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
This action is in reply to the communication filed on 11/26/2025.
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 11/26/2025 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 1-20 rejection under 35 USC § 101:
Applicant argues that “ herein amended each of the Independent Claims, Claims 1, 12 and 18, to expressly state that various claimed elements are "automatically performed" by a processor and/or computer system. 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 (page 5/8)”.
Examiner disagrees. Amended each Independent Claims, Claims 1, 12 and 18, to expressly state that various claimed elements are "automatically performed" by a processor and/or computer system do not over come the claim rejection under 35 USC § 101, because the claimed processor and/or computer system is a generic computer components and/ or computer that fails to (a) improve another technology or technical field and (b) improve the functioning of the computer itself and (c) applies the abstract idea with or by use of, a particular machine, which is a generic computer performing generic computer functions and are not seen to recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself.
Second, under Step 2a, Prong 2, the improvement to a technology or technological field must be rooted in the additional element. Additional elements are those elements outside of the identified abstract idea itself. In the instant case the only additional elements are “ server, portable terminals, processor, memory, storage device, (input/ output ) device, communication device, data bus, module”, 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 improvement obtained by practicing the abstract idea, is an improvement obtained by practicing the abstract idea and not rooting in the additional elements upon which the abstract idea is applied. Improvements of this nature are not patent eligible (see SAP v. Investpic: 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 there 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.). Thus, the rejection has been maintained. Therefore, the claim rejection of claims 1-20 rejection under 35 USC § 101 is maintained.
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- 20 are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception subject matter, specifically an abstract idea. The analysis for this determination is explained below:
Step 1, determine whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
In this case, claim(s) 1-11 are directed to a method (i.e. a process); claim (s) 12-17 are directed to a manufacturer (i.e. a non transitory computer readable storage medium); claims 18-20 are directed are directed to a system (i.e. an apparatus).
The claimed invention is directed to at least one judicial exception (i.e a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The analysis is as follows:
Claim 1, as exemplary, recites the abstract idea limitations of: “ providing a three-tiered concurrent reward structure for a single co-brand credit account, said three-tiered concurrent reward structure comprising: a top-tier reward for said co-brand credit account, said top-tier reward comprising a fixed reward provided when said co-brand credit account is used to make a purchase at a brand identified by said co-brand credit account; a mid-tier reward for said co-brand credit account, said mid-tier reward comprising a dynamic middle out loyalty offer comprising a flexible, dynamic, adjustable value proposition, said mid-tier reward comprising a reward value less than said top-tier reward; and a bottom-tier reward for said co-brand credit account, said bottom-tier reward comprising a reward value less than said mid-tier reward; 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; providing said mid-tier reward each time said co-brand credit account makes said purchase related to said dynamic middle out loyalty offer ”. The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas as it relates to commercial interactions of advertising, marketing, or sales activities or behaviors; business relations, because the merely gather data, analyze the data, determine results based upon the analysis, generate tailored content based on the results, and transmit the tailored content. Accordingly, the claim recites an abstract idea (i.e. MPEP 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); processor, system( claim 18)). The additional technical elements above are recited at a high-level of generality (i.e. as a generic processor performing a generic computer function of processing, communicating and displaying) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. 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 a computer, or merely uses a computer 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. MPEP 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 the additional elements of (computer (claims 1,12); processor, system( claim 18)) to perform the claimed functions amounts to no more than mere instructions to apply the exception using a 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 a computer, 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 a general purpose computers communicating over a general purpose network (as evidenced from paragraphs 24, 27 and 68-71); 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.MPEP 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 and 19-20 appears to merely further limit the abstract idea of Certain methods of organizing Human Activity” as it relates to commercial interactions of advertising, marketing, or sales activities or behaviors; business relations), by adding the additional steps of: “presenting an opportunity for the specific co-brand account holder to perform a pre-defined number of tasks over a pre-defined time period; determining if the specific co-brand account holder completed the pre-defined number of tasks within the pre-defined time period; and providing an additional reward to the specific co-brand account holder when the specific co- brand account holder has successfully completed the pre-defined number of tasks within the pre- defined time period (claims 2,13); providing a single task to the specific co-brand account holder; providing a single task time period for the specific co-brand account holder to complete the single task; determining if the specific co-brand account holder completed the single task within the single task time period; and continuing to provide a different single task and single task time period to the specific co- brand account holder for the pre-defined time period (claims 3 and 19);: providing a plurality of different tasks to the specific co-brand account holder; receiving, from the specific co-brand account holder, the selection of a single task from the plurality of different tasks; providing a single task time period for the specific co-brand account holder to complete the selected single task; determining if the specific co-brand account holder completed the single task within the single task time period; and continuing to provide the plurality of different tasks to the specific co-brand account holder for the pre-defined time period (claims 4,20); wherein each task in the predefined number of tasks is selected from the group consisting of: a spending task and an acts task (claim 5); wherein the customer specific characteristics are selected from the group consisting of: a car owner or not, a restaurant coinsure or not, and a preference for an outdoor or an indoor activity and wherein the customer specific characteristics are selected from the group consisting of: a customer's age, and a customer's status (claims 6-7, 14); wherein the brand requirements are selected from the group consisting of: brand partners and non-competitive brands (claim 8): presenting a number of different categories to be used as the middle out loyalty; receiving a selection of a specific category from the number of different categories from the specific co-brand account holder; and designating the selected specific category as the middle out loyalty offer for the specific co- brand account holder (claims 9, 15); presenting a number of different brands to be used as the middle out loyalty; receiving a selection of a specific brand from the number of different brands from the specific co-brand account holder; and designating the selected specific brand as the middle out loyalty offer for the specific co- brand account holder (claims 10,16); presenting a number of different brands and categories to be used as the middle out loyalty; receiving a selection of a specific brand or a specific category from the specific co-brand account holder; and designating the selected specific brand or specific category as the middle out loyalty offer for the specific co-brand account holder (claims 11 and 17); which is considered part of the abstract idea and therefore only further limit the abstract idea (i.e. MPEP 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. MPEP Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. MPEP Step 2B=No).
Thus, the dependent claims further narrows the abstract idea and/or recite additional elements previously rejected in the independent claims 1, 8 and 15.
Accordingly, the claim fails to recite any improvements to another technology or technical field, improvements to the functioning of the computer itself, use of a particular machine, effecting a transformation or reduction of a particular article to a different state or thing, adding unconventional steps that confine the claim to a particular useful application, and/or meaningful limitations beyond generally linking the use of an abstract idea to a particular environment. See 84 Fed. Reg. 55. Viewed individually or as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
Claim Rejections - 35 USC §112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1,12 and 18 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 1, 12 and 18 recite the limitation of : "automatically performed" by a processor and/or computer system.
The specification teaches “ With reference now to 420 of Figure 4, one embodiment automatically, and after a time period expires, using the customer specific characteristics of the co-brand account holder in conjunction with the brand requirements to dynamically generate a new middle out loyalty tier customized for the co-brand account holder [59]”. The specification does not teach "automatically performed" by a processor and/or computer system. For the purpose of this examination, claims 1,12,18 interpreted as “performed" by a processor and/or computer system.
Claim Rejections - 35 USC § 102 /103
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”.
Possible Allowable Subject Matter
Claims 1-20 recite subject matter that would be allowable over the prior art if the Applicant were to be able to overcome the claim rejection under 35 USC § 101 and 35 USC § 112 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 system and method for multi -tier and real time product loyalty incentive marketing
Iannaci, US Pub 2002/0062249 A1, teaches System and Method for an Automated Benefit Recognition, Acquistion, value Exchange and Transaction settlement system using multivariable linear and Nonlinear modeling.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 files within TWO MONTHS from 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.
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 [ Mon-Thursday 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