to system claim 6, and obvious on the same grounds.
Claims 8 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over White (U.S. Patent 9,436,942), Stone et al. (U.S. Patent Application Publication 2017/0316491), and Maeng et al. (U.S. Patent 10,075,300) as applied to claim 2 above (for claim 8) and claim 12 above (for claim 18), and further in view of Chu et al. (U.S. Patent Application Publication 2005/0165641). As per claim 8, White does not disclose that the digital representation of the value storage token is included in a second message that is sent to the messaging address associated with the recipient, the second message including an indication of a sender of the value storage token. However, Chu teaches (paragraph 91, emphasis added), “The payment server also sends an e-mail message to the recipient’s e-mail address informing the recipient of the arrival of the gift certificate in the recipient’s payment service account. This e-mail message may contain information identifying the sender of the gift certificate, the merchant or commerce server web site where the gift certificate may be redeemed, and information associated with the use of the payment service to redeem the gift certificate. Much of this information may be provided within the e-mail message itself, within web pages accessed using hyperlinks included within the e-mail message, and a combination of these two arrangements.” Second messages, or multiple messages to the same person or device, are well-known, as disclosed, for example, by White. Specifically, White discloses (column 6, lines 51-66, emphasis added), “Consumer mobile device 300 then forwards the variable gift card S354 to recipient mobile device 310. Once received, recipient mobile device 310 communicates with gift card server 320 to activate the variable gift card S355. Gift card server 320 then offers the recipient an option to switch merchants S355. Recipient mobile device 310 sends the selection of the desired merchant S357 to gift card server 320. Gift card server 320 then requests the recipient to confirm the desired merchant S358. Recipient mobile device 310 sends a final confirmation S359 to gift card server 320. Gift card server 320 then transfers the amount S360 to desired merchant 326. Desired merchant 326 sends confirmation of the activation S361 to gift card server 320, which forwards the activation S362 to recipient mobile device 310.” It may also be noted that claims 8 and 18 do not explicitly require that the second message be distinct from the first message. Hence, it would have been obvious to one of ordinary skill in the art of electronic commerce on the date of inventors’ earliest priority for the digital representation of the value storage token to be included in a second message that is sent to the messaging address associated with the recipient, the second message including an indication of a sender of the value storage token, for at least the obvious advantage of enabling a recipient to know who has sent him a value storage token, and therefore to make appropriate expressions of gratitude.
As per claim 18, this is a method claim parallel to system claim 8, and obvious on the same grounds.
Non-Obvious Subject Matter
Claim 9 is rejected under 35 U.S.C. 101, rejected for Double Patenting, objected to as being dependent upon a rejected base claim, and objected to for informalities, but recites non-obvious subject matter.
Claim 19 is rejected under 35 U.S.C. 101, rejected for Double Patenting, objected to as being dependent upon a rejected base claim, and objected to for informalities, but recites non-obvious subject matter.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record, White (U.S. Patent 9,436,942), discloses limitations of claims 1 and 2 and parallel claims 11 and 12, with another limitation being taught by Stone et al. (U.S. Patent Application Publication 2017/0316491), and Maeng et al. (U.S. Patent 10,075,300) teaching a second further limitation. However, White does not disclose that the digital representation of the value storage token is sent to the messaging address only in response to verifying that the transaction was successfully processed, and neither Stone, nor Maeng, nor any other prior art of record supplies the deficiency of White.
Claim 10 is rejected under 35 U.S.C. 101, rejected for Double Patenting, objected to as being dependent upon a rejected base claim, and objected to for an informality, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, but recites non-obvious subject matter.
Claim 20 is rejected under 35 U.S.C. 101, for Double Patenting, objected to as being dependent upon a rejected base claim, and objected to for an informality, but recites non-obvious subject matter.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record, White (U.S. Patent 9,436,942), discloses limitations of claim 1 and parallel claim 11, with another limitation being taught by Stone et al. (U.S. Patent Application Publication 2017/0316491), and Maeng et al. (U.S. Patent 10,075,300) teaching a second further limitation. However, White does not disclose that the unique code is generated responsive to receiving a request to process an order for the value storage token, the request indicating order parameters identifying one or more supported token providers in connection with the value storage token, and neither Stone, nor Maeng, nor any other prior art of record supplies the deficiency of White.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Sachs (U.S. Patent 6,240,397) discloses a method for transferring, receiving, and utilizing electronic gift certificates. Cohen et al. (U.S. Patent 7,627484) disclose a method and apparatus for managing and displaying user authorization for a business process managed using a state machine. Cole (U.S. Patent 8,445,816) discloses a modular process list for a welding power supply. Miller et al. (U.S. Patent 9,565,186) disclose a method and system for product restocking using machine-readable codes. Glass et al. (U.S. Patent 9,785,992) disclose a gift ordering system and method. Isaacson et al. (U.S. Patent 10,121,127) disclose a system and method for processing group gift cards. Henderson (U.S. Patent 10,229,412) discloses using card present transaction data to generate a payment transaction account. Wescoe et al. (U.S. Patent 10,243,904) disclose determining authenticity of reported user action in cybersecurity risk assessment. Lin et al. (U.S. Patent 10,402,792) is the patent issued on the application published as U.S. Patent Application Publication 2017/0046651, and used in making several of the rejections under 35 U.S.C. 103 set forth above. Erez et al. (U.S. Patent 10,769,707) disclose gift transaction system architecture. Soriano et al. (U.S. Patent 10,915,876) disclose an application program interface for conversion of stored value cards. Hathaway et al. (U.S. Patent 11,184,337) disclose a system and method for encryption, storage, and transmission of digital information. Stone et al. (U.S. Patent 11,210,729) is the patent issued on the application published as U.S. Patent Application Publication 2017/0316491, and used in making the rejections under 35 U.S.C. 103 set forth above. Pronski (U.S. Patent 11,429,942) has been considered for possible double patenting (rejections not made). Pronski et al. (U.S. Patent 11,928,670) has been considered for possible double patenting (rejections not made). Pronski et al. (U.S. Patent 12,475,480) has been considered for possible double patenting (rejections not made). Pronski et al. (U.S. Patent 12,531,169) has been considered for possible double patenting (rejections not made).
Cohen et al. (U.S. Patent Application Publication 2003/0050885) disclose a method and apparatus for managing and displaying user authorization for a business process managed using a state machine. Cole (U.S. Patent Application Publication 2011/0114611) discloses a modular process list for a welding power supply. Dessert et al. (U.S. Patent Application Publication 2011/0218907) disclose a system and method for creating and managing a shared stored value account associated with a client device. Small (U.S. Patent Application Publication 2012/0209748) discloses devices, systems, and methods for providing gift selection and gift redemption services in an e-commerce environment over a communication network. Linden et al. (U.S. Patent Application Publication 2013/0211954) disclose a method for enabling a gift transaction. White (U.S. Patent Application Publication 2013/0246209) discloses flexible mobile gift cards. Linden et al. (U.S. Patent Application Publication 2013/0297493) disclose a method for enabling gift prepay. Orellana (U.S. Patent Application Publication 2014/0122282) disclose a system and method for mobile gift distribution. Begg (U.S. Patent Application Publication 2014/0279282) discloses a system for conducting electronic commerce. Isaacson et al. (U.S. Patent Application Publication 2014/0337182) disclose a system and method for processing gifts from a giver to a recipient. Rodell (U.S. Patent Application Publication 2014/0372251) discloses a web-based gifting solution with browsable gift gallery and selectable price point. Batstone et al. (U.S. Patent Application Publication 2015/0302493) disclose interactive transactions. McDermott (U.S. Patent Application Publication 2015/0348167) disclose electronic commerce social gifting. Reddy et al. (U.S. Patent Application Publication 2016/0239827) disclose systems and methods for gift card exchange. Schölzki (U.S. Patent Application Publication 2019/0073664) disclose systems and methods for generating and processing a gift transaction. Soriano et al. (U.S. Patent Application Publication 2019/0197504) disclose an application program interface for conversion of stored value cards. Glass et al. (U.S. Patent Application Publication 2019/0392508) discloses a personalized webpage gifting system. Hathaway et al. (U.S. Patent Application Publication 2021/0092102) disclose a system and method for encryption, storage, and transmission of digital information. Pronski et al. (U.S. Patent Application Publication 2022/0222654) has been considered for possible double patenting (rejections not made). Ma et al. (U.S. Patent Application Publication 2023/0252516) has been considered for possible double patenting (rejections not made). Pronski et al. (U.S. Patent Application Publication 2024/0185225) has been considered for possible double patenting (rejections not made).
The anonymous article, “First Data Releases Additions to eGift SocialSM Marketplace,” discloses sending virtual gift cards to recipients.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS D ROSEN, whose telephone number is (571)272-6762. The examiner can normally be reached 9:00 AM-5:30 PM, M-F.
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, 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. Non-official/draft communications may be faxed to the examiner at 571-273-6762, or emailed to Nicholas.Rosen@uspto.gov (in the body of an email, please, not as an attachment).
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NICHOLAS D ROSEN/ Primary Examiner, Art Unit 3689 September 29, 2026
Prosecution Insights