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 .
Claim Status
The claims filed 3/30/2026 have been entered.
Claims 1-6 and 8-12 are pending.
Claim 1 is independent.
Claim 1 is currently amended.
Claims 2-6 are original.
Claims 8-12 are withdrawn.
Response to Arguments
Applicant's arguments filed 3/30/2026 have been fully considered but they are not persuasive.
35 USC § 101
Applicant’s arguments regarding the rejection of claims 1-6 under 35 USC § 101 have been considered but are not persuasive.
Applicant argues that the claims require a microprocessor and “a setup component … program control memory structure … a rebate fulfillment generator component … a selection component … a rebate fulfillment associator … [and] a first rebate fulfillment control memory structure” to effectuate the claim language. Applicant argues that these claimed components are integral to the claims and are manufactures which constitute a particular machine because they are logic elements which are a type of hardware that performs the various claimed operations (see Remarks, pp. 13-16).
The argument is not persuasive. First, it is noted that while the application of a judicial exception by or with a particular machine is an important clue, it is not a stand-alone test for eligibility (see MPEP 2106.05(b). Nevertheless, the claimed additional elements here do not constitute a particular machine. A general purpose computer that applies a judicial exception, such as an abstract idea, by use of generic 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). See also TLI Communications LLC v. AV Automotive LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (mere recitation of concrete or tangible components is not an inventive concept); Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623, 114 USPQ2d 1711, 1715 (Fed. Cir. 2015) (noting that Alappat’s rationale that an otherwise ineligible algorithm or software could be made patent-eligible by merely adding a generic computer to the claim was superseded by the Supreme Court’s Bilski and Alice Corp. decisions).
With regards to independent claim 1, the additional elements of microprocessor, a setup component, program control memory structure, a rebate fulfillment generator component, a selection component, a rebate fulfillment associator, and a first rebate fulfillment control memory structure do not serve to integrate the identified abstract idea into a practical application under Step 2A Prong Two of the Alice/Mayo test. The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Here, the machine is merely an object on which the method operates (see MPEP 2105.05(b)). Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality.
Applicant further argues that amended independent claim 1 recites a physical stored value card which is “produced” from raw or prepared materials by giving to materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery. Applicant further argues that the card is integral to the claim.
The argument is not persuasive. While the machine-or-transformation test is an important clue to eligibility, it should not be used as a separate test for eligibility. Instead it should be considered as part of the "integration" determination or "significantly more" determination articulated in the Alice/Mayo test. Bilski v. Kappos, 561 U.S. 593, 605, 95 USPQ2d 1001, 1007 (2010). Here, while a physical card necessarily involves transformation of materials, the claim merely recites the card at a high level and does not recite any particular manufacturing process, material treatment, or physical transformation of the card itself. This level of generality does not render the additional element integral to the claim and does not provide integration into a practical application under Step 2A, prong 2.
Therefore, it is maintained that claims 1-6 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application).
Applicant further argues that the rejection improperly analyzes the aforementioned additional elements under Step 2B as opposed to Step 2A Prong 2 (see Remarks, pp. 22-23).
The argument is not persuasive. The rejection adheres to the Alice/Mayo framework as set forth by MPEP 2106. With regards to Step 2A Prong 2, the courts have identified limitations that did not integrate a judicial exception into a practical application as including limitations which are merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea. This includes consideration of whether the claims invoke computers or machinery merely as a tool to perform an existing process and consideration of the particularity or generality of the application of the judicial exception MPEP 2106.05(f). As set forth in the rejection, the computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. The rejection properly includes this consideration under Step 2A of the analysis, and the conclusion from this consideration is carried over to Step 2B. MPEP2106.05(II).
With regards to Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. See Applicant’s specification para. [00230], [00242] about implementation using general purpose computing devices and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more. Accordingly, these additional elements, do not change the outcome of the analysis, when considered separately and as an ordered combination. Thus, claims 1-6 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
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 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claims 1-6 are directed to a system (machine), which is one of the statutory categories of invention. (Step 1: YES).
Step 2A Prong 1
The Examiner has identified independent system 1 as the claim that represents the claimed invention for analysis. Claim 1 recites:
1. (Currently Amended) [A computer implemented instant rebate management program system comprising a computer, the computer comprising at least one microprocessor, the at least one microprocessor configured to execute instructions which transform the computer into a particular machine, the particular machine comprising a setup component, a program control memory structure, a rebate fulfillment generator component, a selection component, a rebate fulfillment associator, and a first rebate fulfillment control memory structure], wherein:
[the setup component, comprising a portion of the particular machine, is configured to]:
receive a setup control signal, the setup control signal comprising one or more programs; and
associate a credential with the setup control signal;
[the program control memory structure, comprising a portion of the particular machine, is configured to] store the one or more programs and the credential associated with the one or more programs;
[the rebate fulfillment generator component, comprising a portion of the particular machine, is configured to] receive a rebate request submitted to the instant rebate management program system from a trade ally for an activity performed by the trade ally for a consumer and to generate a rebate fulfillment for the consumer in response to the rebate request submitted to the instant rebate management program system from the trade ally, wherein the [rebate fulfillment generator component] receives the rebate request from the trade ally, generates the rebate fulfillment for the consumer, and delivers the rebate fulfillment at completion of the activity to the trade ally for provision to the consumer at completion of the activity with a fulfillment value, wherein the rebate fulfillment comprises a rebate fulfillment account which may be associated with a rebate instance and the fulfillment value, wherein the rebate fulfillment account and the rebate instance are associated with a location, wherein the fulfillment value is a stored value card, and wherein the stored value card is a physical stored value card and a [virtual stored value card];
[the selection component, comprising a portion of the particular machine, is configured to]: receive a selection signal; and select the rebate instance of one of the one or more programs in response to the selection signal;
[the rebate fulfillment associator, comprising a portion of the particular machine, is configured to] associate the rebate fulfillment with the rebate instance as an association in response to the selection component selecting the rebate instance; and
[the first rebate fulfillment control memory structure, comprising a portion of the particular machine, is configured for] storing the association of the rebate fulfillment and the rebate instance.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as “Certain Methods of Organizing Human Activity”. The bolded claim limitations above sets forth and describes rebate fulfillment, which are falls under both “fundamental economic practice” and “commercial/legal interactions”. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice or commercial/legal interactions, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas.
Accordingly, the claim recites an abstract idea. The computer, including microprocessor, setup component, program control memory structure, rebate fulfillment generator component, selection component, rebate fulfillment associator, first rebate fulfillment control memory structure, and virtual card in claim 1 is just applying generic computer components to the recited abstract limitations. The recitation of generic computer components in a claim does not necessarily preclude that claim from reciting an abstract idea. (Step 2A-Prong 1: YES. The claims recite an abstract idea)
Step 2A Prong 2
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of:
Claim 1: computer, including microprocessor, setup component, program control memory structure, rebate fulfillment generator component, selection component, rebate fulfillment associator, and first rebate fulfillment control memory structure, virtual stored value card
The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. Therefore, claims 1-6 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated 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 because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. See Applicant’s specification para. [00230], [00242] about implementation using general purpose computing devices and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more. Accordingly, these additional elements, do not change the outcome of the analysis, when considered separately and as an ordered combination. Thus, claims 1-6 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims
Dependent claims 2-6 further define the abstract idea that is present in independent claim 1 and thus correspond to “Certain Methods of Organizing Human Activity” and hence are abstract for the reasons presented above. The dependent claims recite further additional elements including a program login component (claim 2), activation login component, second rebate fulfillment control memory structure (claim 4), and a machine display (claim 5), which similarly amount to no more than mere instructions to apply the exception using a generic computer component. MPEP 2106.05(f). The dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the dependent claims are directed to an abstract idea.
Thus, claims 1-6 are not patent-eligible.
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 ERIC T WONG whose telephone number is (571)270-3405. The examiner can normally be reached 9am-5pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael W Anderson can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC T WONG/Primary Examiner, Art Unit 3693
ERIC WONG
Primary Examiner
Art Unit 3693
