DETAILED ACTION
The following is a non-final office action upon examination of application number 16/752384.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/12/2026 has been entered.
Response to Amendment
Claims 8, 9, 11-16, 18-20, 23, and 26 are pending in the application and have been examined on the merits discussed below.
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 8, 9, 11-16, 18-20, 23, and 26 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 8, 9, 11-14, and 23 are directed to a method; thus these claims are directed to a process, which is one of the statutory categories of invention. Claims 15, 16, 18-20, and 26 are directed to a non-transitory computer-readable medium, which is a manufacture, and this a statutory category of invention.
(Step 2A – Prong 1) The claims recite an abstract idea instructing how to generate a marketing strategy based on anonymous and known customer data, which is described by claim limitations reciting:
receiving a plurality of anonymous customer transaction data sets…, each of said plurality of anonymous customer transaction data sets comprising a group of transactional data for an individual anonymous customer, wherein none of said plurality of anonymous customer transaction data sets have personally identifiable information (PII) associated therewith;
searching within each said group of transactional data for profile identification data identifying one or more traits, said one or more traits comprising: an age, a health profile and a gender;
searching within each said group of transactional data for purchase information data identifying said one or more traits;
generating a plurality of different anonymous customer profiles, said different customer profiles comprising: a plurality of predefined trait profiles and at least one retailer specific trait profile;
sorting each said group of transactional data for said individual anonymous customer into one or more of said plurality of different anonymous customer profiles;
evaluating said purchase information data in each said group of transactional data within each of said plurality of different anonymous customer profiles to identify a plurality of purchasing behavior characteristics for each of said plurality of different anonymous customer profiles;
continuously receiving additional anonymous customer transaction data sets;
continuously searching and sorting said additional anonymous customer transaction data sets into one or more of said plurality of different anonymous customer profiles;
updating said purchase behavior characteristics for each of said plurality of different anonymous customer profiles after said additional anonymous customer transaction data sets are added thereto;
receiving a plurality of known customer profiles, each of said plurality of known customer profiles comprising transactional data and one or more known customer traits;
matching, based on said one or more known customer traits, at least one anonymous customer profile of said plurality of anonymous customer profiles to each of said known customer profiles;
assigning at least one purchasing behavior characteristics from said at least one anonymous customer profile to each of said known customer profiles;
identifying which marketing strategies apply to each of said known customer profiles based said purchasing behavior characteristics, said marketing strategies comprising: an in-store offer, an online offer, a free gift, a digital coupon, and a printed coupon;
stopping a utilization of any non-applicable marketing strategies for said known customer profile; and
implementing one or more of said applicable marketing strategies for said known customer profile.
The identified limitations in the claims describing generating a marketing strategy based on anonymous and known customer data (i.e., the abstract idea) fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, which covers fundamental economic practices and marketing activities, or alternatively, the “Mental Processes” grouping of abstract ideas since the identified steps can be performed by a human, mentally or with pen and paper. Dependent claims 11, 12, 13, 14, 18, 19, 20, 23, and 26 recite limitations that further narrow/describe the abstract idea (i.e., generating a marketing strategy based on anonymous and known customer data); therefore, these claims are also found to recite an abstract idea.
(Prong 2) This judicial exception is not integrated into a practical application because additional elements such as the processor of a computer system in claim 8; and the non-transitory computer-readable medium storing instructions, the instructions comprising one or more instructions in claim 15, do not add a meaningful limitation to the abstract idea since these elements are only broadly applied to the abstract ideas at a high level of generality; thus, none of recited hardware offers a meaningful limitation beyond generally linking the abstract idea to a particular technological environment, in this case, implementation via a processor/computer.
Additional elements related to receiving…data sets electronically transmitted over a network connection do not provide an improvement to the computer or a technical field; further, these additional elements only add insignificant extra-solution activities (data transmission). Additional elements in claims 9 and 16 related to providing a customer profile … in a visual format on a graphical user interface add additional elements that do not yield an improvement; further, these additional elements only add insignificant extra-solution activities (data display). Accordingly, these additional element do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
(Step 2B) The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to integration of the abstract idea into a practical application, the hardware additional elements amount to no more than mere instructions to apply the exception using a generic computer component (see Spec. paragraphs 50-51). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Additional elements related to receiving…data sets electronically transmitted over a network connection do not provide an improvement to the computer or a technical field; further, these additional elements only add insignificant extra-solution activities (data transmission). With respect to data transmission limitations, the courts have recognized the use of computers to receive and transmit data as a well-understood, routine, and conventional, OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network). Additional elements in claims 9 and 16 related to providing a customer profile … in a visual format on a graphical user interface add additional elements that do not yield an improvement; further, these additional elements only add insignificant extra-solution activities (data display). With respect to data display limitations, the courts have found the presentation of data to be a well-understood, routine, conventional activity, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93 (see MPEP 2106.05(d)). In addition, when taken as an ordered combination, the ordered combination adds nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology.
Response to Arguments
Applicant's arguments filed 5/12/2026 have been fully considered but they are not persuasive.
With respect to the rejection under 35 USC 101, Applicant argues that the claims recite limitations that cannot be performed with the human mind and the analysis for prong 1 must be ‘no’.
Examiner respectfully disagrees. Examiner acknowledges that the claims recite certain limitations that cannot be performed by a person; these are the additional elements identified and addressed in Step 2A Prong Two.
Step 2A is a two-prong inquiry, in which examiners determine in Prong One whether a claim recites a judicial exception. Prong Two asks does the claim recite additional elements that integrate the judicial exception into a practical application? In Prong Two, examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception. If the additional elements in the claim integrate the recited exception into a practical application of the exception, then the claim is not directed to the judicial exception (Step 2A: NO) and thus is eligible at Pathway B.
With respect to the present claims, the abstract limitations reciting the abstract idea were identified in Prong One, while the additional elements, including receiving…data sets electronically transmitted over a network connection, were addressed in Prong two. Thus, Examiner maintains that the identified limitations in Prong One describing generating a marketing strategy based on anonymous and known customer data (i.e., the abstract idea) fall within the “Mental Processes” grouping of abstract ideas since the identified steps can be performed by a human, mentally or with pen and paper.
An example of a case identifying a mental process performed in a computer environment as an abstract idea is Symantec Corp., 838 F.3d at 1316-18, 120 USPQ2d at 1360. In this case, the Federal Circuit relied upon the specification when explaining that the claimed electronic post office, which recited limitations describing how the system would receive, screen and distribute email on a computer network, was analogous to how a person decides whether to read or dispose of a particular piece of mail and that "with the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper". 838 F.3d at 1318, 120 USPQ2d at 1360.
With respect to the rejection under 35 USC 101, Applicant argues that the claims do not fall under the Certain Methods of Organizing Human Activity grouping of abstract ideas.
Examiner respectfully disagrees. The courts have used the phrases "fundamental economic practices" or "fundamental economic principles" to describe concepts relating to the economy and commerce. Fundamental economic principles or practices include hedging, insurance, and mitigating risks. The term "fundamental" is not used in the sense of necessarily being "old" or "well-known." See, e.g., OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1364, 115 U.S.P.Q.2d 1090, 1092 (Fed Cir. 2015) (a new method of price optimization was found to be a fundamental economic concept). Similarly, the present claims directed to a new method of identifying and implementing marketing strategies is directed to a fundamental economic concept.
Examiner maintains that the limitations describing generating a marketing strategy based on anonymous and known customer data (i.e., the abstract idea) fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, which covers fundamental economic practices and marketing activities.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN TORRICO-LOPEZ whose telephone number is (571)272-3247. The examiner can normally be reached M-F 10AM-5PM.
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/ALAN TORRICO-LOPEZ/Primary Examiner, Art Unit 3625
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