Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Status of Claims
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17 (e), was filed in this application after final rejection. since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17 (e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on 04/14/2026 has been entered.
Claims 1, 12 and 18 have been amended.
Claims 1-20 are currently pending and have been examined.
Response to Applicant’s Arguments
Applicant’s amendments and arguments filed on 04/14/2026 have been fully considered and discussed in the next section. Applicant is reminded that the claims must be given its broadest, reasonable interpretation.
With regard to claims 1, 12 and 18 rejection under 35 USC § 112 (a), first paragraph, Applicant has clarified the claims by removing the phrase of “ automatically performed” by a processor and/or a computer system. Therefore, the claim rejection of claims 1, 12 and 18 rejection under 35 USC § 112 (a), first paragraph is withdrawn.
With regard to claims 1-20 rejection under 35 USC §101:
With respect to Step 2A prong 2:
Applicant argues that “the Claim as a whole integrates the judicial exception into a practical application, and as such, the Claim is not directed to a judicial exception. MPEP 2106.04(d) "Integration of a Judicial Exception Into A Practical Application" states, in part, "after determining that a claim recites a judicial exception in Step 2A Prong One, examiners should evaluate whether the claim as a whole integrates the recited judicial exception into a practical application of the exception in Step 2A Prong Two. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Whether or not a claim integrates a judicial exception into a practical application is evaluated using the considerations set forth in subsection I below, in accordance with the procedure described below in subsection II. In the context of the flowchart in MPEP § 2106, subsection III, Step 2A Prong Two determines whether: The claim as a whole integrates the judicial exception into a practical application, in which case the claim is not directed to a judicial exception (Step 2A: NO) and is eligible at Pathway B. This concludes the eligibility analysis." MPEP § 2106 provides a number of ways to integrate the exception into a practical application, one of the ways is "improvements to any other technology or technical field." MPEP 2106.05(e) (page 2/6)”.
Examiner disagrees. It appears that Applicant has misconstrued MPEP § 2106. Only technological improvements rooted in the "additional elements" of a claim are capable of transforming an abstract idea into a practical application under Step 2a, Prong 2, and only "additional elements" are capable of being considered "significantly more" under Step 2b.
Additional elements are those elements outside of the identified abstract idea itself. In the instant case the only additional elements are “a computer”, as evidenced by applicant specification [24, 27 and 68-71] which are just general-purpose computers with generic computing components upon which the abstract idea is applied which is insufficient to transform an abstract idea into a practical application under Step 2a, Prong 2 or be considered significantly more under Step 2b.
Thus, any purported technological improvement obtained by practicing the claimed invention is rooted solely in the abstract idea itself which is merely applied using the general-purpose computer, and not rooting in the additional elements upon which the abstract idea is applied.
Improvements of this nature are improvement to an abstract idea which are improvements in ineligible subject matter (see MPEP 2106.05(a) - “It is important to note, the judicial exception alone cannot provide the improvement”; and the SAP v Investpic decision - Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because they are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms. Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non-abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract).
As such, under Prong Two of Step 2A of the Alice/Mayo test, when considered both individually and as a whole, the limitations of representative claim 1 are not indicative of integration into a practical application (Step 2A, Prong Two: NO).
Under Step 2B, the claim is also analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract idea. See MPEP 2106.05. Although additional elements are recited, representative claim 1 merely invokes such additional elements as a tool to perform the abstract idea.
Implementing an abstract idea on a generic computer is not indicative of integration into a practical application. Similar to the limitations of Alice, representative claim 1 merely recites a commonplace business method (i.e. computer) being applied on a general purpose computer. See MPEP 2106.05(f).
As such, a purported improvement in what the Applicant calls a technical field is an improvement in ineligible subject matter. In order for an improvement to a technology or technological filed to overcome a 35 USC 101 rejection, the purported improvement must be rooted in the "additional elements" which in this case they are not. The claimed additional elements are merely a general purpose computer upon which an abstract idea is merely being applied which is insufficient to transform an abstract idea into a practical application under Step 2a, Prong 2.
The instant claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Since representative claim 1 recites an abstract idea and fails to integrate the abstract idea into a practical application, representative claim 1 is “directed to” an abstract idea (Step 2A: YES). “However, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. MPEP 2106.05(a)(II) ” .
As such Applicant's claimed solution is NOT technological and does not addresses a technological problem. Hence, Examiner maintains that the claims do not define substantially more than the abstract idea. Therefore, the claim rejection of claims 1-20 rejection under USC § 101 is maintained.
Applicant argues that “Here, the Specification describes the improvement, "present embodiments, as will be described and explained below in detail, provide a novel approach for using middle out loyalty where dynamic rewards are applied to the "middle" of the value proposition. That is, middle out loyalty provides different embodiments that allow the middle out (e.g., the 2% cash back of the card) to have a flexible, dynamic, adjustable value proposition that provides incentive for a customer to use the cobrand card more often for both in-brand and out-of-brand purchases." ([0020] of Applicant's Specification) . Applicant's Specification submits the state of the technical field prior to the claimed features did not even include a suggestion of a dynamic middle out loyalty offer. Because, it did not exist prior to Applicant's submission. As such, one of ordinary skill in the art within the technical field could not know about, or otherwise contemplate the claimed elements: …. Moreover, the Applicant's position that the claimed elements were unknown in the field are supported by the Office Action's admittance on page 9 of the instant Office Action: "The examiner, has been unable to find prior art that discloses the combination of the claimed features of "said dynamic middle out loyalty offer comprising: obtaining a number of customer specific characteristics for a specific co-brand account holder; obtaining one or more brand requirements for said brand; using one or more of said number of customer specific characteristics of said specific co-brand account holder in conjunction with said brand requirements to generate said dynamic middle out loyalty offer specifically customized for said specific co-brand account holder; setting a minimum value of said mid- tier reward; setting a maximum value of said mid-tier reward; setting a time frame for said dynamic middle out loyalty offer for said specific co- brand account holder; increasing said value of said mid-tier reward from said minimum value up to said maximum value each time said specific co-brand account holder makes a purchase related to said dynamic middle out loyalty offer; and resetting said value of said mid-tier reward to said minimum value after said time frame has tolled". (bold emphasis added). For at least these reasons, Applicant respectfully submits the claimed elements cannot must be new elements and therefore must also be an improvement to the technological field as it was a previously non-existent. As such, Applicant respectfully submits the elements of Independent Claim 1 are sufficient to overcome the rejection under 35 U.S.C. § 101. Independent Claims 12 and 18 recite features similar to (yet possibly different from) the features identified above with respect to independent Claim 1. Therefore, Applicant respectfully submits that the elements of Claims 12 and 18 are sufficient to overcome the rejection under 35 U.S.C. § 101 for at least the reasons given above with respect to Claim 1. Claims 2-11 depend from Claim 1, Claims 13-17 depend from Claim 12, and Claims 19-20 depend from Claim 18. Therefore, Applicant respectfully submits that the elements of Claims 2-11, 13-17, and 19-20 overcome the 35 U.S.C. §101 rejection for at least the reasons set forth above with respect to Claims 1, 12, and 18. For at least the forgoing reasons, Applicant submits that Claims 1-20 are directed to statutory subject matter. Accordingly, Applicants respectfully request that the Examiner reconsider and withdraw the rejection of Claims 1-20 under 35 U.S.C. § 101 (page 4/6)”.
Examiner disagrees. Examiner asserts that the rejection of claims under 35 USC 101 is separate and distinct from rejections for anticipation and obviousness. Rejecting the claims under 35 U.S.C. § 102 and/or 35 U.S.C. § 103 has no bearing or consequence on the materiality of a rejection under 35 U.S.C. § 101.
As noted in prior office action(s) rejection (s), in the above proceeding section and the rejection below, the additional elements of independent claims ((computer (claims 1,12); system, memory , and one or more processor, claim 18)), do not amount to significantly more under the framework. The claim does not qualify under the other non-limiting non-exclusive examples. in order to overcome a 35 USC 101 rejection, the technical solution to a technical problem must be rooted in the "additional elements". Additional elements are defined as those elements outside the identified abstract idea itself. As thus, the only additional elements in the claim that would be capable of overcoming the 101 are a general-purpose computer with generic computer components upon which an abstract idea is merely being applied. As such, an purported improvement in what the applicant calls a technical field is an improvement in ineligible subject matter. In order for an improvement to a technology or technological filed to overcome a 35 USC 101 rejection, the purported improvement must be rooted in the "additional elements" which in this case they are not. The claimed additional elements are merely a general purpose computer upon which an abstract idea is merely being applied which is insufficient to transform an abstract idea into a practical application under Step 2a, Prong 2. As such Applicant's claimed solution is NOT technological and does not addresses a technological problem.
Hence, Examiner maintains that the claims do not define substantially more than the abstract idea. Therefore, the claim rejection of claims 1-20 rejection under USC § 101 is maintained.
Claim Objections
Claim 8 is objected to because there is insufficient antecedent basis for the term “the brand”. Appropriate correction is required.
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 1-11, 12-17 and 18-20 are directed to a method, non-transitory computer -readable storage medium and a system which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
However, claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) the following abstract idea:
providing a three-tiered concurrent reward structure for a co-brand credit account, said establishing a top-tier reward for said co-brand credit account, said top-tier reward comprising a fixed reward value;
defining a bottom-tier reward for said co-brand credit account, said bottom-tier reward comprising a second fixed reward value less valuable than said first fixed reward value ;
generating a mid-tier dynamic middle out loyalty offer for said co-brand credit account, said dynamic middle out loyalty offer comprising a value less than said first fixed reward value and more than said second fixed reward value, said generating of said dynamic middle out loyalty offer comprising:
obtaining a number of customer specific characteristics for a specific co-brand account holder;
obtaining one or more brand requirements for said brand;
using one or more of said number of customer specific characteristics of said specific co-brand account holder in conjunction with said brand requirements to generate said dynamic middle out loyalty offer customized for said specific co-brand account holder;
setting a minimum value of said mid-tier reward;
setting a maximum value of said mid-tier reward;
setting a time frame for said dynamic middle out loyalty offer for said specific co- brand account holder; and
increasing said value of said mid-tier reward from said minimum value up to said maximum value each time said specific co-brand account holder makes a purchase related to said dynamic middle out loyalty offer; and automatically generating a new mid-tier dynamic middle out loyalty offer customized for said specific co-brand account holder after said time frame has tolled.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely commercial or legal interactions because they recite advertising, marketing and sales activities or behaviors. Accordingly, the claim recites an abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes). This judicial exception is not integrated into a practical application because the claim only recites the additional elements of computer (claims 1,12); system, memory , and one or more processor, claim 18)). The additional technical elements above are recited at a high-level of generality (i.e., as a generic processor and generic computer components performing a generic computers function of processing, communicating and displaying) such that it amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and generic computer components. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (see MPEP 2106.05(e) and Vanda memo).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on one or more computers, or merely uses computers as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
Thus, the claim is “directed to” an abstract idea (i.e. “PEG” Revised Step 2A Prong Two=Yes).
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using (a computer), to perform the claimed functions amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and one or more generic computer component.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on one or more computers, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent-eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires one or more general-purpose computer and generic computer components (as evidenced from paragraphs 57 and 117 of the applicant’s specification) and the affinity v Direct TV decision which states that a database is a generic computer component); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility.
Thus, taken individually and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea) (i.e., “PEG” Step 2B=No). For the same reason these elements are not sufficient to provide an inventive concept. For these reasons, there is no inventive concept in the claim, and thus the claim is not patent eligible. Same Judicial analysis is applied here to independent claims 12 and 18.
The dependent claims 2-11, 13-17,19-20 appear to merely further limit the abstract idea by further limiting the abstract idea by presenting an opportunity for specific cp -brand holder to perform a pre-defined number of tasks ( claims 2-5,13, 19-20); further limiting the customer specific characteristics ( claims 6-7, 14); further limiting the brand requirement ( claim 8); further limiting the dynamic middle out loyalty offer customized for the specific co-brand account holder (claims 9-11, 15-17); and therefore only further limit the abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes), does/do not include any new additional elements that are sufficient to amount to significantly more than the judicial exception, and as such are “directed to” said abstract idea (i.e. “PEG” Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. “PEG” Step 2B=No). Thus, based on the detailed analysis above, claims 1-20 are not patent eligible.
Possible Allowable Subject Matter
Claims 1-20 would be allowable over the prior art if the applicant were to be able to overcome the 35 USC 101 rejections identified above.
The following is a statement of reasons for the indication of allowable subject matter: The most relevant prior the examiner has found is:
Mathew, US Pub No: 20150012425 A1 discloses an intelligent decision engine that analyzes data associated with the payment card accounts of a consumer along with other information regarding a particular transaction, and then provides a recommendation to a cardholder concerning which payment card account(s) to use to maximize value. In an embodiment, a processor receives service call data associated with a purchase transaction, determines that a cardholder is a registered smart preferences user, and accesses smart preferences cardholder profile data. The processor then determines a recommendation of at least one payment card account to select for use in the purchase transaction, and transmits the recommendation to a device for consideration and selection of a payment card account by the cardholder.
Pletz et al, US Pat No: 7,401,731 B1 teaches a method involves identifying multiple customized rules for an access mechanism e.g. co-branded credit card, associated with a customer (110 - 112) and adjusting one of multiple accounts based on customer behavior, where the accounts share a funding account. The account applied to a transaction is defined by priority rules and payment rules that define the making of payments for the accounts, where two accounts share common benefits. The funds drawn for the funding account from multiple funding sources (144) are defined by multiple funding rules.
Iannacci et al, US Pub No: 2002/0062249 A1 teaches: A system and process that provides an on-line, interactive, and fully integrated benefit-driven value exchange and settlement program that monitors, evaluates, and manages economic and personal benefits and executes functions to produce and acquire the maximum or preferred benefit items for users by guiding and automating appropriate payment and settlement actions. The present invention finds useful patterns in data; produces conclusions based on rules and experience; responds to environmental changes with or without human intervention; and, may evolve through selecting the best results from random mutations all of which are intended to maximize user value.
Alkatib et al, US Pub No: 2013/0275200 A1, teaches multi-tier and real-time product loyalty incentive marketing. Specifically, this invention relates to systems and methods for enabling real-time (or near real-time) product loyalty marketing (e.g., Business to Consumer, Business to Business and Consumer to Consumer) with various marketing channels (such as e-Commerce channel(s), Mobile, Social Network channel(s), Web Site channel(s) and Point of Sales (POS) channel(s)) in one or more multi-tier product loyalty campaigns. All marketing channels are fully integrated via real-time (or near real-time) incentive processing using a backend engine (web services and loyalty data servers) provided by the system.
While it may be obvious to adjust and select best reward amount based on user transactions using the above mentioned inventions. However, the combination of the above mentioned inventions does not disclose the instant claimed steps of selecting middle rewards or incentives of single three tier loyalty card account. Thus, the Examiner has been unable to find a prior art that discloses and performing the claimed invention in the manner claimed. As such, claims 1-20 would be allowable over the prior art if the applicant were to be able to overcome the 35 USC 101 rejections identified above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Alkatib et al, US Pub No: 2013/0275200 A1, teaches multi-tier and real-time product loyalty incentive marketing. Specifically, this invention relates to systems and methods for enabling real-time (or near real-time) product loyalty marketing (e.g., Business to Consumer, Business to Business and Consumer to Consumer) with various marketing channels (such as e-Commerce channel(s), Mobile, Social Network channel(s), Web Site channel(s) and Point of Sales (POS) channel(s)) in one or more multi-tier product loyalty campaigns. All marketing channels are fully integrated via real-time (or near real-time) incentive processing using a backend engine (web services and loyalty data servers) provided by the system.
Mathew, US Pub No: 20150012425 A1 discloses an intelligent decision engine that analyzes data associated with the payment card accounts of a consumer along with other information regarding a particular transaction, and then provides a recommendation to a cardholder concerning which payment card account(s) to use to maximize value. In an embodiment, a processor receives service call data associated with a purchase transaction, determines that a cardholder is a registered smart preferences user, and accesses smart preferences cardholder profile data. The processor then determines a recommendation of at least one payment card account to select for use in the purchase transaction, and transmits the recommendation to a device for consideration and selection of a payment card account by the cardholder.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Affaf Ahmed whose telephone number is 571-270-1835. The examiner can normally be reached on [M- R 8-6 pm ].
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached at 571-270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AFAF OSMAN BILAL AHMED/Primary Examiner, Art Unit 3622
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