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 .
DETAILED ACTION
Status of Claims
This action is in reply to the communication filed on 02/20/2026
Claims 4,13,have been canceled.
Claims 1-3, 5-12 and 14-22 are currently pending and have been examined.
Response to Applicant’s Arguments
Applicant’s amendments and arguments filed on 02/20/2026 have been fully considered and discussed in the next section. Applicant is reminded that the claims must be given its broadest, reasonable interpretation.
Examiner is hereby withdrawn the finality of the rejection of the last Office action based on Pre-Appeal Conference held on 03/16/2026.
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 1-3, 5-12 and 14-22 are directed to a system and a method which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
However, claims 1-3, 5-12 and 14-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) the following abstract idea:
receive one or more images of one or more coupons, wherein the one or more coupons are physical coupons,
receive one or more images of one or more receipts of previous transactions, and
transmit the one or more images of the one or more coupons and the one or more images of the one or more receipts of previous transactions;
receives, the one or more images of the one or more coupons,
receives, the one or more images of the one or more receipts of previous transactions,
extracts, from the one or more images of the one or more receipts, electronic item data representing an item code associated with an item listed on the one or more receipts,
extracts from the one or more images of the one or more coupons, electronic coupon data representing a coupon code associated with each coupon, wherein the coupon code includes a qualified item code and a coupon redemption value,
determines whether each coupon is valid based on the electronic coupon data;
determines whether the item is a qualified item based on the item data and the qualified item code included in the coupon code, and
applies automatically, when the coupon is determined as a valid coupon and the item is determined as a qualified item, a credit of the coupon redemption value to the user account; and
one or more databases communicatively coupled to the computing system and holding user account information, item information and electronic coupon data.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely commercial or legal interactions because they recite advertising, marketing and sales activities or behaviors. Accordingly, the claim recites an abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application because the claim only recites the additional elements of “computing system , mobile device, processing module and one or more databases, and network”.
The following limitations, if removed from the abstract idea and considered additional elements, merely perform generic computer function of processing, storing, communicating (e.g., transmitting and receiving), and displaying data and, as such, are insignificant extra-solution activities (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
receive one or more images of one or more coupons, wherein the one or more coupons are physical coupons,
receive one or more images of one or more receipts of previous transactions, and
transmit the one or more images of the one or more coupons and the one or more images of the one or more receipts of previous transactions over a network;
receives, from the mobile device the one or more images of the one or more coupons,
receives, from the mobile device the one or more images of the one or more receipts of previous transactions;
The additional technical elements above are recited at a high-level of generality (i.e., as a generic processor and generic computer components performing a generic computers function of processing, communicating and displaying) such that it amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and generic computer components. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (see MPEP 2106.05(e) and Vanda memo).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on one or more computers, or merely uses computers as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
Thus, the claim is “directed to” an abstract idea (i.e. “PEG” Revised Step 2A Prong Two=Yes)
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using computing system , mobile device, processing module and one or more databases, and network (e.g. a general purpose computer with generic computer component) to perform the claimed functions amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and one or more generic computer component.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on one or more computers, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent-eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires one or more general-purpose computer and generic computer components (as evidenced from paragraphs 14-16 of the applicant’s specification) and the affinity v Direct TV decision which states that a database is a generic computer component); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility.
Finally, the following limitations, if removed from the abstract idea and considered additional elements, would be considered insignificant extra solution activity as they are directed to merely receiving, displaying, storing, and/or transmitting data (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
receive one or more images of one or more coupons, wherein the one or more coupons are physical coupons,
receive one or more images of one or more receipts of previous transactions, and
transmit the one or more images of the one or more coupons and the one or more images of the one or more receipts of previous transactions over a network;
receives, from the mobile device the one or more images of the one or more coupons,
receives, from the mobile device the one or more images of the one or more receipts of previous transactions;
Thus, taken individually and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea) (i.e., “PEG” Step 2B=No). For the same reason these elements are not sufficient to provide an inventive concept. For these reasons, there is no inventive concept in the claim, and thus the claim is not patent eligible. Same Judicial analysis is applied here to independent claims 6, 10 and 15.
The dependent claims 2-3, 5,7-9, 11-12, 16-22 appear to merely further limit the abstract idea by further limiting notifying the user associated with the user’s account of credit which is considered part of the abstract idea (claims 2, 11)); further limiting the credit type associated with the user’s account which is considered part of the abstract idea (Claims 3 and 12); further limiting the coupon information which is considered part of the abstract idea (Claims 5 and 14); further limiting the type of the online order and notifying the user of the online order which are both considered part of the abstract idea (Claims 7-9, 16-18); and adding an additional step of physical coupon printed on a medium for physical distribution which is considered part of the abstract idea (Claims 19-22), and therefore only further limit the abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes), does/do not include any new additional elements that are sufficient to amount to significantly more than the judicial exception, and as such are “directed to” said abstract idea (i.e. “PEG” Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. “PEG” Step 2B=No). Thus, based on the detailed analysis above, claims 1-3, 5-12 and 13-22 are not patent eligible.
Possible Allowable Subject Matter
Claims 1-3, 5-12 and 13-22 would be allowable over the prior art if the applicant were to be able to overcome the 35 USC 101 rejections identified above.
The following is a statement of reasons for the indication of allowable subject matter: The most relevant prior the examiner has found is:
Galinos US Pub No: 2015/0081415 A1 discloses One or more images of a proof of purchase are transmitted to a remote location by a mobile device. If it is determined that the one or more images meet predetermined criteria and if the transmission is eligible for a reward, the reward is instantly transmitted to the mobile device. According to another embodiment, one or more images of an item identifier provided on one or more products or displays or a text message containing the item identifier are transmitted to a promotional reward program managing apparatus by a mobile device. If it is determined that the one or more images of the item identifier or a text message containing the item identifier meet predetermined criteria and if the transmission is eligible for a reward, the reward is instantly transmitted to the consumer through the mobile device or through a loyalty program account number.
Carpenter, US 2013/0103473 A1 discloses receiving images of receipts and transmitting the images over a network ; a computing system which receives the images of the receipts and determines whether one or more of the items on the receipt are associated with a coupon and automatically applies the coupon.
The following is a statement of reasons for the indication of allowable subject matter: The examiner has found prior art that discloses capturing images of previous transactions and providing rewards and / or discounts to the user (see Carpenter, US 2013/0103473 and Galinos US Pub No: 2015/0081415 A1).
However, the examiner has been unable to find prior art that discloses the limitations of independent claims 1,6,10,15 of “ determining with the processing module whether each coupon is valid based on the retrieved and extracted electronic coupon data; determining whether the item is a qualified item based on the item data and the qualified item code included in the coupon code with the processing module; and applying automatically with the processing module, when the coupon is determined as a valid coupon and the item is determined as a qualified item, a credit of the coupon redemption value to the user account of independent claims”.
Examiner is also unable to find prior art that discloses the limitation of claims 8 and 17 of “ wherein the online order is a new order initiated by the computing system following a determination that no online order associated with the user account is pending”. As such, claims 1-3, 5-12 and 13-22 would be allowable over the prior art if the applicant were to be able to overcome the 35 USC 101 rejections identified above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Argue et al, US Pub No: 20130327839 A1 discloses printing an image on a receipt is disclosed. The method may begin with the initiation of a transaction such as a purchase or return at a point-of-sale system. Next, an image unique to the transaction may be obtained or generate. The image may comprise non-textual graphics. While the transaction is being performed, the image may be passed to a receipt printer and stored with memory thereof. Accordingly, the images may be stored in memory of the receipt printer before the other tasks associated with the transaction have all been performed. Finally, to complete and document the transaction, the receipt printer may print a receipt. The receipt may have the image printed thereon.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Affaf Ahmed whose telephone number is 571-270-1835. The examiner can normally be reached on [M- R 8-6 pm ].
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached at 571-270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AFAF OSMAN BILAL AHMED/Primary Examiner, Art Unit 3622
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