DETAILED ACTION
This communication is in response to the amendment/remarks filed 23 December 2025.
Claims 1 and 16 have been amended.
Claims 1, 5-11, 14, 16, 18-24, and 27 are currently pending.
Claims 1, 5-11, 14, 16, 18-24, and 27 are rejected.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment/Remarks
Regarding 35 USC § 101, Applicant’s remarks have been fully considered but are not persuasive. Applicant argues that “Conventional methods typically required the customer to redeem the instrument only at the same merchant that issued the loyalty points. As indicated in the specification (e.g. pages 6-7 and Figs. 4 to 7) a plurality of graphical display that can be used to guide a customer through a purchase instrument redemption process. In Fig. 4, after logging in his/her user account, the customer can be provided a list of participating (or contracted) merchant in which the purchase instrument may be redeemed. The graphical display can include at least one link to the websites of the plurality of contract merchants, and in some embodiments, the purchase instrument can be redeemed at more than one merchant. The claims therefore do contain additional elements that amount to significantly more than the judicial exception. For at least this reason, the claims are directed to eligible subject matter. Applicants respectfully request withdrawal of this ground of rejection.” Remarks at 9. Applicant also argues that “[t]his is in contrast to prior systems for redeeming purchase instruments that did not allow real time uploads and downloads of information (let alone on a mobile device) as well as periodic uploads and downloads of information and that did not provide an interface configured to display a plurality of card layout templates allowing the customer to customize the purchase instrument at one graphical display.” Remarks at 9. The items pointed to by Applicant such as the use of a graphical display to guide a customer through a purchase is use of a generic computer component to implement the abstract idea. The discussion of a technological solution (to a technological problem) is found in MPEP 2106.05(a). “[T]he disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art.” Note that multiple quality specialists have been consulted with respect to this § 101 rejection. Thus, it is not merely one examiner’s conclusion that the claims and the specification do not contain a technological solution. The disclosure does not provide sufficient details such that one of ordinary skill would recognize the invention as providing an improvement. Examiner does not set what is and is not “sufficient” and a bright line test is not available. However, it does not appear that there is ANY support that a technological improvement exists in the specification. While the present invention may be different than previous systems, that difference is not a technological improvement under the § 101 analysis. See US 2011/0125529 (“Miller”), previously cited, wherein Miller discloses real time and periodic uploads and downloads of information at ¶ 0016. The existence of Miller indicates that the presence of real time and periodic uploads and downloads was not absent from the art prior to the present invention.
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, 5-11, 14, 16, 18-24, and 27 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1
Claims 1, 5-11, and 14 recite a method which is considered a process. Claims 16, 18-24, and 27 recite a system which is considered a machine or manufacture.
Step 2A-Prong One
Claims 1, 5-11, 14, 16, 18-24, and 27 recite a method that allows a user to select a merchant and an amount of points to transfer to a user-customized purchase instrument (see accessing from a mobile device a network interface allowing a user to log into a user account and redeem an amount of loyalty points for a purchase instrument; creating the purchase instrument based on the merchant and loyalty points selection with a processing module, storing the purchase instrument in electronic form, the processing module activating the purchase instrument and updating the amount of loyalty points left in the user account, and sending the customer a link to access the purchase instrument; logging into a user account to redeem an amount of loyalty points, wherein the loyalty points are stored in a user account for a purchase instrument of a merchant, viewing a graphical display that includes at least one link to websites of the plurality of contract merchants, the mobile device or merchant server providing a graphical interface, accessing the graphical interface configured to display a plurality of card layout templates allowing the customer to customize the purchase instrument at one graphical display customizing the purchase instrument, accessing a system computer associated with the purchase instrument redemption system having both real time uploads and downloads of information and periodic uploads and downloads of information and that directs and monitors a request from the user's mobile device to a transaction database and periodically receives data from the contract merchant's server containing information regarding customers' accumulated loyalty points, transferring an amount of value on the purchase instrument back to an amount of loyalty points of the user account allowing the customer to select the merchant among a plurality of contract merchants and determine the amount of redeemed loyalty points by the customer and customize and preview the purchase instrument at one graphical display the processing module storing the purchase instrument in an electronic form and sending the customer a link to access it; and activating the purchase instrument and updating the amount of loyalty points left in the user account, communicating the loyalty points redemption to the selected merchant, and the system transfers an amount of loyalty points from the user account to an amount of value on the purchase instrument, the system configured to be accessed from a mobile device in claim 1, for example). This concept is a commercial interaction and sales activity which falls within the Certain Methods of Organizing Human Activity grouping. Thus, the claims recite an abstract idea.
Dependent claims 5, 8-11, 18, and 22-24 further narrow the above abstract idea by further defining what is meant by a purchase instrument (see the purchase instrument is a gift card, the purchase instrument is a printable coupon, the purchase instrument is a gift certificate, the purchase instrument is a code sent to the customer in an email). These limitations do not take the claims out of the abstract idea grouping. Thus, the claims recite an abstract idea.
The performance of the claim limitations using generic computer components does not preclude the claim limitations from being in the Certain Methods of Organizing Human Activity grouping. Accordingly, the claims recite an abstract idea.
Step 2A-Prong Two
The claims recite the additional elements of storing information in a user account, accessing the user account via a network interface, a computer that directs and monitors a user’s request, and allowing the user to customize a purchase instrument via a graphical interface. The claims as a whole merely describe how to generally “apply” the concept of accessing a user account to customize a purchase instrument. The claimed computer components are recited at a high level of generality and are merely invoked as tools to perform the method steps. Simply implementing the abstract idea on a generic computer including a graphical interface is not a practical application of the abstract idea. Accordingly, the claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits of practicing the abstract idea.
Additionally, the step of “periodically receiv[ing] data from a merchant server containing information regarding customers’ accumulated loyalty points” is mere data gathering which is considered insignificant extra-solution activity and does not integrate the abstract idea into a practical application.
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed previously with respect to Step 2A-Prong Two, the additional element in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. See MPEP 2106.05(f). The claims do not provide an inventive concept (significantly more than the abstract idea).Additionally, the courts have recognized that “receiving or transmitting data over a network, e.g., using the Internet to gather data” in routine, conventional, and well-understood (see MPEP 2106.05(d)). The claims are ineligible.
The courts have determined that mere data gathering is routine, conventional, and well-understood activity when claimed in a merely generic manner. See i. Receiving or transmitting data over a network, e.g., using the Internet to gather data in MPEP 2106.05(d).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEREDITH A LONG whose telephone number is (571)272-3196. The examiner can normally be reached Mon - Fri 9:30 - 6.
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/MEREDITH A LONG/Primary Examiner, Art Unit 3622
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