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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 14, 2026, has been entered.
Status of Claims
Applicant filed an amendment on July 14, 2026. Claims 1-20 were pending in the Application. Claims 1, 3, and 8 have been amended. No new claims have been canceled, with claims 4, 9, 11, and 15-20 remaining canceled. Claims 21-22 have been added. Claims 1 and 8 are the independent claim, the remaining claims depend on claims 1 and 8. Thus claims 1-3, 5-8, 10, 12-14, and 21-22 are currently pending. After careful and full consideration of Applicant arguments and amendments, the Examiner finds them to be moot and/or not persuasive.
Response to Arguments
In the context of 35 U.S.C. §101, Applicant respectfully traverses the rejection. Applicant is of the opinion that the claims are statutory and respectfully asserts that “MPEP § 2111.01, subsection II reminds us, -While it is appropriate to use the specification to determine what applicant intends a term to mean, a positive limitation from the specification cannot be read into a claim that does not itself impose that limitation; In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993) the Federal Court reminded us, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims; as newly amended Claim 1 does not recite any "determining creditworthiness for a new credit offering" limitations from the specification, it is improper to read any limitations from the specification into representative Claim 1 which does not itself impose said limitations; and independent claim 8 recites features similar to (yet possibly different from) the features identified above with respect to independent Claim 1”.
Initially, the Examiner would like to point out that the basis of the rejection is Alice, by applying the subject matter eligibility analysis and flowchart according to MPEP § 2106, which applies a two-step framework, earlier set out in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice, 573 U.S. at 217.
Under the two-step framework, it must first be determined if "the claims at issue are directed to a patent-ineligible concept." If the claims are determined to be directed to a patent-ineligible concept, e.g., an abstract idea, then the second step of the framework is applied to determine if "the elements of the claim ... contain an "inventive concept" sufficient to 'transform' the claimed abstract idea into a patent-eligible application." (citing Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, we apply a "directed to" two-prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the claim "applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception," i.e., whether the claim integrates the judicial exception into a practical application. (MPEP §2106.04 II.A.1. and II.B.2.).
[AltContent: ]The Specification, (PG Pub US 20210019742 A1, FIG. 8, item 830; para 228), provides evidence as to what the claimed invention is directed. In this case, the specification, (‘742 A1, FIG. 8, item 830; para 228), discloses that the invention relates to providing specific user information to a credit path engine, and is grouped under “Certain Methods of Organizing Human Activity, commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)”, in prong one of step 2A. (MPEP §2106.04 II.A.1.).
Claim 1 provides additional evidence, and recites the limitations “receiving, at a second computing device, a device identifier (ID) of a computing device of a user without receiving personally identifiable information (PII) for said user; performing, via said second computing device, a search for a user specific information, said search utilizing said device ID; obtaining, via said second computing device, a result of said search, said result comprising said user specific information; validating said user specific information, such that only user specific information above a confidence factor threshold is retained in said user specific information, said validating utilizing metrics from a group consisting of: an amount of found records, and a time period covered by said found records, wherein said confidence factor threshold is met when said time period covered by said found records is greater than two years; determining, via said second computing device, that said user meets an interaction threshold, said interaction threshold comprising: a pre-defined minimum number of visits to a brand; and a pre-defined minimum value of purchases at said brand; and providing, via the second computing device, the user specific information of said user that meets said interaction threshold to a credit path engine”, which represent the abstract idea of “providing specific user information to a credit path engine”. The abstract idea is in italics, and the additional elements are in bold. (MPEP §2106.04 II.A.1.).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP §2106.04 II.A.2.), the additional elements of the claim, such as “a second computing device”, “a computing device of a user”, and “a credit path engine”, amount to merely “apply it”, as they represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “providing specific user information to a credit path engine”.
Examiner notes the basis of the rejection was, and is not as any mental process covering performance in the mind, but classified as an abstract idea, “providing specific user information to a credit path engine”, grouped under “Certain Methods of Organizing Human Activity, commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)” and grouped under “Certain Methods of Organizing Human Activity, fundamental economic principles or practices (including hedging, insurance, mitigating risk)”.
With respect to the additional elements operating in a non-conventional and non-generic way and reflecting an improvement to a particular technological environment, the cited additional elements represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “providing specific user information to a credit path engine”. The claim is not directed to improving computer functionality nor improving another technology or technical field, but improving the abstract idea “providing specific user information to a credit path engine”. For potential improvement in an abstract idea “providing specific user information to a credit path engine”, it is important to keep in mind that an improvement in the abstract idea itself (e.g. providing specific user information to a credit path engine concept) is not an improvement in technology. (MPEP § 2106.04(d)(1)). Therefore, claim 1 is non-statutory.
Claim 8 also recites the abstract idea of “providing specific user information to a credit path engine”, as well as the additional elements of “a non-transitory computer-readable storage medium having instructions embodied therein that, when executed by one or more, cause said one or more processors to perform a method comprising: …”, “a computing device of a user”, “a proprietary database search for said user specific information”, and “a credit path engine”, which amount to merely “apply it”, as they represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “providing specific user information to a credit path engine”.
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describe the concept of “providing specific user information to a credit path engine” using computer technology (e.g., “one or more processors” and “a non-transitory computer-readable storage medium having instructions”). Therefore, these additional elements do no more than employ a computer as a tool to implement the abstract idea. And as the computer does no more than serve as a tool to implement the abstract idea, they do not improve computer functionality nor improve another technology or technical field. Therefore, claim 8 is non-statutory.
Finally, Examiner notes the basis of the rejection is Alice, by applying the subject matter eligibility analysis and flowchart according to MPEP § 2106. And, based on this standard, the claims are non-statutory, and correctly rejected under 35 U.S.C. § 101.
In the context of 35 U.S.C. § 103, after further consideration and search, no prior art was found that discloses, teaches, and/or suggests the following limitations:
“validating said user specific information, such that only user specific information above a confidence factor threshold is retained in said user specific information, said validating utilizing metrics from a group consisting of: an amount of found records, and a time period covered by said found records, wherein said confidence factor threshold is met when said time period covered by said found records is greater than two years”;
“determining, via said second computing device, that said user meets an interaction threshold, said interaction threshold comprising: a pre-defined minimum number of visits to a brand; and a pre-defined minimum value of purchases at said brand”; and
“providing, via the second computing device, the user specific information of said user that meets said interaction threshold to a credit path engine”.
Therefore, the rejection under 35 U.S.C. § 103 being rescinded is maintained.
Claim Interpretation - Optional Language
Claim 1, recites the limitation: “validating said user specific information, such that only user specific information above a confidence factor threshold is retained in said user specific information, said validating utilizing metrics from a group consisting of: an amount of found records, and a time period covered by said found records, wherein said confidence factor threshold is met when said time period covered by said found records is greater than two years”. The limitation “validating said user specific information, such that only user specific information above a confidence factor threshold is retained in said user specific information, said validating utilizing metrics from a group consisting of: an amount of found records, and a time period covered by said found records” does not necessarily occur in the case “said confidence factor threshold is not met when said time period covered by said found records is less than or equal to two years”. (MPEP § 2103 I C and MPEP § 2111.04 II).
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, 5-8, 10, 12-14, and 21-22 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-3, 5-7, and 21 are directed to a “ method”; and claims 8, 10, 12-14, and 22 are directed to a “non-transitory computer-readable storage medium.” Therefore, these claims are directed to one of the four statutory categories of invention.
Claim 1 recites “providing specific user information to a credit path engine”, which is a form of commercial or legal interactions (i.e., organizing human activity)”, and therefore, an abstract idea. Specifically, the claim recites “receiving, at a second computing device, a device identifier (ID) of a computing device of a user without receiving personally identifiable information (PII) for said user; performing, via said second computing device, a search for a user specific information, said search utilizing said device ID; obtaining, via said second computing device, a result of said search, said result comprising said user specific information; validating said user specific information, such that only user specific information above a confidence factor threshold is retained in said user specific information, said validating utilizing metrics from a group consisting of: an amount of found records, and a time period covered by said found records, wherein said confidence factor threshold is met when said time period covered by said found records is greater than two years; determining, via said second computing device, that said user meets an interaction threshold, said interaction threshold comprising: a pre-defined minimum number of visits to a brand; and a pre-defined minimum value of purchases at said brand; and providing, via the second computing device, the user specific information of said user that meets said interaction threshold to a credit path engine”. The abstract idea is in italics, and the additional elements are in bold. (MPEP §2106.04 II.A.1.).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP §2106.04 II.A.2.), the additional elements of the claim, such as “a second computing device”, “a computing device of a user”, and “a credit path engine”, amount to merely “apply it”, as they represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “providing specific user information to a credit path engine”.
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describe the concept of “providing specific user information to a credit path engine” using computer technology (e.g., “a second computing device” and “a computing device of a user”). Therefore, these additional elements do no more than employ a computer as a tool to implement the abstract idea. And as the computer does no more than serve as a tool to implement the abstract idea, they do not improve computer functionality nor improve another technology or technical field. Therefore, claim 1 is non-statutory.
Claim 8 also recites the abstract idea of “providing specific user information to a credit path engine”, as well as the additional elements of “a non-transitory computer-readable storage medium having instructions embodied therein that, when executed by one or more, cause said one or more processors to perform a method comprising: …”, “a computing device of a user”, “a proprietary database search for said user specific information”, and “a credit path engine”, which amount to merely “apply it”, as they represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “providing specific user information to a credit path engine”.
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describe the concept of “providing specific user information to a credit path engine” using computer technology (e.g., “one or more processors” and “a non-transitory computer-readable storage medium having instructions”). Therefore, these additional elements do no more than employ a computer as a tool to implement the abstract idea. And as the computer does no more than serve as a tool to implement the abstract idea, they do not improve computer functionality nor improve another technology or technical field. Therefore, claim 8 is non-statutory.
Dependent claims 2-3, 5-7, 10, 12-14, and 21-22 further describe the abstract idea of “providing specific user information to a credit path engine”, which is insufficient to overcome the rejections of claims 1 and 8.
Dependent claims 5, 7, 12, 14, and 21-22 do not recite any new additional elements that integrate the abstract idea into a practical application, and that do no more than represent a computer performing functions that correspond to implementing the acts of “providing specific user information to a credit path engine”, when analyzed under Step 2A, Prong Two. And, as they do no more than employ a computer as a tool to implement the abstract idea, they do not improve computer functionality nor improve another technology or a technical field, when analyzed under Step 2B.
Dependent claim 2 recites a new additional element of “a proprietary database”, which does no more than employ a computer as a tool to implement the abstract idea. And, as it does no more than employ a computer as a tool to implement the abstract idea, it does not improve computer functionality nor improve another technology or a technical field.
Dependent claims 3 and 10 recites a new additional element of “a secondary source database”, which does no more than employ a computer as a tool to implement the abstract idea. And, as it does no more than employ a computer as a tool to implement the abstract idea, it does not improve computer functionality nor improve another technology or a technical field.
Dependent claims 6 and 13 recites a new additional element of “an IP address associated with the device ID”, which does no more than employ a computer as a tool to implement the abstract idea. And, as it does no more than employ a computer as a tool to implement the abstract idea, it does not improve computer functionality nor improve another technology or a technical field.
Hence, claims 1-3, 5-8, 10, 12-14, and 21-22 are not patent eligible.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. § 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. § 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 5-8, 10, 12-14, and 21-22 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. § 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
New Matter
The written description requirement is not met. Claim 1 recites “validating said user specific information, …, and a time period covered by said found records, wherein said confidence factor threshold is met when said time period covered by said found records is greater than two years”. The specification does not adequately inform one of ordinary skill how the limitation “confidence factor threshold is met when said time period covered by said found records is greater than two years” is to be performed. Specification, paras 77 and 114, recites “… For example, if only one record is found and it is 5 days old, the confidence in the found records would likely be below a confidence threshold. In contrast, if 2 years of records are found, records such as prior accounts, present accounts, memberships, rewards information, and the like, then the confidence in the user specific information 223 found in the records would be above the confidence factor threshold. If the user specific information 223 is above the confidence threshold, then the user specific information 223 is deemed valid …”, which discloses an example of records found for 2 years, then the confidence in the user specific information found in the records would be above the confidence factor threshold, but does not disclose confidence factor threshold being met when said time period covered by said found records is greater than two years as being claimed.
Thus, specification, paras 77 and 114, does not disclose a confidence factor threshold being met when said time period covered by said found records is greater than two years. Therefore, this is an issue of new matter, which is matter not present on the filing date of the application in the specification, claims, or drawings that has been added after the application filing. Claims 2-3, 5-7, and 21, which depend from claim 1; and dependent claims 10, 12-14, and 22, which depend from claim 8, are also similarly rejected. (MPEP § 2163.06 I).
Written Description
The written description requirement is not met. Claim 1 recites “determining, via said second computing device, that said user meets an interaction threshold, said interaction threshold comprising: a pre-defined minimum number of visits to a brand; and a pre-defined minimum value of purchases at said brand”. In order for the specification to be fully supportive of the limitation “determining, via said second computing device, that said user meets an interaction threshold, said interaction threshold comprising: a pre-defined minimum number of visits to a brand; and a pre-defined minimum value of purchases at said brand” as being characterized by the Applicant, then the specification would have to disclose how the limitation “determining, via said second computing device, that said user meets an interaction threshold, said interaction threshold comprising: a pre-defined minimum number of visits to a brand; and a pre-defined minimum value of purchases at said brand” is being performed.
Specification, (PG Pub US 20210019742 A1, para 238), recites “… the operations could be integrated into a hybrid solution that could be partially run on the brand's own computer system and partially run by the credit providing system, such that the brand would be able to have the capability to integrate the solution into an app or software that would be available in almost real-time and without the brand needing to perform any upgrades or obtain any new hardware to have the capability … the hybrid solution would provide the brand with a solution that is managed and/or maintained by the credit account provider which would reduce the technological and developmental requirements and/or education that would be needed by the brand to implement the credit account offering solution …”.
Specification, (‘742 A1, para 239), recites “… the hybrid solution would allow the credit account provider to manage or set an offer criteria … the credit account provider could limit the user's that are provided to the service to only users having met minimum requirements, e.g., a user that has purchased at least 300 dollars' worth (or any value) of product in the past M-months, etc. …”.
Specification, (‘742 A1, para 240), recites “… the hybrid solution would allow the brand to manage the user experience at a brand level … the brand could limit the user's that are provided to the service to only users having met minimum requirements, e.g., a returning customer (or Xth time returning customer, a customer that has purchased at least 100 dollars' worth (or any value) of product in the past M-months, etc. …”.
However, specification (‘742, paras 238-240) is silent a definition for “an interaction threshold” and lacks sufficient details so that one of ordinary skill would understand how the limitation “determining, via said second computing device, that said user meets an interaction threshold, said interaction threshold comprising: a pre-defined minimum number of visits to a brand; and a pre-defined minimum value of purchases at said brand” is performed. Therefore, the written description is not met. Additionally, similar language is recited in claim 8. Dependent claims 2-3, 5-7, and 21, which depend from claim 1; and dependent claims 10, 12-14, and 22, which depend from claim 8, are also similarly rejected. (MPEP § 2161.01 I and MPEP § 2163.03 V).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Hood et al (U. S. Patent Application Publication No. 20070185769 A1) – Method, System and Computer Program Product For Rewarding Purchase Of Branded Products
Hood recites a merchant point-of-sale ("POS") system architecture. Systems and methods are provided for enabling merchant funded rewards at a POS terminal. Systems and methods are provided for tracking customer activity and determining an appropriate merchant funded reward. The POS terminal may determine an appropriate merchant, funded reward based on location and historical customer transaction data. The merchant may offer a custom reward that promotes customer behaviors that are advantageous to the merchant and other transaction participants. A merchant funded rewards program may be configured to drive incremental sales to merchants that participate in the program
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN CHISM whose telephone number is (571) 272-5915. The examiner can normally be reached during 9:00 AM – 3:00 PM Monday – Thursday, EST.
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, Ryan D. Donlon can be reached (571) 270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEVEN CHISM/
Examiner, Art Unit 3692
/DAVID P SHARVIN/Primary Examiner, Art Unit 3692
Prosecution Insights