DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 23, 2025, has been entered.
In the response filed December 23, 2025, the Applicant amended claims 1 and 6. Claims 1-20 are pending in the current application.
Notice of AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments for claims 1-20 with respect to the 35 U.S.C. 101 rejection have been considered but are unpersuasive.
Applicant argues that the claims are eligible as they are directed to an improvement in an entity’s ability to monitor and control their promotional campaign. Examiner respectfully disagrees. Here, the alleged improvements are non-technical subjective/abstract improvements, not technical improvements to computers or technological processes, but addresses a business challenge regarding the accurate monitoring and controlling of promotional campaigns. Making sure promotions are verified and applied properly is directed to, if anything, a business “improvement” (e.g., accurate methods and ways to apply promotions to sales). The idea of accurate monitoring and controlling of promotions is not a patent eligible “improvement.” That a computer is used to execute the steps and limitations of the abstract idea serves merely to implement the abstract idea on a generic computer.
Applicant argues that the claims are eligible as they are directed to an improvement in a way a computer system operates. Examiner respectfully disagrees. Applicant’s reference to Enfish is not persuasive as the claims do not share any similar limitations nor do they share the same realm of technology. Here, the claimed steps of improving the settlement process to reduce settlement delays and eliminate fraud is an economic task and a business activity. Applicant further argues the claims are directed to the improvement in the operation of the computer as the specification describes an improvement in the security of the computer system. Examiner respectfully disagrees as there is no mention of computer system security anywhere in the specification. The disclosure does not discuss that the features as claimed in the application are specifically implemented to ensure the “security” of the computers of the system.
The fact that the steps of verifying and validating promotional offers are executed on a networked system does not somehow automatically make problem unique to the realm of computer networks. The fact that the determinations are made by a generic computer processor does not somehow automatically make the solution necessarily rooted in computer technology. The instant claims merely limit the use of the abstract idea to a particular environment - that being a computer environment. This same problem would exist in non-computer environments, and the same solution would be appropriate. Stripped of the generic computer elements recited in the claims, the problem and solution would remain intact. Limitations that link the use of a judicial exception to a particular technological environment or field of use do not qualify as "significantly more," and do not transform the judicial exception into patent-eligible subject matter.
The Examiner notes that the concept in McRO is entirely different from that of the instant application, and thus cannot be relied upon as a prima facie basis for patent eligibility simply because Applicant purports their invention is similarly entrenched in computer software. In McRO, the claims were drawn to a complex methodology of synchronizing audio files with lip movement and facial expressions in computer animation. Turning to the instant invention, it is clear that the claims are merely drawn to a method of tracking and redeeming applicable promotional offers to purchases that is performed via generic computer technology. Therefore, notwithstanding Applicant's insistence to the contrary, the claims of the instant invention are not triggered by the holding in McRO, but rather disclose a number of abstract ideas that are associated with generic computer technology. As such, the claims remain ineligible under section 101.
Applicant argues the amended claims are not directed to a “well-understood, routine, conventional activity, or methods of organizing human activity.” Examiner respectfully disagrees. The amendments and claim limitations still, under broadest reasonable interpretation, describe or set-forth steps to providing a bank card number containing a bank identification number to a consumer to redeem a promotional offer as well as enabling a point-of-sale system to authorize promotional offer redemption with the use of bank identification numbers, which amounts to commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). These limitations therefore fall within the “certain methods of organizing human activity” subject matter grouping of abstract ideas. Here, the examiner has not purported that the additional limitations are directed to appending well-understood, routine, conventional activity.
However, the claims recite additional limitations and the requirement to execute the claimed steps/functions using the “a point-of-sale (POS) system and a network-connected server, the server comprising: one or more communications modules configured to establish one or more communicative connections with external computer systems over one or more computer networks; a long-term memory store; short-term memory; and a processor;” “a blockchain,” “a consumer device,” “a point-of-sale system of the merchant,” and “a payment processor of the merchant,” (claim 1); “wherein the communications module, the long-term memory store, and the short- term memory store are operatively connected with the processor to allow the processor to access the communications module, the long-term memory store, and the short-term memory thereby providing the processor with access to data therefrom and transfer of data thereto,” (claim 1); “a point-of-sale (POS)-monitoring computer system,” (claim 6), “wherein the POS-monitoring computer system is a system selected from the group consisting of: a computer system incorporated into a bank card authorization system operated by the merchant,” “a computer system separate from the bank card authorization system operated by the merchant,” (claim 12), “a promotions provider” (claim 17), and “a computer system,” (claim 18), is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application. See MPEP 2106.05(f).
Applicant argues that the claims are patent eligible as they are analogous to the cases presented in Amdocs and Bascom. Examiner respectfully disagrees. Again, the Examiner notes that the concepts in Amdocs and Bascom are entirely different from that of the instant application, and thus cannot be relied upon as a prima facie basis for patent eligibility. As discussed before, the claimed steps of improving the settlement process to reduce settlement delays and eliminate fraud is an economic task and a business activity. Here, the present claims are different to the claims in Amdocs and Bascom in that the claims do not improve the technical processes of capturing coupon information or bank identification nor do they improve the technical process of entering such identifying information to proceed with the verification and validation of promotional offers. The proposed improvements stated by the Applicant (e.g., increase security of a payment system, reduce fraud and tampering, and allow for better tracking of transactions) are solutions to more efficiently execute business advantages. The claims do not describe or recite limitations defining improvements to the servers/devices or processors used in executing the online payment network. As such, Applicant’s arguments remain unpersuasive. The 35 U.S.C. 101 rejection is hereby 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 (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1: Claims 1-20 are directed to a process, which is within the four statutory categories (e.g., a process, a machine). (Step 1: YES).
Step 2A – Prong One: In prong one of step 2A, the claims are analyzed to evaluate whether they recite a judicial exception.
Claim 1 recites/describes the following steps:
“facilitating merchant-specific and item-specific redemption of a promotional offer to a purchase whereby a merchant readily verifies item-specific limitations of the promotional offer using the promotional offer itself,”
“serializing the promotional offer to generate a number of coupons, wherein each coupon receives its own unique serial number;”
“recording the serial number of each of the number of coupons…, along with an indication of whether each of the number of coupons has been redeemed or not;”
“storing… the information relating to a promotional offer, one or more items for which use of the promotional offer is authorized, and a merchant where redemption of the promotional offer is authorized;”
“associating a unique bank identification number (BIN) with the promotional offer…, whereby the unique BIN falls within a range of BINs accepted by the merchant and wherein the BIN is uniquely associated with the merchant where redemption of the promotional offer is authorized and the one or more items for which use of the promotional offer is authorized;”
“associating a one-time-use unique bank card number with the promotional offer, wherein the unique bank card number includes the unique BIN;”
“storing the unique bank card number … with the promotional offer;”
“transmitting the unique bank card number … for a consumer user … to use in redeeming the promotional offer in a purchase including one or more of the one or more items for which use of the promotional offer is authorized, wherein the promotional offer is limited to use with one or more specific products or services, the bank card number associated with the promotional offer associated with one or more products or services for which redemption of the promotional offer is authorized, and the authorization of the redemption is recorded;”
“…queried to determine whether one or more of the allowable items is present in the purchase and a response to this query indicates the item or items present in the purchase, and if during the response allowable items are present, transaction moves forward as expected and if the allowable items are not present… optionally receives an instruction to decline the attempted offer redemption, or the fraudulent redemption can be tracked;”
“distributing an updated BIN file or BIN table… where redemption of the promotional offer is authorized or … where redemption of the promotional offer is authorized only, such that the one-time-use unique bank card number incorporating the unique BIN can only be used at the merchant where redemption of the promotional offer is authorized and will be declined elsewhere;”
“receiving the one-time-use unique bank card number… where redemption of the promotional offer is authorized as at least partial payment of a purchase transaction including at least one of the one or more items for which use of the promotional offer is authorized;”
“upon the consumer user's making a redemption attempt of a coupon during the purchase transaction, doing the following: initiating a bankcard authorization process associated with the purchase transaction, the bankcard authorization process comprising performing a lookup using the Bin of the unique bank card number to verify that redemption of the promotional offer is authorized for at least one item in the purchase transaction; checking the redemption attempt … to ensure that the coupon is one of the number of coupons recorded… and that the coupon has not yet been redeemed, preventing fraudulent double redemption attempts; and if authorized, crediting the purchase transaction at the point-of-sale system a value associated with the promotional offer;”
“tracking real-time redemption information as the promotional offer and similar promotional offers are redeemed at points of sale;” and
“providing the redemption information to a promotional offer managing entity.”
These steps, under broadest reasonable interpretation, describe or set-forth providing a bank card number containing a bank identification number to a consumer to redeem a promotional offer and authorizing promotional offer redemptions with the use of bank identification numbers, which amounts to commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). These limitations therefore fall within the “certain methods of organizing human activity” subject matter grouping of abstract ideas.
As such, the Examiner concludes that claim 1 recites an abstract idea (Step 2A – Prong One: YES).
Each of the depending claims 2-20 likewise recite/describe these steps (by incorporation - and therefore also recite limitations that fall within this subject matter grouping of abstract ideas), and these claims are therefore determined to recite an abstract idea under the same analysis. Any elements recited in a dependent claim that are not specifically identified/addressed by the Examiner under step 2A (prong two) or step 2B of this analysis shall be understood to be an additional part of the abstract idea recited by that particular claim.
Step 2A – Prong Two:
The claims recite the additional elements/limitations of: “a point-of-sale (POS) system and a network-connected server, the server comprising: one or more communications modules configured to establish one or more communicative connections with external computer systems over one or more computer networks; a long-term memory store; short-term memory; and a processor;” “a blockchain,” “a consumer device,” “a point-of-sale system of the merchant,” and “a payment processor of the merchant,” (claim 1); “wherein the communications module, the long-term memory store, and the short- term memory store are operatively connected with the processor to allow the processor to access the communications module, the long-term memory store, and the short-term memory thereby providing the processor with access to data therefrom and transfer of data thereto,” (claim 1); “a point-of-sale (POS)-monitoring computer system,” (claim 6), “wherein the POS-monitoring computer system is a system selected from the group consisting of: a computer system incorporated into a bank card authorization system operated by the merchant,” “a computer system separate from the bank card authorization system operated by the merchant,” (claim 12), “a promotions provider” (claim 17), and “a computer system,” (claim 18).
The requirement to execute the claimed steps/functions using the “a point-of-sale (POS) system and a network-connected server, the server comprising: one or more communications modules configured to establish one or more communicative connections with external computer systems over one or more computer networks; a long-term memory store; short-term memory; and a processor;” “a blockchain,” “a consumer device,” “a point-of-sale system of the merchant,” and “a payment processor of the merchant,” (claim 1); “wherein the communications module, the long-term memory store, and the short- term memory store are operatively connected with the processor to allow the processor to access the communications module, the long-term memory store, and the short-term memory thereby providing the processor with access to data therefrom and transfer of data thereto,” (claim 1); “a point-of-sale (POS)-monitoring computer system,” (claim 6), “wherein the POS-monitoring computer system is a system selected from the group consisting of: a computer system incorporated into a bank card authorization system operated by the merchant,” “a computer system separate from the bank card authorization system operated by the merchant,” (claim 12), “a promotions provider” (claim 17), and “a computer system,” (claim 18), is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application. See MPEP 2106.05(f).
Remaining dependent claims 2-5, 7-11, 13-16, 19, and 20, either recite the same additional elements as noted above or fail to recite any additional elements (in which case, note prong one analysis as set forth above – those claims are further part of the abstract idea as identified by the Examiner for each respective dependent claim).
The Examiner has therefore determined that the additional elements, or combination of additional elements, do not integrate the abstract idea into a practical application. Accordingly, the claims are directed to an abstract idea (Step 2A – Prong two: NO).
Step 2B:
As discussed above in “Step 2A – Prong 2,” the requirement to execute the claimed steps/functions using the “a point-of-sale (POS) system and a network-connected server, the server comprising: one or more communications modules configured to establish one or more communicative connections with external computer systems over one or more computer networks; a long-term memory store; short-term memory; and a processor;” “a blockchain,” “a consumer device,” “a point-of-sale system of the merchant,” and “a payment processor of the merchant,” (claim 1); “wherein the communications module, the long-term memory store, and the short- term memory store are operatively connected with the processor to allow the processor to access the communications module, the long-term memory store, and the short-term memory thereby providing the processor with access to data therefrom and transfer of data thereto,” (claim 1); “a point-of-sale (POS)-monitoring computer system,” (claim 6), “wherein the POS-monitoring computer system is a system selected from the group consisting of: a computer system incorporated into a bank card authorization system operated by the merchant,” “a computer system separate from the bank card authorization system operated by the merchant,” (claim 12), “a promotions provider” (claim 17), and “a computer system,” (claim 18), is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations therefore do not qualify as “significantly more.” See MPEP 2106.05(f).
Viewing the additional limitations in combination also shows that they fail to ensure the claims amount to significantly more than the abstract idea. When considered as an ordered combination, the additional components of the claims add nothing that is not already present when considered separately, and thus simply append the abstract idea with words equivalent to “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer.
Remaining dependent claims 2-5, 7-11, 13-16, 19, and 20, either recite the same additional elements as noted above or fail to recite any additional elements (in which case, note prong one analysis as set forth above – those claims are further part of the abstract idea as identified by the Examiner for each respective dependent claim).
The Examiner has therefore determined that no additional element, or combination of additional claims elements is/are sufficient to ensure the claims amount to significantly more than the abstract idea identified above (Step 2B: NO).
Allowable Subject Matter
Claims 1-20 would be allowable subject matter if revised and amended to overcome the rejection under 35 U.S.C. 101 as set forth in this Office action.
The closest prior art of record is:
Basu et al. (U.S. Pub. No. 2019/0295119 A1, September 26, 2019), hereinafter Basu;
Laracey (U.S. Pub. No. 2019/0347646 A1, November 14, 2019), hereinafter Laracey;
Hogan et al. (U.S. Pub. No. 2002/0116341 A1, August 22, 2002), hereinafter Hogan;
Rajendran et al., "Secure and Privacy Preserving Digital Payment" (published in 2017 IEEE SmartWorld, Ubiquitous Intelligence & Computing, Advanced & Trusted Computed, Scalable Computing & Communications, Cloud & Big Data Computing, Internet of People and Smart City Innovation, Pages 1-5, 2017), hereinafter Rajendran
Basu discloses a system where an account identifier is associated with a deal purchased by a user from a deal site. The deal has a face value applicable to a transaction with a predetermined merchant, if the transaction satisfies one or more predetermined criteria. The user pays the deal site an amount smaller than the face value. When the account identifier is used at a transaction terminal to initiate a payment transaction, a transaction handler determines whether the payment transaction satisfies the one or more predetermined criteria; and if so, the transaction handler provides the transaction terminal with an authorization response identifying the remaining balance, which is determined by deducting the face value from the payment transaction. The account identifier may be a one-time account number generated specifically for the deal purchased by the user, or an account number of the user used to purchase the deal from the deal site.
Laracey discloses a system for employing the wireless or near field communication (“NFC”) functionality of mobile devices and payment terminals for use in payment, loyalty, and offer and coupon transactions.
McConnell discloses a method of conducting an electronic transaction over a public communications network is provided which utilizes a pseudo-expiration date in the expiration date field of an authorization request.
Rajendran describes Digital Tokens as an abstraction of the underlying fiat currency of equivalent value in order to provide the privacy and security in digital payments. The paper introduces an intermediate entity in the system that mediates a transaction between the payer and payee, which can be played by existing payment service providers. The strength of their approach lies in building upon the existing payment system without causing inconvenience to the payer and the payee and at the same time guaranteeing privacy, protection against potential frauds, and provides interoperability across banks, devices, and service providers.
As per claim 1, the closest prior art of record taken either individually or in combination with other prior art of record fails to teach or suggest “serializing the promotional offer to generate a number of coupons, wherein each coupon receives its own unique serial number; recording the serial number of each of the number of coupons to a blockchain, along with an indication of whether each of the number of coupons has been redeemed or not; storing information in the long-term memory store, the information relating to a promotional offer, one or more items for which use of the promotional offer is authorized, and a merchant where redemption of the promotional offer is authorized; associating a unique bank identification number (BIN) with the promotional offer in the long-term storage, whereby the unique BIN falls within a range of BINs accepted by the merchant and wherein the BIN is uniquely associated with the merchant where redemption of the promotional offer is authorized and the one or more items for which use of the promotional offer is authorized; associating a one-time-use unique bank card number with the promotional offer, wherein the unique bank card number includes the unique BIN; storing the unique bank card number in the long-term memory store with the promotional offer; transmitting the unique bank card number to a consumer device for a consumer user of the consumer device to use in redeeming the promotional offer in a purchase including one or more of the one or more items for which use of the promotional offer is authorized, wherein the promotional offer is limited to use with one or more specific products or services, the bank card number associated with the promotional offer associated with one or more products or services for which redemption of the promotional offer is authorized, and the authorization of the redemption is recorded, and wherein the POS system is queried to determine whether one or more of the allowable items is present in the purchase and a response to this query indicates the item or items present in the purchase, and if during the response allowable items are present, transaction moves forward as expected and if the allowable items are not present, the POS system optionally receives an instruction to decline the attempted offer redemption, or the fraudulent redemption can be tracked; distributing an updated BIN file or BIN table to a point-of-sale system of the merchant where redemption of the promotional offer is authorized or to a payment processor of the merchant where redemption of the promotional offer is authorized only, such that the one-time-use unique bank card number incorporating the unique BIN can only be used at the merchant where redemption of the promotional offer is authorized and will be declined elsewhere; receiving the one-time-use unique bank card number at the point-of-sale system of the merchant where redemption of the promotional offer is authorized as at least partial payment of a purchase transaction including at least one of the one or more items for which use of the promotional offer is authorized; upon the consumer user's making a redemption attempt of a coupon during the purchase transaction, doing the following: initiating a bankcard authorization process associated with the purchase transaction, the bankcard authorization process comprising performing a lookup using the Bin of the unique bank card number to verify that redemption of the promotional offer is authorized for at least one item in the purchase transaction; checking the redemption attempt against the blockchain to ensure that the coupon is one of the number of coupons recorded on the blockchain and that the coupon has not yet been redeemed, preventing fraudulent double redemption attempts; and if authorized, crediting the purchase transaction at the point-of-sale system a value associated with the promotional offer;” This combination of functions/features would not have been obvious to a PHOSITA in view of the prior art.
Conclusion
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/Patrick Kim/Examiner, Art Unit 3628