DETAILED ACTION
The following is a FINAL office action upon examination of the 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 .
Response to Amendment
Claims 8 and 15 have been amended.
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) 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, said purchasing behavior characteristics comprising: a percentage of in-store purchases, a percentage of online purchases, a percentage of purchases that included a discount, a percentage of purchases that included a free gift, a percentage of purchases using a printed coupon, and a percentage of purchases using a digital coupon, wherein said PII includes an … generated and … received transaction location;
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 underlying 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 the 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.
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. Similarly, reciting that certain steps are performed automatically… only adds computer implementation of an abstract step.
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 12/13/2025 have been fully considered but they are not persuasive.
With respect to the rejection under 35 USC 101, Applicant argues that the claims include features that would make it impossible to perform in the mind.
Examiner respectfully disagrees. Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures "can be carried out in existing computers long in use, no new machinery being necessary." 409 U.S at 67, 175 USPQ at 675. As the Federal Circuit has explained, "[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind." Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015).
With respect to the rejection under 35 USC 101, Applicant argues that the claimed concept is not a fundamental economic practice.
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. 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); In re Smith, 815 F.3d 816, 818-19, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016) (describing a new set of rules for conducting a wagering game as a "fundamental economic practice"); In re Greenstein, 774 Fed. Appx. 661, 664, 2019 USPQ2d 212400 (Fed Cir. 2019) (non-precedential) (claims to a new method of allocating returns to different investors in an investment fund was a fundamental economic concept).
Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination. See Mayo, 566 U.S. at 91, 101 USPQ2d at 1973 (rejecting "the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101 "). As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty."). In addition, the search for an inventive concept is different from an obviousness analysis under 35 U.S.C. 103. See, e.g., BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) ("The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . . [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.") Thus, even if the present claims provide a modified marketing process, they remain rejected because they are directed to an abstract idea and the additional elements do not integrate the abstract idea into a practical application nor provide ‘significantly more.’
With respect to the rejection under 35 USC 101, Applicant argues that the claims are similar to the claims in DDR Holdings.
Examiner respectfully disagrees. Examiner finds that the present claims are different than those in DDR Holdings, LLC v. Hotels.com because the claims in DDR Holdings improved the performance of the computer itself as it modified the way networks operated. There is no analogous improvement to the functioning of the computer itself in the present rejected claims; performing certain steps automatically does not provide an improvement. The court in DDR Holdings found that the claim had additional elements that amounted to significantly more than the abstract idea, because they modified conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage, which differed from the conventional operation of Internet hyperlink protocol that transported the user away from the host’s webpage to the third party’s webpage when the hyperlink was activated; the additional elements in the present claims do not provide analogous modification to conventional practices in a technology. Additional elements such as receiving…data sets electronically transmitted over a network connection do not yield an improvement in the functioning of the computer itself, nor do they yield improvements to a technical field or technology; further, these limitations are recited at a high level of generality and only add insignificant extra solution activities.
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 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