DETAILED ACTION
Status
This communication is in response to Applicant’s “RESPONSE TO OFFICE ACTION” filed on January 30, 2026 (hereinafter “Amendment”). In the Amendment, Applicant amended Claims 1 and 9; cancelled no claim(s); and added no claim(s). Applicant previously cancelled Claims 2-4, 7, 10-11, 14 and 16-20. Therefore, Claims 1, 5-6, 8-9, 12-13 and 15 remain currently pending and presented for examination. Of the pending claims, Claims 1 are 9 remain independent claims.
The present patent application (U.S. App. No. 16/800,632), which incorporates by reference Provisional Application No. 62/934,806, is being examined under the first inventor to file (FITF) provisions of the America Invents Act (AIA ) since both applications were filed after March 16, 2013.
Examiner notes this patent application (U.S. App. No. 16/800,632) has published as U.S. Patent Application Publication No. 2021/0142372 of SADHWANI et al. (hereinafter “Sadhwani”).
Benefit Claim
Examiner acknowledges Applicant’s claim for benefit under 35 U.S.C. 119(e) to U.S. Provisional Application No. 62/934,806, which was filed on November 13, 2019.
See MPEP § 201.11 regarding the effective filing date of an application. The disclosure of an invention in a parent application and in a later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a). See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
Information Disclosure Statement
Examiner notes that no information disclosure statement (IDS) has been filed in this case.
Examiner notes 37 CFR 1.51(d): “Applicants are encouraged to file an information disclosure statement in nonprovisional applications”; as well as 37 C.F.R. 1.56, which states that each inventor named in the application has a duty to disclose information material to patentability.
Response to Amendments
A Summary of the Response to Applicant’s Amendment:
Applicant’s Amendment introduces new § 112(b) rejections to the independent claims; therefore, the Examiner asserts § 112(b) rejections to Claims 1, 5-6, 8-9, 12-13 and 15, as provided below.
Applicant’s Amendment does not overcome rejections to Claims 1, 5-6, 8-9, 12-13 and 15 under 35 U.S.C. § 101; therefore, the Examiner asserts/maintains § 101 rejections to Claims 1, 5-6, 8-9, 12-13 and 15, as provided below.
Applicant’s Amendment does not overcome rejections to Claims 1, 5-6, 8-9, 12-13 and 15 under 35 U.S.C. § 103; therefore, the Examiner asserts/maintains § 103 rejections to Claims 1, 5-6, 8-9, 12-13 and 15, as provided below.
Applicant’s arguments are found to be not persuasive; please see Examiner’s “Response to Arguments” provided below.
Classification Notes
Examiner notes the following CPC classification symbols under G06Q 30/0207 that deals with discounts or incentives, e.g. rebates:
G06Q 30/0234 ••• Rebates after completed purchase
G06Q 30/0235 ••• constrained by time limit or expiration date
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b) of the America Invents Act (AIA ):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1, 5-6, 8-9, 12-13 and 15 are rejected under 35 U.S.C. 112(b) of the AIA as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. “A claim is indefinite when it contains words or phrases whose meaning is unclear” (MPEP § 2173.05(e)).
Regarding independent Claims 1 and 9, the phrase "or the like" renders Applicant’s independent claims indefinite under § 112(b) in view of MPEP § 2173.05(d) because Claims 1 and 9 each include elements not actually disclosed (i.e., elements encompassed by "or the like"), thereby rendering the scope of Claims 1 and 9 unascertainable. See MPEP § 2173.05(d) and Ex parte Caldwell. Furthermore, independent Claims 1 and 9 are rejected under 35 U.S.C. § 112(b) of the AIA , as being indefinite because it is not clear what Applicant intends to cover by the recitation “or the like” in each of Claims 1 and 9. As currently recited in Claims 1 and 9, the recited Markush-like phrase “selected from the group consisting of: …or the like” is amenable to multiple plausible constructions and, therefore, a person having ordinary skill in the art would be unable to determine what the Applicant does and does not regard as the invention. Thus, Claims 1 and 9 are rejected under 35 U.S.C. § 112(b) of the AIA .
In addition, in view of MPEP § 2117 (Markush Claims), Claims 1 and 9 are also rejected under § 112(b) as being indefinite because Applicant’s independent claims each contain an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole)” both (1) share a “single structural similarity” and (2) share a common function/use as noted in MPEP § 2117. A Markush grouping meets these requirements in two situations (MPEP § 2117):
First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use.
Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature.
Applicant’s Markush grouping of “…selected from the group consisting of: Internet, local area network (LAN), wide area network (WAN), private network, or the like” (bolding emphases added by Examiner), as currently recited in Claims 1 and 9, is improper because the alternative “the like” in the Markush grouping does not share both (1) a single structural similarity and (2) a common use to the other alternatives listed (i.e., Internet, local area network (LAN), wide area network (WAN), and private network). The phase “the like” does not meet the requirements for a proper Markush grouping because “the like” is not a member of the same art-recognized class and “the like” is not considered to be functionally equivalent or have a common use to the Internet, a local area network (LAN), a wide area network (WAN), and a private network. In summary, Applicant’s independent claims are rejected under § 112(b) as being indefinite in view of MPEP §§ 2117 and 2173.05(d). Appropriate corrections are required.
Claims 5-6 and 8 depend from Claim 1, but do not resolve the above issues and inherit the deficiencies of independent Claim 1; therefore, Claims 5-6 and 8 are rejected under 35 U.S.C. 112(b) of the AIA . Similarly, Claims 12-13 and 15 depend from independent Claim 9, but do not resolve the above issues and inherit the deficiencies of Claim 9; therefore, Claims 12-13 and 15 are rejected under AIA 35 U.S.C. 112(b) of the AIA .
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, 5-6, 8-9, 12-13 and 15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification” (MPEP § 2111). In view of this standard and based upon consideration of all of the relevant factors with respect to each claim as a whole, Claims 1, 5-6, 8-9, 12-13 and 15 are rejected as ineligible subject matter under 35 U.S.C. 101.
Step 1: Claims 1, 5-6, 8-9, 12-13 and 15 appear to satisfy Step 1 enunciated in Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014).
Step 2A: Claims 1, 5-6, 8-9, 12-13 and 15 are rejected under § 101 because Applicant’s claimed subject matter is directed to an abstract idea without significantly more. The rationale for this finding is that Applicant’s claims recite determining or calculating how much purchase value (e.g., price, coupon value, reward value) of an item (e.g., product) changes (e.g., decreases or increases) after at least one individual purchases the item, and if within a certain period of time determining an amount of compensation owed to the individual (e.g., an amount to refund or credit the individual, such as a prorated amount of compensation owed to the individual via “a rewards offer equal to...said prorated value”) based on the value difference (e.g., determining how much to refund the purchaser based on finding a lower price for the item, within a certain period of time), as more particularly recited in Applicant’s pending claims save for recited (non-abstract claim elements):
a computer system of a branded card provider;
a plurality of cardholders;
an account of one or more of said plurality of cardholders;
a plurality of channels;
utilizing an application programming interface (API) to repeatedly web crawl a plurality of Internet web pages to obtain;
repeatedly searching a transaction database of said branded card provider to obtain;
repeatedly electronically contacting one or more different retailer databases to obtain;
an option to select;
each of Applicant’s recited steps/processes of obtaining, utilizing, accessing, identifying, using, searching (a database), providing, and automatically crediting said account;
(only Claims 5 and 12) using said API;
(only Claims 8 and 15) automatically crediting said account; and
(independent Claim 9 and corresponding dependent claims) a non-transitory computer-readable storage medium having instructions embodied therein that when executed cause a computer system to perform.
However, determining/calculating how much purchase value (e.g., price, coupon value, reward value) of an item changes after the item is purchased by an individual and determining at least a prorated amount of compensation owed to the individual (e.g., such as via “a rewards offer equal to...said prorated value”) based on the value difference, as currently recited in Applicant’s pending claims and further explained below, is within a certain method of organizing human activity — (i) fundamental economic principle or practice and/or (ii) commercial interaction (including advertising, marketing or sales activities or behaviors; business relations). MPEP 2106.04(a)(2)(II)(A) provides examples of “fundamental economic principles or practices” and MPEP 2106.04(a)(2)(II)(B) provides additional discussion and examples of commercial or legal interactions. This judicial exception (i.e., abstract idea exception) is not integrated into a practical application because each claim as a whole, having the combination of additional elements beyond the judicial exception(s), does not integrate the exception into a practical application of the exception and, therefore, the pending claims are “directed to” a judicial exception under USPTO Step 2A. More specifically, each claim as a whole does not appear to reflect the combination of additional elements as: (1) improving the functioning of a computer itself or improving another technology or technical field, (2) applying the judicial exception with, or by use of, a particular machine/manufacture that is integral to the claim, (3) effecting a transformation or reduction of a particular article to a different state or thing, or (4) 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. Instead, any improvement is to Applicant’s underlying abstract idea identified above in Step 2A — determining or calculating, after an individual purchases an item, a prorated amount of compensation owed to the individual based on a difference in value of the item {e.g., determining how much to refund a buyer after discovering a lower price for the same item (i.e., after the buyer’s original purchase)}. SAP Am., Inc. v. InvestPic, LLC, No. 2017-2081, 2018 U.S. App. LEXIS 12590, Slip. Op. 13 (Fed. Cir. May 15, 2018) (“What is needed is an inventive concept in the non-abstract realm.”). Examiner notes Applicant’s underlying abstract idea is consistent with, for example, specification paragraph [0015] of Applicant’s original disclosure:
“…a cardholder purchases a $400 pair of work boots at Johnny’s Overalls. Soon after (e.g., within a week), the price of the work boots drops to $350” (see original spec. at ¶ [0015])
and, with specification paragraph [0031] of Applicant’s original disclosure:
“the branded card provider will keep track of a cardholder’s purchase and any return/price drop guarantee window (or time frame) associated with the cardholder’s purchase. If there is any price drop found during the return/price drop guarantee window, the branded card provider will automatically make a price adjustment with the brand partner (e.g., Johnny’s Overalls will see a payment reduction of $50…). In addition, the branded card provider will pass the $50 dollar savings back to the cardholder in the form of a statement credit or a reward” (see original spec. at ¶ [0031] with bolding emphases added by Examiner).
In addition, although Applicant’s claims require determining/calculating how much the value of an item changes after the item is purchased by an individual as well as determining a prorated amount of compensation owed to the individual (within a certain period of time) based on the value difference, these techniques of determining a change in value embodies simple mathematical concepts of:
subtraction (e.g., $ price differences),
price comparisons (comparing numerical values),
subtraction (e.g., time difference between purchase time and time when purchase information changed),
numerical comparisons (comparing price and time differences), and
numerical weighting/allocation (e.g., prorated value generation) …
in the form of formulas, equations, and/or calculations which also have been determined to constitute abstract ideas. See Memorandum, "Grouping of Abstract Ideas" and cases cited in footnote 12, such as enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance (84 Fed. Reg. 50). As noted on page 4 of the “October 2019 Update: Subject Matter Eligibility” issued by the USPTO, Examiner notes that a claim does not have to recite the word “calculating” in order to be considered a mathematical calculation. For example, a step of “determining” a variable or number using mathematical methods or “performing” a mathematical operation may also be considered mathematical calculations when the broadest reasonable interpretation (BRI) of the claim, in light of the specification, encompasses one or more mathematical calculations. Applicant’s additional elements, taken individually and in combination, do not appear to be integrated into a practical application since they embody mere instructions to implement the abstract idea on a computer or mere use of a computer as a tool to perform the abstract idea, do no more than generally linking the use of the abstract idea to a particular technological environment or field of use {e.g., a networked computer system of a financial card provider (e.g., Visa®, MasterCard®, Citi®, etc.), with the provider’s system utilizing/using an API to web crawl Internet web pages to obtain information, along with searching “a transaction database of said…provider”}, and amount to no more than combining the abstract idea with insignificant extra-solution activity including each of Applicant’s recited steps/processes of obtaining information, utilizing, accessing, identifying, using, searching (a database), providing, and automatically crediting an account, as further explained below. For the reasons discussed above, Applicant’s pending claims are directed to an abstract idea that is not integrated into a practical application under Step 2A, Prong 2 of the Subject Matter Eligibility (SME) analysis of 35 U.S.C. 101.
Step 2B: Under Step 2B enunciated in Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014), Applicant’s instant claims do not recite limitations, taken individually and in combination, that are sufficient to amount to “significantly more” than the abstract idea because Applicant’s claims do not recite, as further explained in detail below, an improvement to another technology or technical field, an improvement to the functioning of a computer itself, an application with or by a particular machine, a transformation or reduction of a particular article to a different state or thing, unconventional steps confining the claim to a particular useful application, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment {e.g., a networked computer system of a financial card provider (e.g., Visa®, MasterCard®, Citi®, etc.) that utilizes/uses an API to web crawl Internet web pages to obtain information, and searches “a transaction database of said…provider”}. Examiner notes that each of Claims 1, 5-6 and 8 is drawn to a method; however, the method steps do not recite, require, or indicate implementation by a particular machine.
Other than “continuously monitoring… by said computer system”, the method limitations recited in Applicant’s method Claims 1, 5-6 and 8 are not performed by any computer or processing device since recited use of a computing system encompasses a situation where the computing system does no more than assist/help a person perform such steps/processes or thoughts when the person is performing the method “at” the computing system (e.g., a person sitting down “at” a computing system, for instance). Nonetheless, even with “continuously monitoring… by said computer system” recited in Claim 1, Applicant’s method-claim limitations taken individually and in combination would be merely instructions to implement the abstract idea on a computer and would require no more than generally linking the use of an abstract idea to a particular technological environment or field of use {e.g., a networked computer system of a financial card provider (e.g., Visa®, MasterCard®, Citi®, etc.) that utilizes/uses an API to web crawl Internet web pages to obtain information, and searches “a transaction database of said…provider”}, and having the abstract idea combined with insignificant extra-solution activity including each of Applicant’s recited steps/processes of obtaining information, utilizing, accessing, identifying, using, searching (a database), providing, and automatically crediting an account. In addition, Examiner notes that albeit limitations recited in the Claims 9, 12-13 and 15 are performed by the generically recited “instructions…when executed cause a computer system to perform” (Claims 9, 12-13 and 15), these claim limitations taken individually and in combination are merely instructions to implement the abstract idea on a computer processor(s) and require no more than a generic computer (e.g., one or more processors of a [computer] system or the computer system) to generally link Applicant’s abstract idea to a particular technological environment or field of use {e.g., a networked computer system of a financial card provider, such as for example Visa®, MasterCard®, Citi®, etc.}, and no more than a combination of the abstract idea with insignificant extra-solution activity including each of Applicant’s recited steps/processes of obtaining information, utilizing, accessing, identifying, using, searching (a database), providing, and automatically crediting an account, as further discussed below. As mentioned above, the claim elements in addition to the abstract idea (i.e., non-abstract claim elements) arguably include: a computer system of a branded card provider; a plurality of cardholders; an account of one or more of said plurality of cardholders; a plurality of channels; utilizing an application programming interface (API) to repeatedly web crawl a plurality of Internet web pages to obtain; repeatedly searching a transaction database of said branded card provider to obtain; repeatedly electronically contacting one or more different retailer databases to obtain; an option to select; each of Applicant’s recited steps/processes of obtaining, utilizing, accessing, identifying, using, searching (a database), providing, and automatically crediting said account; (only Claims 5 and 12) using said API; (only Claims 8 and 15) automatically crediting said account; and (independent Claim 9 and corresponding dependent claims) a non-transitory computer-readable storage medium having instructions embodied therein that when executed cause a computer system to perform. However, each of these components is recited at a high level of generality that taken individually and in combination perform corresponding generic computer functions of obtaining information, utilizing, accessing, identifying, using, searching (a database), providing, and automatically crediting an account — there is no indication that the combination of elements improves the functioning of a computer or improves any other technology since the additional elements taken individually and collectively merely provide generic computer implementations known to the industry. Furthermore, Examiner notes that none of the processes/steps recited in Applicant’s pending claims taken individually and in combination imposes a meaningful limit on the claim’s scope since none of recited processes/steps taken individually and in combination involve activity that amounts to more than generic computer functions/activity. The steps/processes of obtaining information, utilizing, accessing, identifying, using, monitoring, searching (a database), determining, providing, and automatically crediting an account, as currently recited individually and in combination in Applicant’s claims, are considered to be generic computer functions since they involve having the abstract idea combined with insignificant extra-solution activity, and generally linking the use of an abstract idea to a particular technological environment or field of use {e.g., a networked computer system of a financial card provider, such as for example Visa®, MasterCard®, Citi®, etc.} previously known to the industry — each of the steps of “obtaining”, “utilizing”, “using” and “web crawling” encompasses a data input/loading or retrieving function performed by virtually all general purpose computers {see Alice Corp., 134 S. Ct. at 2360; see Ultramercial, 772 F.3d at 716‐17; see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); see Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988, 993 (Fed. Cir. 2014); and see Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. __, 132 S.Ct. 1289, 101 USPQ2d 1961 (2012)}; each of the steps of identifying, monitoring, searching, using, utilizing, accessing, web crawling, and determining encompasses a data recognition/inquiry function or retrieving function performed by virtually all general purpose computers {see Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 113 U.S.P.Q.2d 1354 (Fed. Cir. 2014), hereinafter “Content Extraction”, for data recognition); each of the steps of “crediting” encompasses a data saving or depositing function performed by virtually all general purpose computers {see Alice Corp., 134 S. Ct. at 2360; Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988 (Fed. Cir. 2014), hereinafter “Cyberfone”; and Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 113 U.S.P.Q.2d 1354 (Fed. Cir. 2014), hereinafter “Content Extraction”, for data storage}; each of the steps of automatically crediting encompasses a simple financial function performed by virtually all general purpose computers {see Alice Corp., Bilski, Freddie Mac, and In re Abele}; and each of the steps of providing and automatically crediting encompasses a data output/transmittal function performed by virtually all general purpose computers {see Ultramercial, 772 F.3d at 716‐17; see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); and see Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988, 993 (Fed. Cir. 2014)}. In addition, Examiner notes that Applicant’s published disclosure mentions that “the present technology can operate on or within a number of different computer systems including general purpose networked computer systems, embedded computer systems, routers, switches, server devices, user devices, various intermediate devices/artifacts, stand-alone computer systems, mobile phones, personal data assistants, televisions and the like” and that Figure 5’s “Processors 506A, 506B, and 506C may be any of various types of microprocessors” (emphases added by Examiner) per respective specification paragraphs [0080] and [0081] of U.S. Patent Application Publication No. 2021/0142372 of SADHWANI et al. (“Sadhwani”), which corresponds to Applicant’s disclosure in this application. For example, the processors illustrated in Figure 5 of Applicant’s drawings appear similar to the processors illustrated in Figure 5 of U.S. Patent Application Publication No. 2013/0243250 of Peter France et al., which qualifies as prior art. Examiner notes the “July 2015 Update: Subject Matter Eligibility” document, at page 7, second and sixth bullet points (July 30, 2015) regarding various well‐understood, routine, and conventional functions of a computer. Employing well-known computer functions individually and in combination to execute an abstract idea, even when limiting the use of the idea to one particular environment, does not add significantly more, similar to how limiting the computer-implemented abstract idea in Flook (Parker v. Flook, 437 U.S. 584, 19 U.S.P.Q. 193 (1978)) to petrochemical and oil-refining industries was insufficient. For the reasons discussed above, Applicant’s pending claims do not satisfy Step 2B enunciated in Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014).
Consequently, based upon consideration of all of the relevant factors with respect to each claim as a whole, Claims 1, 5-6, 8-9, 12-13 and 15 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. For information regarding 35 U.S.C. 101, please see Subject Matter Eligibility (SME) guidance and instructional materials at https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility, which includes the latest guidance, memoranda, and updates regarding SME under 35 U.S.C. 101.
Examiner Notes
Examiner notes that Sadhwani at ¶¶ [0027] and [0030] of Applicant’s published disclosure mentions prorating a discount/refund based on time (e.g., weeks).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 (AIA ) which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 5-6, 8-9, 12-13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 10,387,906 issued to Sharma et al. (hereinafter “Sharma”) in view of U.S. Patent Application Publication No. 2015/0302522 of Justin Howe (hereinafter “Howe”), and further in view of U.S. Patent Application Publication No. 2004/0122736 of Strock et al. (hereinafter “Strock”).
Regarding Claim 1, Sharma discloses a computer-implemented method comprising:
obtaining, at a computer system of a branded card provider, purchase information for a plurality of items purchased by a plurality of cardholders, said purchase information comprising: a purchase date, a purchase price, a reward information, a return window, and a price drop guarantee time frame (e.g., receiving purchase information about products purchased by cardholders, such information including prices paid by the cardholders for the products — Sharma at Col. 2, lines 1-25; “automatic monitoring of prices on purchased products” —Sharma at Col. 2, lines 10-11; “offer price protection…or a ‘best price guarantee’ to credit or debit card customers…. a financial institution may offer a best price guarantee on any item purchased with a credit card… or other payment card issued by the financial institution” —Sharma at Col. 5, lines 37-41; “price… automatically monitored for a predetermined time period (i.e., 30 or 60 days) —Sharma at Col. 5, lines 54-56; Sharma at Col. 12, lines 30-43; Sharma at Col. 18, lines 23-28; as well as, for instance, “Citi®” financial institution as shown in Figures 3-13 of Sharma);
continuously monitoring, by said computer system and during said return window and said price drop guarantee time frame, a plurality of channels for changes to said purchase information for said plurality of items (e.g., monitoring online sources/channels to track prices of the products after the products have been purchased by the cardholders — Sharma at Col. 2, lines 6-12; Col. 3, lines 24-34; and Col. 10, lines 59-65; “automatic monitoring of prices on purchased products” —Sharma at Col. 2, lines 10-11; “monitor and track prices associated with that product” —Sharma at Col. 14, lines 22-23; “track this comparative pricing data upon a purchase by a customer and generate a request to pay the customer when a lower price has been identified” —Sharma at Col. 1, lines 45-48; Sharma at Col. 2, lines 6-12; Col. 3, lines 24-34; Col. 6, lines 33-41; Col. 10, lines 9-13 and 48-65; Col. 11, lines 24-29 and 37-41; Col. 12, lines 30-43, and Col. 18, lines 29-41; Abstract of Sharma; and Figures 3-13 of Sharma), said monitoring comprising:
utilizing an application programming interface (API) to: repeatedly web crawl a plurality of Internet web pages to obtain a latest purchase price and a latest reward information for said plurality of items (e.g., Figures 1 and 11 of Sharma; Sharma at Col. 2, lines 6-12; Sharma at Col. 3, lines 24-34; Sharma at Col. 6, lines 33-41; Sharma at Col. 10, lines 9-13 and 48-65; and Sharma at Col. 11, lines 24-29 and 37-41);
repeatedly search a transaction database of said branded card provider to obtain said latest purchase price and said latest reward information for each of said plurality of items, wherein said monitoring includes accessing different search locations using a cloud network selected from the group consisting of: Internet, local area network (LAN), wide area network (WAN), private network, or the like (e.g., “Customers with a credit or debit card issued by a financial institution may use their card to make retail purchases subject to a best price guarantee” and “the server can…extract the receipt information, and store it in a record associated with the customer” with the “receipt… contain[ing] information such as…listing of each product…purchased… and a price for each purchased product…” —Sharma at Col. 2, lines 1-3; at Col. 13, lines 46-50; and at Col. 13, lines 32-36, respectively; and “Once the server has the information about the product… the server can monitor and track prices associated with that product” and “a best price guarantee to customers is provided” with “the receipt information in the database in a record associated with the customer” —Sharma at Col. 14, lines 21-23; at Col. 2, lines 18-19; and at Col. 13, lines 44-47, respectively; as well as Sharma at Col. 6, lines 19-47; Sharma at Col. 10, lines 35-39; Col. 11, lines 37-41; Col. 13, lines 37-50; Col. 14, lines 5-23; Col. 16, lines 58-60; and Col. 17, lines 20-25); and
repeatedly electronically contact one or more different retailer databases to obtain said latest purchase price and said latest reward information for said plurality of items (e.g., “monitor and track prices associated with that product” —Sharma at Col. 14, lines 22-23; “track this comparative pricing data upon a purchase by a customer and generate a request to pay the customer when a lower price has been identified” —Sharma at Col. 1, lines 45-48; Col. 2, lines 6-12; Col. 3, lines 24-34; Col. 6, lines 33-41; Col. 10, lines 9-13, 35-39 and 48-65; Col. 11, lines 37-41; Col. 12, lines 30-43; Col. 13, lines 37-50; Col. 14, lines 5-23; Col. 16, lines 58-60; Col. 17, lines 20-25; Col. 18, lines 29-41; Abstract of Sharma; and Figures 3-13 of Sharma);
identifying, at said computer system, a change in purchase information for at least one of said plurality of items, said change in purchase information selected from a group consisting of: a price decrease; a price increase; a coupon; and a change to a value of said latest reward information (e.g., identifying a change in purchase price, such as a lower price for the product item that has been purchased — Sharma at Col. 1, lines 45-48; Col. 3, lines 24-34; Col. 11, lines 62-67; Col. 12, lines 8-11; Col. 18, lines 23-28; and Col. 19, lines 17-19);
determining, at said computer system, a value of said change in purchase information (e.g., determining a value of the change, the value representing a difference between, for example, a purchase price (i.e., price paid) and the lower price (newly discovered price) — Figure 11 of Sharma; Sharma at Col. 3, lines 24-34; Col. 11, lines 62-67; Col. 12, lines 8-11; and Col. 19, lines 17-19);
determining, at said computer system, an amount of time between said purchase date and a date when said change in purchase information was identified (e.g., calculating or determining how much time has lapsed (e.g., days) between when the product was purchased and a time associated with said change in the purchase price — “information about the lower price (e.g., …date of the offer,…)” —Sharma at Col. 8, lines 32-34; “…price of the purchase product over a time period may be displayed…. show…the lowest price at which the purchased product was offered or advertised and the date of the lowest price offering or advertisement” —Sharma at Col. 18, lines 45-51; “user is entitled to refund based on a drop in price since the date of purchase” —Sharma at Col. 9, lines 64-65; “for a predetermined time period (i.e., 30 or 60 days) —Sharma at Col. 5, lines 54-56; Sharma at Col. 12, lines 30-43; and Sharma at Col. 18, lines 23-41);
modifying, at said computer system, said determined value of said change in purchase information in view of said determined amount of time to generate a value associated with said change in purchase information (e.g., “…price of the purchase product over a time period may be displayed…. show…the lowest price at which the purchased product was offered or advertised and the date of the lowest price offering or advertisement” —Sharma at Col. 18, lines 45-51; “user is entitled to refund based on a drop in price since the date of purchase” —Sharma at Col. 9, lines 64-65; Sharma at Col. 2, lines 1-9; Sharma at Col. 12, lines 30-43; and Sharma at Col. 18, lines 23-41);
providing one or more of said plurality of cardholders with said value associated with said change in purchase information from a group consisting of: a statement credit, a rewards offer that is equal to or greater in value than said value associated with said change in purchase information, and a combination of said statement credit and said rewards offer value (e.g., Figures 11-13 of Sharma; Sharma at Col. 2, lines 1-9; Sharma at Col. 12, lines 30-43; Sharma at Col. 19, lines 33-43; and Sharma at Col. 20, lines 21-24 and 26-32); and
automatically crediting, at said computer system, an account of said one or more of said plurality of cardholders with said value associated with said change in purchase information in a manner selected (e.g., adding the price difference redeemed offer to a financial account of the cardholder, such as for example, to compensate the cardholder for the change/difference in purchase information/price — “user has a credit card account with the financial institution, and credit card account includes the best price guarantee feature” —Sharma at Col. 9, lines 27-29; “providing a refund to a customer for a lower price of a purchased product is provided” —Sharma at Col. 2, lines 54-55; Sharma at Col. 2, lines 6-16; and Sharma at Col. 20, lines 21-24 and 26-32), but Sharma arguably fails to explicitly disclose: the value associated with said change in purchase information being a prorated value, and the providing including providing with an option to select said prorated value from the group. However, Howe teaches providing guarantees (or insurance policies) to a consumer on item expenditures made by the consumer to protect the consumer from “loss of value” in an event of a change (e.g., Abstract of Howe; and Howe at ¶ [0014]) as well as a value associated with the change being a prorated value obtained by: determining, at a computer system, an amount of time between a purchase of one or more items and the change; comparing, at the system, a value of said change with said amount of time; and generating, at the system, a prorated value based on said comparing (e.g., “guarantee price information” —Howe at ¶ [0048]; and “determines…occurrences which trigger the protection of the associated guarantee policy…. partial credit or refund may be calculated…and directly applied to the cardholder's account via the payment card network…. the value of a credit may be proportional to the number of days a particular criteria or condition is not met in accordance with the policy coverage. Refunds may be provided by the merchant, by the issuer, payment network, or a third party insurance provider” —Howe at ¶ [0045] with underlining emphases added by Examiner). Therefore, it would have been obvious to one skilled in the art, before the effective filing date of the claimed invention, to incorporate the value associated with said change in purchase information being a prorated value, as taught by Howe, into the method/system disclosed by Sharma, which is directed toward utilizing pricing services, tracking comparative price information, and updating pricing in real time (e.g., Sharma at Col. 6, lines 33-37; Sharma at Col. 11, lines 37-41 and 62-67; and “…requested depending on how often the price of the purchased product drops before the expiration of the predetermined time period” —Sharma at Col. 16, lines 30-43) as well as “a customer may be guaranteed to receive a rebate or refund if the price of the system identifies that the retailer lowered the price or if another retailer is offering a lower price for that item…. provide automatic monitoring of prices on purchased products” (e.g., see Sharma at Col. 2, lines 6-12), because such incorporation would be applying a known technique to a known device (method, or product) ready for improvement to yield predictable results (see MPEP § 2143).
Sharma in view of Howe arguably fails to explicitly teach the providing including providing with an option to select said prorated value from the group. However, Strock teaches credit cards allowing customers to earn rewards (e.g., Strock at ¶ [0009]), customer account statements for rewards (e.g., Strock at ¶ [0073]), as well as providing one or more cardholders with an option to select a reward value from a group consisting of: a statement credit, a rewards offer that is equal to said reward value, and a combination of said statement credit and said rewards offer value (e.g., Strock at ¶ [0182]; “rebates may accumulate in the customer's account until the customer requests a rebate” and “may apply reward currency as a credit to a customer's account statement” —Strock at ¶¶ [0077] and [0171]; and “Rewards earnings (or rewards) may be… a monetary reward, such as a credit to a cardmember's account; a non-monetary reward, such as points or miles…”, etc. —Strock at ¶ [0210]). Therefore, it would have been obvious to one skilled in the art, before the effective filing date of the claimed invention, to incorporate the providing including providing with an option to select said prorated value from the group, as taught by Strock, into the method/system taught by Sharma in view of Howe, which is directed toward providing cardholders with a refund for a reward value (e.g., “user has a credit card account with the financial institution, and credit card account includes the best price guarantee feature” —Sharma at Col. 9, lines 27-29; “providing a refund to a customer for a lower price of a purchased product is provided” —Sharma at Col. 2, lines 54-55; Sharma at Col. 2, lines 6-16; and Sharma at Col. 20, lines 21-24 and 26-32), because such incorporation would be applying a known technique to a known device (method, or product) ready for improvement to yield predictable results (see MPEP § 2143).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Sharma in view of Howe and Strock as applied to Claim 1 above and Sharma teaching: using said API electronically monitor all brands supported by the branded card provider to obtain said latest purchase price and said latest reward information for one or more of said plurality of items (e.g., Sharma at Col. 6, lines 33-41; Col. 10, lines 9-13 and 48-65; Col. 11, lines 24-29; and Col. 13, line 12 – Col. 14, line 67).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Sharma in view of Howe and Strock as applied to Claim 1 above and Sharma teaching wherein said determining said value of said change in purchase information comprises: determining a monetary value for a difference between a purchase price and said lower price (e.g., Sharma at Col. 1, lines 45-48; Sharma at Col. 3, lines 24-34; Col. 11, lines 62-67; Col. 12, lines 8-11; Col. 19, lines 17-19; and “refund to a customer for a lower price of a purchased product” —Sharma at Col. 2, lines 54-55).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Sharma in view of Howe and Strock as applied to Claim 1 above and Sharma teaching: determining that said change in purchase information is an increase in said value of said latest reward information (e.g., “financial institution to provide a best price guarantee to customers” using a “payment account (e.g., stored value account, gift card account, reward currency account) with the financial institution” —Sharma respectively at Col. 2, lines 18-19 and Col. 6, lines 52-53; Sharma at Col. 3, lines 24-34; Col. 11, lines 62-67; Col. 12, lines 8-11; and Col. 19, lines 17-19); and automatically crediting said account with said increased latest reward information (e.g., crediting the price difference to a financial account of the cardholder — “account includes the best price guarantee feature” —Sharma at Col. 9, lines 27-29; “financial institution to provide a best price guarantee to customers” —Sharma at Col. 2, lines 18-19; “providing a refund to a customer for a lower price of a purchased product is provided” —Sharma at Col. 2, lines 54-55; Sharma at Col. 2, lines 6-16 and 35-44; Col. 6, lines 48-65; Col. 14, line 61 – Col. 15, line 11; and Col. 20, lines 21-24 and 26-32).
Regarding Claim 9, Sharma in view of Howe and Strock teaches a non-transitory computer-readable storage medium having instructions embodied therein that when executed cause a computer system to perform (e.g., Figure 1 of Sharma; Sharma at Col. 8, lines 41-65; and Sharma at Col. 20, line 56 – Col. 21, line 20) a method as substantively recited in Claim 1, and, therefore, independent Claim 9 is rejected on the same basis(es) as applied above with respect to Claim 1.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Sharma in view of Howe and Strock as applied to Claim 9 above and Sharma teaching using said API to continuously monitor all brands supported by said branded card provider to obtain said latest purchase price and said latest reward information for one or more of said plurality of items (e.g., Sharma at Col. 6, lines 33-41; Col. 10, lines 9-13 and 48-65; and Col. 11, lines 24-29).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Sharma in view of Howe and Strock as applied to Claim 9 above and Sharma teaching wherein said determining said value of said change in purchase information comprises: determining a monetary value for said value associated with said change in purchase information (e.g., Sharma at Col. 1, lines 45-48; Sharma at Col. 3, lines 24-34; Col. 11, lines 62-67; Col. 12, lines 8-11; Col. 19, lines 17-19; and “refund to a customer for a lower price of a purchased product” —Sharma at Col. 2, lines 54-55), but Sharma arguably fails to explicitly teach the value associated with said change in purchase information being said prorated value. However, Howe teaches providing guarantees (or insurance policies) to a consumer on item expenditures made by the consumer to protect the consumer from “loss of value” in an event of a change (e.g., Abstract of Howe; and Howe at ¶ [0014]) as well as a value associated with the change being a prorated value obtained by: determining, at a computer system, an amount of time between a purchase of one or more items and the change; comparing, at the system, a value of said change with said amount of time; and generating, at the system, a prorated value based on said comparing (e.g., “guarantee price information” —Howe at ¶ [0048]; and “determines…occurrences which trigger the protection of the associated guarantee policy…. partial credit or refund may be calculated…and directly applied to the cardholder's account via the payment card network…. the value of a credit may be proportional to the number of days a particular criteria or condition is not met in accordance with the policy coverage. Refunds may be provided by the merchant, by the issuer, payment network, or a third party insurance provider” —Howe at ¶ [0045] with underlining emphases added by Examiner). Therefore, it would have been obvious to one skilled in the art, before the effective filing date of the claimed invention, to incorporate the value associated with said change in purchase information being said prorated value, as taught by Howe, into the method/system taught by Sharma in view of Howe and Strock, which is directed toward utilizing pricing services, tracking comparative price information, and updating pricing in real time (e.g., Sharma at Col. 6, lines 33-37; Sharma at Col. 11, lines 37-41 and 62-67; and “…requested depending on how often the price of the purchased product drops before the expiration of the predetermined time period” —Sharma at Col. 16, lines 30-43) as well as “a customer may be guaranteed to receive a rebate or refund if the price of the system identifies that the retailer lowered the price or if another retailer is offering a lower price for that item…. provide automatic monitoring of prices on purchased products” (e.g., see Sharma at Col. 2, lines 6-12), because such incorporation would be applying a known technique to a known device (method, or product) ready for improvement to yield predictable results (see MPEP § 2143).
Claim 15 recites substantially similar subject matter to that of Claim 8 and, therefore, Claim 15 is rejected on the same basis(es) as applied to Claim 8.
Response to Arguments
Applicant’s arguments in the Amendment filed on January 30, 2026, have been fully considered and are not persuasive. Examiner makes reference to U.S. Patent No. 10,387,906 (“Sharma”) in an effort to assist Applicant given Applicant’s arguments in “Amendment”.
Applicant's Arguments in the Amendment
(Pages 37-45) Applicant asserts that the independent claims, as currently amended, are drawn to eligible subject matter under 35 U.S.C. § 101.
(Page 45) Applicant asserts that Claims 5-6, 8-9, 12-13 and 15 are drawn to eligible subject matter under 35 U.S.C. § 101 based on reciting “features similar to…the features identified…with respect to independent Claim 1.”
(Page 46) Applicant appears to assert that the independent claims, as currently amended, are patentable over a combination of U.S. Patent No. 10,387,906 (“Sharma”) as well as U.S. Patent Application Publication Nos. 2015/0302522 (“Howe”) and 2016/0148234 (“Chavarria”).
(Page 46) Applicant appears to assert that Claims 5-6, 8, 12-13, 15, which depend from respective independent Claims 1 and 9 and include respective limitations therein, are patentably distinguishable over Sharma, Howe and Chavarria based on the same reasons provided with respect to independent Claims 1 and 9.
Examiner’s Response to Applicant's Arguments
Regarding § 101, Examiner respectfully disagrees. Examiner notes that during patent examination, the pending claims must be “given their broadest reasonable interpretation”. In view of this standard and based upon consideration of all of the relevant factors with respect to each claim as a whole, Applicant’s pending claims are determined, based on the claim language recited in each corresponding claim, to recite the concept of determining or calculating how much the price of an item (e.g., product) changes (e.g., decreases) after the item is purchased by an individual and determining, if within a certain period of time, a prorated amount of compensation owed to the individual based on the price difference (e.g., determining an amount of money to refund the individual based on the lowest price found within a certain period of time).
In Applicant’s amendment filed in June 2023, Applicant argued “[i]t is impossible for a human mind to perform the continuous monitoring of the plurality of channels as claimed” and “therefore provide extra solution activity” (bolding emphasis added by Examiner). However, similar to Applicant’s amendment filed 8/18/2022, which argued that “…similar to Classen, the Claimed features include a number of gathering of information features and analysis steps”. Examiner notes that each of Applicant’s recited “monitoring” or “gathering” elements encompasses no more than insignificant pre-solution activity and that receiving data over a network (e.g., Applicant’s “obtaining…purchase data” and “using” elements), has been recognized by courts to be a computer function that is a well‐understood, routine, and conventional function. The role of Applicant’s “monitoring” or “gathering” elements which occurs after “obtaining…information” at a computer system is a conventional function that can be performed by a generic computer without any novel programming or improvement in the operation of the computer itself, which is consistent with Application’s disclosure of Sadhwani at ¶¶ [0080] and [0081] mentioning that its “present technology can operate on or within a number of different computer systems including general purpose networked computer systems, embedded computer systems, routers, switches, server devices, user devices, various intermediate devices/artifacts, stand-alone computer systems, mobile phones, personal data assistants, televisions and the like” and that Figure 5’s “Processors 506A, 506B, and 506C may be any of various types of microprocessors” (bolding emphases added by Examiner to Sadhwani at ¶¶ [0080] and [0081], respectively). Examiner noted that “continuously monitoring…for purchase information” encompasses a situation where the computing system (of a card provider) does no more than assist/help a human (e.g., a human as a card provider) perform such “monitoring” processes or thoughts when the person is performing the method “at” the computing system (e.g., a person sitting down at a computing system, for instance, and using the computing system to monitor the plurality of channels for purchase information). In addition, Examiner noted that the prohibition against patenting abstract ideas cannot be circumvented by limiting the use of the idea to a particular technological environment, such as a networked computer system of a financial card provider (e.g., Visa®, MasterCard®, Citi®, etc.) and that mere usage of machine learning, which encompassed receiving data over a network from a machine learning third-party entity, which is arguably a computer function that is a well‐understood, routine, and conventional function as nothing in Applicant’s pending claims is required to actually perform any machine learning itself. In addition, Examiner noted that Applicant’s recited step of “automatically crediting, at the computer system, the prorated value of the change to an account” amounts to no more than insignificant post-solution activity and that transmitting data over a network (e.g., Applicant’s “crediting…to an account”) has been recognized by courts to be a computer function that is a well‐understood, routine, and conventional function (see sixth bullet point on page 7 of the “July 2015 Update: Subject Matter Eligibility” document, under § IV. (July 30, 2015), and encompasses a data output/transmittal function performed by virtually all general purpose computers {see Ultramercial, 772 F.3d at 716‐17; see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); and see Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988, 993 (Fed. Cir. 2014)}. Similarly, Applicant’s step of crediting…to an account is a data saving or depositing function performed by virtually all general purpose computers {see Alice Corp., 134 S. Ct. at 2360; Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988 (Fed. Cir. 2014), hereinafter “Cyberfone”; and Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 113 U.S.P.Q.2d 1354 (Fed. Cir. 2014), hereinafter “Content Extraction”, for data storage}. The role of Applicant’s recited “automatically crediting…to an account” is a conventional function that can be performed by a generic computer without any novel programming or improvement in the operation of the computer itself, which is consistent with Application’s disclosure of Sadhwani at ¶¶ [0080] and [0081] mentioning that its “present technology can operate on or within a number of different computer systems including general purpose networked computer systems, embedded computer systems, routers, switches, server devices, user devices, various intermediate devices/artifacts, stand-alone computer systems, mobile phones, personal data assistants, televisions and the like” and that Figure 5’s “Processors 506A, 506B, and 506C may be any of various types of microprocessors” (bolding emphases added by Examiner to Sadhwani at ¶¶ [0080] and [0081], respectively). Examiner noted that the prohibition against patenting abstract ideas cannot be circumvented by limiting the use of the idea to a particular technological environment, such as a networked computer system of a financial card provider.
In Applicant’s August 2022 amendment, Applicant argued “similar to the operation of Classen…the Claims define a specific and tangible method for…” (bolding original to page 12 of Applicant’s amendment filed in August 2022), which paralleled Applicant’s previous arguments on pages 9-11 of the May 2022 amendment that Applicant’s claim language is integrated into a practical application because the claimed “features…integrate the results of the analysis into a specific and tangible method” (bolding original to page 10 of Applicant’s amendment filed in May 2022). However, Applicant's May and August 2022 arguments in view of the Federal Circuit’s opinion of Classen were generic and conclusory with respect to the independent claims and, therefore, Applicant's arguments constituted no more than a general allegation that the pending claims define a patentable invention under § 101. For example, what does Applicant think is “the analysis” of Claim 1 that produces results? Likewise, what does Applicant think are “the results of the analysis” of Claim 1 that are integrated? Examiner noted that Applicant’s recited step of “obtaining…purchase information” amounted to no more than insignificant pre-solution activity and that receiving data over a network (e.g., Applicant’s “obtaining…purchase data” and “using”), has been recognized by courts to be a computer function that is a well‐understood, routine, and conventional function (see sixth bullet point on page 7 of the “July 2015 Update: Subject Matter Eligibility” document, under § IV. (July 30, 2015).
In Applicant’s amendment filed on October 5, 2023, Applicant argued that in view of specification paragraphs [0002] and [0016]–[0019], Applicant’s “claimed elements provide a technological solution that resolves the technological black hole…in the realm of the return/price drop guarantee window (or time frame) associated with the cardholder’s purchase”; “the claimed features provide a specific technological improvement that brings the third party system (e.g., the branded card provider)…into a forefront” (page 13 of Applicant’s amendment filed in October 2023); and “…the solution provides a technological improvement in that when the third party system (e.g., the branded card provider) identifies a price change, sale, coupon, etc. during the return window, the system automatically provides the savings to the customer,….” However, Applicant’s claimed features did not appear to reflect the combination of additional elements as: (1) improving the functioning of a computer itself or improving another technology or technical field, (2) applying the judicial exception with, or by use of, a particular machine/manufacture that is integral to the claim, (3) effecting a transformation or reduction of a particular article to a different state or thing, or (4) 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 as networked computer system of a financial card provider (e.g., Visa®, MasterCard®, Citi®, etc.). SAP Am., Inc. v. InvestPic, LLC, No. 2017-2081, 2018 U.S. App. LEXIS 12590, Slip. Op. 13 (Fed. Cir. May 15, 2018) (“What is needed is an inventive concept in the non-abstract realm.”). In contrast, any improvement is to Applicant’s underlying abstract idea — determining or calculating, after a person purchases an item, a prorated amount of compensation owed to the person, the amount calculated as a numerical difference in monetary value of the item since the person purchased the item {e.g., determining how much to refund a buyer after discovering a lower price for the same item (i.e., after the buyer’s original purchase)}. This is similar to a “price adjustment” given to a buyer after a product purchase. (Examiner noted from personal knowledge that The Home Depot, Inc. has been providing a price matching program through its “Price Guarantee” promise. Similarly, Examiner notes that Best Buy® offers a Price Match Guarantee program). Examiner noted that Applicant’s recited step of “automatically crediting, at the computer system, the prorated value of the change to an account” amounts to no more than insignificant post-solution activity and that transmitting data over a network (e.g., Applicant’s “crediting…to an account”) has been recognized by courts to be a computer function that is a well‐understood, routine, and conventional function (see sixth bullet point on page 7 of the “July 2015 Update: Subject Matter Eligibility” document, under § IV. (July 30, 2015), and encompasses a data output/transmittal function performed by virtually all general purpose computers {see Ultramercial, 772 F.3d at 716‐17; see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); and see Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988, 993 (Fed. Cir. 2014)}. Similarly, Applicant’s step of crediting…to an account is a data saving or depositing function performed by virtually all general purpose computers {see Alice Corp., 134 S. Ct. at 2360; Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988 (Fed. Cir. 2014), hereinafter “Cyberfone”; and Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 113 U.S.P.Q.2d 1354 (Fed. Cir. 2014), hereinafter “Content Extraction”, for data storage}. The role of Applicant’s recited “automatically crediting…to an account” is a conventional function that can be performed by a generic computer without any novel programming or improvement in the operation of the computer itself, which is consistent with Application’s disclosure of Sadhwani at ¶¶ [0080] and [0081] mentioning that its “present technology can operate on or within a number of different computer systems including general purpose networked computer systems, embedded computer systems, routers, switches, server devices, user devices, various intermediate devices/artifacts, stand-alone computer systems, mobile phones, personal data assistants, televisions and the like” and that Figure 5’s “Processors 506A, 506B, and 506C may be any of various types of microprocessors” (bolding emphases added by Examiner to Sadhwani at ¶¶ [0080] and [0081], respectively). Examiner notes that the prohibition against patenting abstract ideas cannot be circumvented by limiting the use of the idea to a particular technological environment, such as a networked computer system of a financial card provider.
In Applicant’s March 2024 amendment, Applicant argued that the judicial exception (i.e., abstract idea exception) is integrated into a practical application because Claim 1 provides “improvements to any other technology or technical field” (emphases original to Applicant’s March 2024 amendment on page 11). However, Applicant submitted that the “technical field” is “of post purchase product price reduction guarantees”; however, Examiner understands “post purchase product price reduction guarantees” as part of Applicant’s abstract idea — nothing technical as a person can offer another person a post purchase product price reduction guarantee without any technology or technical field being used/utilized. Determining/calculating how much purchase value (e.g., price, coupon value, reward value) of an item changes after the item is purchased by an individual and determining a prorated amount of compensation owed to the individual (within a certain period of time) based on the value difference, as currently recited in Applicant’s pending claims and further explained below, is within a certain method of organizing human activity — (i) fundamental economic principle or practice and/or (ii) commercial interaction (including advertising, marketing or sales activities or behaviors; business relations). On pages 12-13 of Applicant’s March 2024 amendment, Applicant argued its claimed subject matter “achieves higher performance…than traditional methods”. However, Applicant's March 2024 arguments of “achieves higher performance…than traditional methods” were generic and conclusory with respect to what is recited in the independent claims and, therefore, Applicant's arguments constituted no more than a general allegation that the pending claims define a patentable invention under § 101.
In Applicant’s September 2024 amendment, Applicant argued that the judicial exception (i.e., abstract idea exception) is integrated into a practical application (Step 2A, prong 2) because “claimed features provide a novel solution…to achieve the desired result of improving price drop guarantee performance” with “the solution include[ing] a time limit” (see page 11 of the September 2024 amendment). However, Examiner noted that Applicant’s argument of providing “a novel solution…to achieve” improvement in “price drop guarantee performance” amounted to no more than a speculative/conclusory allegation that the pending claims “achieve the desired result of improving price drop guarantee performance” to support an invention under § 101. Applicant's alleged performance improvement was no more than a desired or intended result that is not required to occur or be achieved based on the language previously recited in each of Applicant’s claims. Thus, none of Applicant’s claims were required to improve any computer related technology or to improve upon the functioning of the computer itself. Consequently, Applicant's arguments constituted no more than a general allegation that the claims provided a performance improvement under § 101. Thus, based upon consideration of all of the relevant factors with respect to each claim as a whole, Applicant’s Claims 1, 4-6, 8-9, 12-13, 15-16, 18 and 20 were directed to non-statutory subject matter and, therefore, remained rejected under 35 U.S.C. 101.
In Applicant’s May 2025 amendment, Applicant argued that the judicial exception (i.e., abstract idea exception) is integrated into a practical application (Step 2A, prong 2) because “continuously monitoring…” and “providing… an option to select” are “additional elements” (see pages 11-13 of the May 2025 amendment). However, Examiner noted that “continuously monitoring…” encompasses an abstract idea while “providing… an option to select” merely encompasses an output/transmittal function performed by virtually all general purpose computers {see Ultramercial, 772 F.3d at 716‐17; see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); and see Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988, 993 (Fed. Cir. 2014)}. Examiner noted that “continuously monitoring…” and “providing… an option to select” does not improve the functioning of a computer or improve any other technology since “continuously monitoring…” and “providing… an option to select” taken individually and collectively merely provided generic computer implementations known to the industry. The role of Applicant’s recited “continuously monitoring…” and “providing… an option to select” could be performed by a generic computer without any novel programming or improvement in the operation of the computer itself, which is consistent with Application’s disclosure of Sadhwani at ¶¶ [0080] and [0081] mentioning that its “present technology can operate on or within a number of different computer systems including general purpose networked computer systems, embedded computer systems, routers, switches, server devices, user devices, various intermediate devices/artifacts, stand-alone computer systems, mobile phones, personal data assistants, televisions and the like” and that Figure 5’s “Processors 506A, 506B, and 506C may be any of various types of microprocessors” (bolding emphases added by Examiner to Sadhwani at ¶¶ [0080] and [0081], respectively). Examiner noted that the prohibition against patenting abstract ideas cannot be circumvented by limiting the use of the idea to a particular technological environment, such as a networked computer system of a financial card provider. Based on all of the relevant factors with respect to each claim as a whole, Applicant’s Claims 1, 5-6, 8-9, 12-13, 15-16, 18 and 20 were directed to non-statutory subject matter and, therefore, were rejected under 35 U.S.C. 101 via Examiner’s final Office action dated August 21, 2025.
In Applicant’s October 2025 amendment, Applicant argues that the judicial exception (i.e., abstract idea exception) is integrated into a practical application (Step 2A, prong 2) because “continuously monitoring…” and “providing… an option to select” are “additional elements” (see pages 13-15 of the October 2025 amendment). However, Examiner notes that “continuously monitoring…” encompasses an abstract idea while “providing… an option to select” merely encompasses an output/transmittal function performed by virtually all general purpose computers {see Ultramercial, 772 F.3d at 716‐17; see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); and see Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988, 993 (Fed. Cir. 2014)}. Examiner notes that “continuously monitoring…” and “providing… an option to select” do not improve the functioning of a computer or improve any other technology since “continuously monitoring…” and “providing… an option to select” taken individually and collectively merely provide generic computer implementations known to the industry. The role of Applicant’s recited “continuously monitoring…” and “providing… an option to select” can be performed by a generic computer without any novel programming or improvement in the operation of the computer itself, which is consistent with Application’s disclosure of Sadhwani at ¶¶ [0080] and [0081] mentioning that its “present technology can operate on or within a number of different computer systems including general purpose networked computer systems, embedded computer systems, routers, switches, server devices, user devices, various intermediate devices/artifacts, stand-alone computer systems, mobile phones, personal data assistants, televisions and the like” and that Figure 5’s “Processors 506A, 506B, and 506C may be any of various types of microprocessors” (bolding emphases added by Examiner to Sadhwani at ¶¶ [0080] and [0081], respectively).
Furthermore regarding Applicant’s arguments in the October 2025 amendment, Examiner notes that to “web crawl a plurality of Internet web pages to obtain a latest purchase price and a latest reward information” (e.g., see pages 15-16 of the October 2025 amendment), as currently recited in Applicant’s independent claims, encompasses a data input/loading or retrieving function performed by virtually all general purpose computers {see Alice Corp., 134 S. Ct. at 2360; see Ultramercial, 772 F.3d at 716‐17; see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); see Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988, 993 (Fed. Cir. 2014); and see Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. __, 132 S.Ct. 1289, 101 USPQ2d 1961 (2012)}. Similarly, Examiner notes that to “web crawl a plurality of Internet web pages to obtain a latest purchase price and a latest reward information”, as currently recited in Applicant’s independent claims, encompasses a data recognition/inquiry function or retrieving function performed by virtually all general purpose computers {see Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 113 U.S.P.Q.2d 1354 (Fed. Cir. 2014), hereinafter “Content Extraction”, for data recognition). Examiner notes that utilizing an API to web crawl does not improve the functioning of a computer or improve any other technology since utilizing an API to web crawl to obtain information (e.g., latest purchase price and latest reward information), as currently recited in Claims 1 and 9 taken individually and collectively, merely provides generic computer implementations known to the industry. The role of Applicant’s utilization of an API to web crawl can be performed by a generic computer without any novel programming or improvement in the operation of the computer itself, which is consistent with Application’s disclosure of Sadhwani at ¶¶ [0080] and [0081] mentioning that its “present technology can operate on or within a number of different computer systems including general purpose networked computer systems, embedded computer systems, routers, switches, server devices, user devices, various intermediate devices/artifacts, stand-alone computer systems, mobile phones, personal data assistants, televisions and the like” and that Figure 5’s “Processors 506A, 506B, and 506C may be any of various types of microprocessors” (bolding emphases added by Examiner to Sadhwani at ¶¶ [0080] and [0081], respectively).
Regarding Applicant’s arguments in the January 2026 Amendment, Examiner notes that the prohibition against patenting abstract ideas cannot be circumvented by limiting the use of the idea to a particular technological environment, such as a networked computer system of a financial card provider. The Applicant asserts that the claims reflect an advancement rooted in technology similar to the 101 analysis in the DDR case. However, unlike DDR, Applicant’s claims do not disclose any improvements or inventive concepts rooted in technology. A computer system as recited in Applicant’s pending claims is a mere application of an abstract concept to a technological field. Monitoring in any particular way is not a technical improvement of the internet or a computer system (i.e. the underlying technology). Accordingly, upon reconsideration, the claims remain appropriately rejected under 35 U.S.C. 101 for being directed to non-statutory subject matter.
Based on all of the relevant factors with respect to each claim as a whole, Applicant’s Claims 1, 5-6, 8-9, 12-13 are 15 are directed to non-statutory subject matter and, therefore, remain rejected under 35 U.S.C. 101.
Please see above § 101 rejection to Claim 1 for at least similar reasons provided that Claims 5-6, 8-9, 12-13 and 15 are not patentable based on Claims 5-6, 8-9, 12-13 and 15 reciting “features similar to…the features identified…with respect to” Claim 1.
Regarding § 103, please see citations to prior art references of U.S. Patent No. 10,387,906 (“Sharma”) as well as U.S. Patent Application Publication Nos. 2015/0302522 (“Howe”) and 2004/0122736 (“Strock”) in the § 103 rejections above regarding claim language recited in Applicant’s pending claims. Examiner notes that during patent examination, the pending claims must be “given their broadest reasonable interpretation”. In view of this standard, Examiner asserts § 103 rejections to the claims, as noted above under § 103.
Please see above § 103 rejections with respect to independent Claims 1 and 9 for at least the same reasons provided with respect to the independent claims that dependent Claims 5-6, 8, 12-13 and 15, depending from respective independent Claims 1 and 9 and including the limitations therein, are not patentable based on dependency from respective independent claims.
Conclusion
The following references are considered pertinent to Applicant's disclosure, and are being made of record albeit the references are not relied upon as a basis for rejection in this particular Office action:
U.S. Patent Application Publication No. 2012/0303412 of Etzioni et al. (hereinafter “Etzioni”) as citied in the non-final Office action dated 2/09/2023, such as Etzioni teaching customers shopping for a product want to obtain the "right" product at the best price for that product (e.g., Etzioni at ¶ [0003]) as well as using machine learning to predict a price drop (e.g., using machine learning to predict or forecast price changes or price movements —Etzioni at ¶¶ [0066] and [0166]–[0183]).
U.S. Patent Application Publication No. 2012/0047008 of Alhadeff et al. (hereinafter “Alhadeff”) as citied in the final Office action dated 4/08/2024, with respect to Claim 7 with Alhadeff teaching crediting rewards to a user account created for the user on a rewards management platform (e.g., Alhadeff at ¶ [0012]), such as a credit card account of the user (e.g., “credit card account” — Alhadeff at ¶ [0014]), providing a graphical user interface (GUI) so that a user can selectively distribute or allocate rewards among various accounts with an option for the user to input a selected option of the prorated value from a group consisting of: a statement credit, a rewards offer that is equal to or greater in value than the prorated value, and a combination of said statement credit and the rewards offer value (e.g., Alhadeff at ¶¶ [0013] and [0043]).
U.S. Patent No. 9,972,047 issued to Elliott et al. (hereinafter “Elliott”) for “customer to select on user interface 700 an amount of rewards points or cash value within a defined range. Each selection mechanism 704 may comprise a range indicator, such as range indicator 706, and a value selector, such as value selector 705. Range indicator 706 may correspond to the minimum and maximum values for the particular rewards program and may be appropriately sized and shaped to give the customer an accurate representation (e.g., a range of 1000 points may appear larger than a range of 100 points). Value selector 705 may be positioned to correspond to the currently selected amount of rewards points or cash value for the particular program and may be moved within the range of range indicator 706 to select a different value. For example, the customer may drag and drop value selector 705 with a computer mouse or finger on a touch screen or the customer may also use left and right arrow keys on a keyboard. As depicted in FIG. 13, for instance, the customer may have moved value selector 705 for the “First Bank” program all the way to the minimum position corresponding to zero points to be allocated and may have moved value selector 705 for the “First Airlines” program all the way to the maximum position corresponding to 17 frequent flyer miles. The currently selected amount of rewards points or cash value for a particular program or account may be displayed in allocation display 712. Also, other types of selection mechanisms may be used as well.” —Elliott at description paragraph 82.
U.S. Patent Application Publication No. 2021/0160247 of GADDAM et al. (hereinafter “Gaddam”) for “machine learning model requestor 1202 may want a machine learning model to determine the probability that the price of a good will drop” —Gaddam at ¶ [0216].
U.S. Patent Application Publication No. 2019/0005498 of ROCA et al. (hereinafter “Roca”), which lists Comenity as an Applicant, for “A brand specific credit account refers to a credit account that is available for use only at locations related to the brand. E.g., Tim's store has a brand specific credit account that allows Celeste, a Tim's store customer, to purchase with credit at Tim's store using Tim's brand specific credit account. However, Celeste cannot use the Tim's brand specific credit account to make purchases at her local gas station. A brand specific credit account may also be referred to as a private label card, e.g., a card that can be used for purchases only at the store on the label” —Roca at ¶ [0012].
U.S. Patent Application Publication No. 2018/0330383 of PONTIOUS et al. (hereinafter “Pontious”), which lists Comenity as an Applicant, for “A brand specific credit account refers to a credit account that is available for use only at locations related to the brand. E.g., Tim's store has a brand specific credit account that allows Celeste, a Tim's store customer, to purchase with credit at Tim's store using Tim's brand specific credit account. However, Celeste cannot use the Tim's brand specific credit account to make purchases at her local gas station. A brand specific credit account may also be referred to as a private label card, e.g., a card that can be used for purchases only at the store on the label.” —Pontious at ¶ [0013].
U.S. Patent Application Publication No. 2018/0225673 of Dubey et al. (hereinafter “Dubey”) for “a credit card issuing company may offer a 60-day monitoring of items purchased with the credit card. Within the 60 days, if a price reduction of the item purchased is found, then the credit card issuing company will refund the difference between the price paid for the item and the lower price found.” —Dubey at ¶ [0003].
U.S. Patent Application Publication No. 2018/0101889 of NACK et al. (hereinafter “Nack”), which lists Comenity as an Applicant, for “brand” related aspects of financial services.
U.S. Patent Application Publication No. 2018/0053252 of KOLTNOW et al. (hereinafter “Koltnow”), which lists Comenity as an Applicant, for “brand credit account” —Koltnow at ¶ [0022]; and for “brand” related aspects of financial services.
U.S. Patent Application Publication No. 2017/0193542 of Rapaka et al. (hereinafter “Rapaka”) for “compare the price paid by the one of the customers and the pricing information of the product associated with at least one of the other retailers. The credit determination module 36 … to award the one of the customers a credit if the comparison of the price paid by the one of the customers and the pricing information of the product associated with at least one of the other retailers meets predefined criteria and to store the search engine search request and any awarded credit in the first database 46 as usage information associated with the one of the customers.” —Rapaka at [0077].
U.S. Patent Application Publication No. 2015/0348084 of L. Grant Lynd (hereinafter “Lynd”) for a rewards allocation engine 116 —Lang at ¶ [0021]; and Figure 2 of Lynd.
U.S. Patent Application Publication No. 2014/0278902 of Hatch et al. (hereinafter “Hatch”) for “ Evaluating Transaction Concluded At Point Of Sale (POS) Device… To Generate Second Transaction Record Listing Updated Prices For Portion Of Items” —Title of Hatch.
U.S. Patent Application Publication No. 2011/0055005 of Brook W. Lang (hereinafter “Lang”) for “allow the purchase price to be reduced or credit applied immediately or shortly after the sale is consummated if the advertisement is some kind of a discount that is to be specific for a select group of customers such as a coupon” —Lang at ¶ [0009].
U.S. Patent Application Publication No. 2007/0265914 of Guy Lamonte McClung III (hereinafter “McClung”) for “guaranteeing a consumer a best price on an item … purchased from a vendor in a consummated final first transaction, the method including…determining a refund due to insure that a consumer receives the benefit of a later better price.” —Abstract of McClung; as well as “determining the lowest price of the plurality of said second prices and generating a refund amount corresponding to a money-value difference between said lowest price and said first price, generating a refund amount equal to said money-value difference and, crediting an account of the consumer with the largest money-value difference.” —Claim 16 of McClung; and “a money-value difference between the first price and said any price lower than the first price, and refunding …by crediting a consumer's account… to the consumer an amount equal to the money-value difference” —McClung at [0025]; “guaranteed pricing is in effect throughout an entire preset time period and all lower prices will automatically be applied” —McClung at [0026]; and “provide guaranteed pricing for a predetermined time period so that a consumer is assured that an item purchased will not be sold in the near future at a discount or sale price which is not made available to the consumer” —McClung at ¶ [0003].
U.S. Patent Application Publication No. 2004/0143502 of Guy L. McClung III (hereinafter “McClung ‘502) for “Guaranteed Pricing Systems” —Title of McClung ‘502.
U.S. Patent Application Publication No. 2002/0069118 of Roel Zylstra (hereinafter “Zylstra”) for “… continually monitor prices of goods that they have recently purchased at a purchase price from an original seller, to be notified if prices lower than that of the purchase price are found, to request a refund per the original seller's price guarantee, and potentially to receive a refund without directly requesting it from the original seller. Additionally,…may bring to the buyer's attention that a particular seller has a price guarantee of which the buyer was not previously aware…. refunding system that improves the ability of buyers to determine and receive refunds from sellers who sold overpriced items to them” —Zylstra at ¶ [0014]; “queries sellers of their current price for the items associated with the refund management requests, and notifies buyers of and transfers potential refunds. Thus, a buyer is able to ensure a refund, giving the buyer confidence that he will receive a fair refund according to the original seller's price guarantee, if a lower price is found” —Zylstra at ¶ [0035]; and “effectuating refund receipt…. allows buyers of goods and services to continually monitor prices of recently purchased items, to be notified if lower prices are found, to request a refund per the original seller's price guarantee, and potentially to receive a refund without requesting it from the seller…. the apparatus…includes a controller that receives refund management requests from buyers. The controller continually scans for lower prices. When a lower price is found the buyers are notified and may request a refund from the original seller” —Abstract of Zylstra.
U.S. Patent No. 7,058,581 issued to Bruce A. Young (hereinafter “Young”) for “If the product is in good condition and is the proper product, but was not returned on time, a pro-rated "credit" based on the overdue time is issued 358 to the consumer” —Spec. of Young.
U.S. Patent Application Publication No. 2013/0191258 of Zhu et al. (hereinafter “Zhu”) for “determine that the user is to be reimbursed on a prorated basis (i.e., receive a prorated reimbursement) for a remainder of the calendar month” —Zhu at ¶ [0092].
U.S. Patent Application Publication No. 2005/0107898 of Gannon et al. (hereinafter “Gannon”) for “credited some form of prorated refund based on the duration the user had utilized the software option” —Gannon at ¶ [0034].
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 extension fee 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 Mathew Syrowik whose telephone number is 313-446-4862. The examiner can normally be reached on Monday through Friday 8:30 AM to 4:00 PM (Eastern Time). If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Waseem Ashraf, can be reached at telephone number 517-270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Mathew Syrowik/ Primary Examiner, Art Unit 3621