Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 1-20 are currently pending and are presented for examination on the merits.
Priority
Applicant's claim for the benefit of U.S. patent application 17/988,010 filed 11/16/2022 under 35 U.S.C. 120 is acknowledged.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 8/22/2025 was filed before the filing of a first office action on the merits. As such, the submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Objections
Specification
The background fails to convey what should be conveyed. See, MPEP § 608.01(c). The specification should set forth the Background of the Invention in two parts: . . . (2) Description of the Related Art including information disclosed under 37 CFR 1.97 and 37 CFR 1.98: A description of the related art known to the applicant and including, if applicable, references to specific related art and problems involved in the prior art which are solved by the applicant’s invention. This item may also be titled “Background Art.”
The use of trademarks, such as “Intel," [0053], has been noted in this application. All trademarks should be CAPITALIZED wherever they appear (or include a proper trademark symbol) and be accompanied by the generic terminology. Although the use of trademarks is permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as trademarks. MPEP 608.01(v).
The abstract of the disclosure is objected to for regurgitating the broadest claim verbatim. A brief narrative of the disclosure as a whole is required. See MPEP § 608.01(b). The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. The language should be clear and concise and should not repeat information given in the title.
Claim objections
Claim 10 is objected to because it is unclear; please consider using “. . . , wherein . . .” format, or other language/punctuation marks (e.g., a comma) to clarify the scope.
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 they recite non-patentable subject matter under MPEP § 2106, e.g., the 2019 PEG, October update. The claimed invention is directed to a judicial exception (e.g., an abstract idea, etc.) without practical application or significantly more.
More particularly, when considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Broad categories of abstract ideas include fundamental economic practices, certain methods of organizing human activities, an idea itself, and mathematical relationships/formulas. See, generally Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,132 S. Ct. 1289, 1294, 1297-98 (2012)); Federal Register notice titled 2014 Interim Guidance on Patent Subject Matter Eligibility (79 FR 74618), which is found at: http:// www. gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf; 2015 Update to the Interim Guidance; the 2019 Revised Patent Subject Matter Eligibility Guidance, Fed. Reg., Vol. 84, No. 4, January 7, 2019; and associated Office memoranda.
Under MPEP § 2106, Step 2a-prong 1, Claims 1-20 recite a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle). More particularly, the entirety of the method steps is directed towards the management of stored-value cards, including maintaining a database thereof (including identifiers, balance, etc.) to enable a customer to purchase, store and redeem one or more stored-value cards, as well as batch transferring of data, and enabling selective access to data in a data-record. These are long-standing commercial practices previously performed by humans (e.g., merchants, etc.) manually and via generic computing. For example, merchants have long stored a plurality of physical stored-value cards in their possession for purchase by consumers, and upon purchase assigned the associated balance thereto, kept a record of said balance associated with the card’s identifier, and received said cards upon redemption by the consumer or another (e.g., gifted the card). Further, merchants (and other entities) have long transferred data in batches and to more accessible storage locations/databases/records, etc. As such, the inventions include an abstract idea under § 2106, and Alice Corporation.
Under step 2a-prong 2, the claims fail to recite a practical application of the exception, because the extraneous limitations (e.g., the structure—processor, server, computing device, database, an amount of data in the record trigger, a network traffic trigger, etc.) merely add insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g), generally link the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)) and/or generally instruct an artisan to apply it (the method) across generic computing technology. A claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit. See Alice, 573 U.S. at 222; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014). That is to say, the claims are not directed to a new software or computer, but rather employs pre-existing software in do what’s been previously done. “[I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (citations omitted). More particularly, the claims fail to recite an improvement to the functioning of a computer or technology (under MPEP § 2106.05(a)), the use of a particular machine (under § 2106.05(b)), effect a transformation or reduction of a particular article (§ 2106.05(c)), or apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (§ 2106.05(e)).
Under part 2b, the additional elements offered by the independent and dependent claims either further delineate the abstract idea, recite insignificant extra-solution activity, or instruct the artisan to apply it (the abstract idea) across generic computing technology. The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because no one claim effects an improvement to another technology or technical field, an improvement to the functioning of a computer itself, or move beyond a general link of the use of the abstract idea to a particular technological environment. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Under Alice, merely applying or executing the abstract idea on one or more generic computer system (e.g., a computer system comprising a generic database; a generic element (NIC) for providing website access, etc.; a generic element for receiving user input; and a generic display on the computer, in any of their forms) to carry out the abstract idea more efficiently fails to cure patent ineligibility. See, e.g., Content Extraction, 776 F.3d at 1347 (claims reciting a “scanner” are nevertheless directed to an abstract idea); Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea).
Courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: performing repetitive calculations, receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data, MPEP 2106.05(d), wherein the italicized tasks are particularly germane to the instant invention.
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 are summarized as follows:
a. Determining the scope and contents of the prior art.
b. Ascertaining the differences between the prior art and the claims at issue.
c. Resolving the level of ordinary skill in the pertinent art.
d. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-20 are rejected under 35 U.S.C. §103 as being unpatentable over US 2021/0192867 to Fang et al., alone.
With respect to Claims 1, 13, and 20, Fang teaches a non-transitory computer-readable medium (FIG. 1;[0852]), a computer-implemented method (See, figures depicting flowcharts, e.g., FIGS. 26, 30, 86, etc.), and a server computer system comprising: a communications module (Abstract; [0010]; FIGS. 1-5; a processor coupled with the communications module (FIGS. 3, 5A)); and a memory ([0261]) coupled to the processor and storing processor-executable instructions which, when executed by the processor, configure the processor to: store data in a network-restricted data record that is inaccessible to a remote computing device ([0010];[0418], permissions; [0583], off-vehicle); determine a trigger condition (FIG. 5B) based on at least one of determining that an amount of the data in the network-restricted data record exceeds a first threshold or determining that an amount of network traffic is below a second threshold ([0583], available resources, “selectively processing . . . in batches”); and responsive to determining the trigger condition, transfer at least a portion of the data from the network-restricted data record to a network-unrestricted data record (cloud storage) accessible to the remote computing device ([0583]).
Fang fails to expressly use the exact terms, such as “a remote computing device,” and “network restricted data record,” etc. However, the terms are not defined and Applicant does not act as his own lexicographer in the specification. As such, the terms of the claims are afforded their ordinary meaning in light of the specification; and verbatim disclosure is not required. It is understood that a vehicle (teaches, by definition, a remove computing device), and denying access to data storage based on permissions (is a restricted data record), etc., plus other equivalences offered herein. The difference in scope between the system of Fang and the instant invention is deemed obvious. Dann v. Johnson, 425 U.S. 219, 230 (1976) (The "mere existence of differences between the prior art and an invention does not establish the invention's non-obviousness"); KSR International (e.g., obvious to try, simple substitute, etc.). As such, it would have been obvious to one of ordinary skill in the art to modify Fang to achieve the recited inventions, because the system in Fang is equivalent thereto though described differently.
With respect to Claims 2, and 14, Fang teaches wherein the processor-executable instructions, when executed by the processor, further configure the processor to: obtain, via the communications module (FIGS. 3,5A), data from another computing device identifying a data object ([0239], data store 320) and an associated value (Abstract).
With respect to Claims 3, and 15, Fang teaches wherein the processor-executable instructions, when executed by the processor, further configure the processor to: create a data record associated with the data object; and store the associated value in the data record. ([0239], data store 320)
With respect to Claim 4, Fang teaches wherein when creating the data record, the processor-executable instructions, when executed by the processor, further configure the processor to: retrieve, from a database ([0239]), a template ([0618-20]); obtain an image ([0410];[0623]); generate a machine-readable code ([0285], code generation tool); and populate the template at least by populating a first interface element of the template with the image and a second interface element of the template with the machine-readable code ([0247];[0667], machine code).
With respect to Claim 5, Fang teaches wherein the processor-executable instructions, when executed by the processor, further configure the processor to: provision a mobile application resident on the other computing device with the populated template. ([0422])
With respect to Claim 6, Fang teaches wherein the processor-executable instructions, when executed by the processor, further configure the processor to: store the populated template in a database in association with an account accessible via a mobile application ([0247];[0599]).
With respect to Claims 7, and 16, Fang teaches wherein the network-restricted data record tracks a cumulative value associated with usage events of the data by the remote computing device ([0527], accumulate the collected data).
With respect to Claims 8, and 17, Fang teaches wherein when determining the trigger condition, the processor-executable instructions, when executed by the processor, further configure the processor to: simultaneously compare the amount of data in the network-restricted data record to the first threshold and the amount of the network traffic to the second threshold ([0494];[0804]).
With respect to Claims 9, and 18, Fang teaches wherein the transfer of the portion of the data from the network-restricted data record to the network-unrestricted data record is performed in a batch transfer to reduce network traffic. [0583]
With respect to Claim 10, Fang teaches wherein the network-restricted data record is inaccessible to the remote computing device by way of an access control list or a permissions configuration enforced by the server computer system. ([0225];[0418], permissions)
With respect to Claims 11, and 19, Fang teaches wherein the processor-executable instructions, when executed by the processor, further configure the processor to: monitor the network traffic by engaging a network analyzer to determine bandwidth availability on a communications network. [0103];[0300];[0355]
With respect to Claim 12, Fang teaches wherein the trigger condition is determined only when the amount of the network traffic remains below the second threshold for a predetermined duration. ([0668], duration of data collection; [0764], timing trigger)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J JACOB whose telephone number is (571)270-3082. The examiner can normally be reached on M-F 8:00-5:00, alternating Fri. off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Gart can be reached on 5712723955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM J JACOB/Examiner, Art Unit 3696
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