DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
This action is responsive to claims filed 03/20/2026 and Applicant’s communication regarding application 14/213693 filed 03/20/2026.
Claims 1-23 have been examined with this office action.
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 1-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of selecting, distributing, redeeming, and reconciling offers and rewards to cardholders and/or program participants without significantly more.
Subject Matter Eligibility Standard
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. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v.CLS Bank International, et al., 573 U.S. _ (2014) as provided by the interim guidelines FR 12/16/2014 Vol. 79 No. 241.
Analysis
Step 1, the claimed invention must be to one of the four statutory categories. 35 U.S.C. 101 defines the four categories of invention that Congress deemed to be the appropriate subject matter of a patent: processes, machines, manufactures and compositions of matter. In this case independent claims 1 and 16 and all claims which depend from it are directed toward a method, and independent claim 10 and all claims which depend from it are directed toward a system. As such, all claims fall within one of the four categories of invention deemed to be the appropriate subject matter.
Step 2A Prong 1, Under Step 2 A, Prong 1 of the 2019 Revised § 101 Guidance, it is determined whether the claims are directed to a judicial exception such as a law of nature, a natural phenomenon, or an abstract idea (See Alice, 134 S. Ct. at 2355) by identify the specific limitation(s) in the claim that recites abstract idea(s); and then determine whether the identified limitation(s) falls within at least one of the groupings of abstract ideas enumerated in the 2019 PEG.
Specifically, claim 1 comprises inter alia the functions or steps of “A computer-implemented method for providing electronic offers via the Internet to drive consumer traffic to a merchant's physical store, the method comprising a plurality of microprocessor executing a plurality of software applications for:
receiving, by at least one of the plurality of microprocessors, a request to create an electronic offer which associates a value token with a financial transaction, wherein the electronic offer is associated with at least one of a plurality of content providers, wherein the request to create is from a party other than the at least one of the plurality of content providers, and wherein the request is received from a financial institution; creating, by the at least one of the plurality of microprocessors, the electronic offer for presentation to a consumer which associates the value token with the financial transaction, wherein the financial transaction is specific to at least one of a value, a retailer, a location, a date, a time, a method of payment, or combinations thereof, wherein the electronic offer comprises dynamic content generated via a transformation of data, wherein transformation of data comprises producing a displayable output from non-displayable raw data; generating, by the at least one of the plurality of microprocessors, a list of the electronic offers, wherein the list of electronic offers comprises the electronic offer which associates the value token with the financial transaction; retrieving, by the at least one of the plurality of microprocessors, the list of the electronic offers; returning, by the at least one of the plurality of microprocessors, the list of the electronic offers to the financial institution; receiving, by the at least one of the plurality of microprocessors from the financial institution, an identification of a first electronic offer from the list of the electronic offers for a first consumer; sending, by the at least one of the plurality of microprocessors, the first electronic offer to the first consumer via the Internet, wherein the first electronic offer displayed to the consumer via a personal computer, a laptop, a handheld device. a mobile phone, of combinators thereof;
receiving, by the at least one of the plurality of microprocessors, a confirmation that the first consumer has completed the financial transaction at the merchant's physical store; and associating, by the at least one of the plurality of microprocessors, based upon the confirmation, the first value token with the first consumer”.
Claim 10 comprises inter alia the functions or steps of “A system for implementing a computer-implemented method for providing electronic offers via the Internet to drive consumer traffic to a merchant's physical store, comprising: a plurality of microprocessors executing a plurality of software applications, wherein at least one of the plurality of microprocessors also;
receives a request to create an electronic offer for presentation to a consumer which associates a value token with a financial transaction, wherein the electronic offer is associated with at least one of a plurality of content providers, wherein the request to create is from a party other than the at least one of a plurality of content providers, and wherein the financial institution is the party other than the at least one of a plurality of content providers; creates the electronic offer which associates the value token with the financial transaction, wherein the financial transaction is specific to at least one of a value, a retailer, a location, a date, a time, a method of payment, or combinations thereof, wherein the electronic offer comprises dynamic content generated via a transformation of data, wherein transformation of data comprises producing a displayable output from non-displayable raw data; develops a list of the electronic offers, wherein the list of the electronic offers comprises the electronic offer which associates the value token with the first financial transaction; returns the list of the electronic offers to the financial institution; receives, from the financial institution, an identification of a first electronic offer from the list of the electronic offers for a first consumer; sends the first electronic offer to the first consumer via the Internet, wherein the first electronic offer displayed to the consumer via a personal computer, a laptop, a handheld device. a mobile phone, of combinators thereof; receives a confirmation that the first consumer has completed the financial transaction at the merchant's physical store; and causes the first value token to be associated with the first consumer”.
Claim 16 comprises inter alia the functions or steps of “A computer-implemented method for providing electronic offers via the Internet to drive consumer traffic to a merchant's physical store, the method comprising a plurality of microprocessors executing a software application for:
receiving, by the at least one of the plurality of microprocessors, a request to create an electronic offer for presentation to a consumer which associates a value token with a financial transaction, wherein the electronic offer is associated with at least one of a plurality of content providers, wherein the request to create is from a party other than the at least one of the plurality of content providers, and wherein the request is received from a financial institution; creating, by the at least one of the plurality of microprocessors, the electronic offer which associates the value token with a financial transaction, wherein the financial transaction is specific to at least one of a value, a retailer, a location, a date, a time, a method of payment, or combinations thereof, wherein the electronic offer comprises dynamic content generated via a transformation of data, wherein transformation of data comprises producing a displayable output from non-displayable raw data; developing, by the at least one of the plurality of microprocessors, a list of the electronic offers, wherein the list of the electronic offers comprises (i) the electronic offer which associates the value token with a first financial transaction and (ii) a second value token associated with a second financial transaction, wherein each of the first financial transaction and the second financial transaction is specific to at least one of a value, a retailer, a location, a date, a time, a method of payment, or combinations thereof;
returning, by the at least one of the plurality of microprocessors, the list of the electronic offers to the financial institution; receiving, by the at least one of the plurality of microprocessors from the financial institution, an identification of a first electronic offer from the list of the electronic offers for a first consumer; sending, by the at least one of the plurality of microprocessors, the first electronic offer to the first consumer via the Internet, wherein the first electronic offer displayed to the consumer via a personal computer, a laptop, a handheld device. a mobile phone, of combinators thereof; receiving, by the at least one of the plurality of microprocessors, a confirmation that the first consumer has completed the first financial transaction at the merchant's physical store; and associating, by the at least one of the plurality of microprocessors, based upon the confirmation, the first value token with the first consumer”.
Those claim limits in bold are identified as claim limitations which recite the abstract idea, while those that are un-bolded are identified as additional elements.
The cited limitations as drafted are systems and methods that, under their broadest reasonable interpretation, covers performance of a method of organizing human activity, but for the recitation of the generic computer components. Further, none of the limitations recite technological implementations details for any of the steps but, instead, only recite broad functional language being performed by the generic use of at least one processor. Selecting, distributing, redeeming, and reconciling offers and rewards to cardholders and/or program participants is a fundamental economic practice long prevalent in commerce systems. If a claim limitation, under its broadest reasonable interpretation, covers a fundamental economic principle or practice but for the general linking to a technological environment, then it falls within the organizing human activity grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A Prong 2, Next, it is determined whether the claim is directed to the abstract concept itself or whether it is instead directed to some technological implementation or application of, or improvement to, this concept, i.e., integrated into a practical application. See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S. 175 (1981). The mere introduction of a computer or generic computer technology into the claims need not alter the analysis. See Alice, 573 U.S. at 223—24. “[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea on a generic computer.” Alice, 573 U.S. at 225.
In the present case, the judicial exception is not integrated into a practical application. The claim limitations are not indicative of integration into a practical application by claiming an improvement to the functioning of the computer or to any other technology or technical field. Further, the claim limitations are not indicative of integration into a practical application by applying or using the judicial exception in some other meaningful way.
In particular, the claims contain the following additional elements: a computer ;
electronic/ dynamic; the Internet; microprocessor executing a software application; wherein the software application configures the microprocessor to directly access a database, wherein the at least one of the plurality of software applications configures a microprocessor of an Electronic Data Interchange farm to directly access a database, wherein the directly accessing the database increases efficiency of the microprocessor in data processing and storage compared to the microprocessor configured for non-direct access; a personal computer, a laptop, a handheld device. a mobile phone, of combinators thereof; . However, the specification description of the additional elements a computer ([0043] “…any other computing device capable of running World-Wide Web client applications (e.g. web browsers)”);
electronic/ dynamic (interpreted as performing the step/function within the technological environment); the Internet ([0043] “…an enterprise infrastructure
102 operable to communicate over the Internet 104 and over secure network connections 106, which may include connections over the Internet 104 or over any suitable widearea network (WAN) (e.g. telecommunications networks)…”); microprocessor executing a software application ([0160]); a personal computer, a laptop, a handheld device. a mobile phone, of combinators thereof ([0040] [0043-0044]) are at a high level of generality using exemplary language or as part of a generic technological environment and are functions any general purpose computer performs such that it amount no more than mere instruction to apply the exception to a particular technological environment. Further, none of the limitations recite technological implementations details for any of the steps but, instead, only recite broad functional language being performed by the generic use of at least one processor. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaning limits on practicing the abstract idea. Thus, the claim is directed toward an abstract idea.
Step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more that the abstract idea(s). As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a processor to perform the abstract idea(s) amounts to no more than mere instructions to apply the exaction using a generic computer component. Mere instruction to apply an exertion using a generic computer component cannot provide an inventive concept. These generic computer components are claimed at a high level of generality to perform their basic functions which amount to no more than generally linking the use of the judicial exception to the particular technological environment of field of use (Specification as cited above for additional elements) and further see insignificant extra-solution activity MPEP § 2106.05 I. A. iii, 2106.05(b), 2106.05(b) III, 2106.05(g). Thus, the claims are not patent eligible.
As for dependent claims 3-10, 13, 14, and 16-19 these claims recite limitations that further define the same abstract idea using previously identified additional elements noted from the respective independent claims from which they depend. Therefore, the cited dependent claims are considered patent ineligible for the reasons given above.
As for dependent claims 21-23, these claims recite limitations that further define the same abstract idea using previously identified additional elements noted from the respective independent claims from which they depend. In addition, the cited dependent claims recite the additional elements:
virtual private network.
However, the specification description of the additional elements virtual private network ([0068][0152]) are at a high level of generality using exemplary language or as part of a generic technological environment and are functions any general purpose computer performs such that it amount no more than mere instruction to apply the exception to a particular technological environment. Even in combination, these additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. Therefore, the cited dependent claims are ineligible.
Prior Art
The claims overcome the prior art of record such that none of the cited prior art reference’s disclosures can be applied to form the basis of a 35 USC § 102 rejection nor can they be combined to fairly suggest in combination, the basis of a 35 USC § 103 rejection when the limitations are read in the particular environment of the claims. Therefore, the claims may be allowable if amended to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph and 35 U.S.C. 101, set forth in this Office action.
Response to Arguments
Applicant's arguments with regards to claims have been fully considered but they are not persuasive.
EXAMINER’S RESPONSE TO APPLICANT REMARKS CONCERNING Claim Rejections - 35 USC § 101: Applicant's arguments with regards to 35 USC § 101 have been fully considered but are not persuasive. Regarding the amended claim limitation “wherein transformation of data comprises producing a displayable output from non-displayable raw data”, this claim limitation claims the abstract idea of producing data. Applicant cites paragraph [0066] which describes at a high level of generality the functionally objectives of a dynamic web farm. There is no described or claimed improvement to dynamic web farming in the specification or claims.
Regarding applicant’s argument that the standard is “certain methods of organizing human activity”, it is clear from the MPEP that the addition of abstract claim limits, even if novel, to an abstract idea (a fundamental economic practice) does not make the abstract idea any less abstract and therefore, are still rendered patent ineligible.
The examiner disagrees with Applicant argument that the claims are not directed to an abstract idea as the pending claims recite a "microprocessor" operating and performing the claimed methods and are undoubtedly a machine. The microprocessor have been addressed as an additional element under Step 2B, Prong 2 and is merely applied to the abstract idea of the claims as a too. The applicant further argues that “instant claims are directed to human operation of machines”. However, none of the claim limitation involve a human element. Certainly, this is not the case of the system claims since this would invoke a 112(b) rejection because human elements cannot be part of a system claim. Further, the arguments appear to support the examiner’s position that the this is certain methods of human activity (human operation of machines). However, since none of the claim limitations involve a human element, this argument is moot.
Regarding applicant’s argument directed toward the manufacture, microprocessor, and particular machine (pages 27-30) executing the programming and instructions integrate the abstract idea into a practical application. This is not persuasive. As noted in the rejection, the microprocessor was not identified as the abstract idea, but was identified as an additional element that is merely being applied as a tool to implement the abstract idea. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 ( Fed. Cir. 2016) (cellular telephone); TL! Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures | LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016).
Regarding applicant’s argument directed toward a merchant’s physical store, this argument is moot since a physical store is not recited within the claims.
Applicants arguments directed toward “transformation” is moot since this is not the current test for patent eligibility and there is no physical transformation claimed. Transformation of data is not a physical transformation.
Regarding Applicant's arguments that the claimed microprocessor is a particular machine, these arguments are not persuasive. In view of the specification, there is no evidence or support that the claimed machines are particular machines but instead are merely generic computer components (see at least specification [00161]). With regard to applicant's arguments that the electronic offer comprises dynamic content generated via a transformation of data constitutes a transformation to a different state or thing, this argument is not persuasive. Per MPEP 2106.05, for data, mere "manipulation of basic mathematical constructs [i.e.,] the paradigmatic ‘abstract idea," has not been deemed a transformation. CyberSource v. Retail Decisions, 654 F.3d 1366, 1372 n.2, 99 USPQ2d 1690, 1695 n.2 (Fed. Cir. 2011) ( quoting In re Warmerdam, 33 F.3d 1354, 1355, 1360, 31 USPQ2d 1754, 1755, 1759 (Fed. Cir. 1994)).
Regarding applicant’s arguments directed toward displaying via network terminal, transmitting and displaying data on a terminal is not a physical transformation. Further, the terminal and network are merely applied to the abstract idea of the claims.
Regarding applicant's arguments that the lack of prior art rejection is evidence that a specific limitation other than what is well-understood routine and conventional in the field has been satisfied (remarks, pages 37-39), this argument is not persuasive. The question of whether a particular claimed invention is novel or obvious is “fully apart" from the question of whether it is eligible. Diamond v. Diehr, 450 U.S. 175, 190, 209 USPQ 1, 9 (1981). With regard to applicant's arguments with regard to a particular machine under Step 2B, (remarks page 37-44) these arguments are not persuasive. As stated previously, the claimed computer components are merely generic computer components. It is important to note that a general purpose computer that applies a judicial exception, such as an abstract idea, by use of conventional computer functions does not qualify as a particular machine. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 ( Fed. Cir. 2014). Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 223-24, 110 USPQ2d 1976, 1983-84 (2014). See In re Alappat, 33 F.3d 1526, 1545, 31 USPQ2d 1545, 1558 (Fed. Cir. 1994); In re Bilski, 545 F.3d 943, 88 USPQ2d 1385 (Fed. Cir. 2008). As explained previously the claimed transformation does not meet the requirement of the factor under Step 2B for effecting a transformation or reduction of a particular article to a different state or thing as it is merely data manipulation. The arguments with regard to improvement to another technology or technical field (remarks page 45-51) are not persuasive as there is no evidence a technical field or technology is being alleged to be improved, merely applying generic computer functions. As such, the examiner maintains the rejection.
Conclusion
For prior art made of record and not relied upon is considered pertinent to applicant's disclosure see Notice of References Cited items A-F submitted 04/15/2024 used as prior art and in the conclusion section in the office action submitted 04/15/2024.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Gregory A Pollock whose telephone number is (571) 270-1465. The examiner can normally be reached M-F 8 AM - 4 PM.
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, Abhishek Vyas can be reached on 571 270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gregory A Pollock/Primary Examiner, Art Unit 3691
04/03/2026
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