DETAILED ACTION
This Office action is in reply to correspondence filed 28 March 2026 in regard to application no. 17/210,755. Claims 1-9 and 16-19 have been cancelled. Claims 10-15 are pending and are considered below.
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 28 March 2026 has been entered.
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 .
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 10-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims are directed to a statutory category of invention, as each is directed to a process. The claims recite gathering data, identifying an entity and an account by looking at a picture, determining promotions (or similar things) by accessing data, identifying a retailer related in some way to a user in no particular manner but merely based on particular data, determining what products or services the retailer offers and promotions associated therewith, comparing two data elements, again determining a product or service and whether there are associated promotions and if so ranking them with other, similar products or services, creating output (the identifier) and sending it to someone.
The provision of discounts or other purchase incentives is a fundamental economic practice and a commercial interaction, each of which is among the "certain methods of organizing human activity" deemed abstract. Further, these are mental steps which, in the absence of computers, humans could perform in the mind or with a pen and paper. Gathering data, making observations and determinations are all within the capability of a human working mentally. A "machine readable indicia" need be nothing more than the name of a product written with a pen on paper, as it is well known in the art that hand-written block text can be read by machines. None of this presents any practical difficulty, and none requires any technology beyond a pen and paper.
This judicial exception is not integrated into a practical application because aside from the bare inclusion of generic computers and networks, discussed below, nothing is done beyond what was set forth above, which does not go beyond generally linking the abstract idea to the technological environment of networked computers. See MPEP § 2106.05(h).
As the claims only manipulate information about merchandise, promotional offers and the like, they do not improve the "functioning of a computer" or of "any other technology or technical field". See MPEP § 2106.05(a). They do not apply the abstract idea "with, or by use of a particular machine", MPEP § 2106.05(b), as the below-cited Guidance is clear that a generic computer is not the particular machine envisioned.
They do not effect a "transformation or reduction of a particular article to a different state or thing", MPEP § 2106.05(c). First, such information, being intangible, is not a particular article at all. Second, the claimed manipulation is neither transformative nor reductive; as the courts have pointed out, in the end, data are still data.
They do not apply the abstract idea "in some other meaningful way beyond generally linking [it] to a particular technological environment", MPEP § 2106.05(e), as simply laying out the environment in general terms and then saying the abstract process is to be "conducted by a processor" does not go beyond such a general linkage.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional claim elements, considered individually and as an ordered combination, are insufficient to confer patent eligibility on an otherwise-ineligible process. The claim includes a processor, data stores and access to a network. (The other devices mentioned are not claimed as being within the scope of the invention, but are merely external objects with which the claimed system communicates, and so will not be considered further in this analysis.)
These elements are recited at a high degree of generality and the specification does not meaningfully limit them, such that a generic computer would suffice. It only performs generic computer functions of storing, manipulating and sharing data with persons and/or external devices, each in no particular way. Generic computers performing generic computer functions, without an inventive concept, do not amount to significantly more than the abstract idea.
The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. The claim elements when considered as an ordered combination - that is, a generic computer performing a chronological sequence of abstract steps - do nothing more than when they are analyzed individually. The dependent claims further do not amount to significantly more than the abstract idea: claims 11, 12, 14 and 15 are simply further descriptive of the type of information being manipulated; claim 13 simply recites further, abstract manipulation of data.
The claims are not patent eligible. For further guidance please see MPEP § 2106.03 – 2106.07(c) (formerly referred to as the “2019 Revised Patent Subject Matter Eligibility Guidance”, 84 Fed. Reg. 50, 55 (7 January 2019)).
Response to Arguments
Applicant's arguments filed 28 March 2026 have been fully considered but they are not persuasive. First, the applicant states that the “claims do not merely recite an exception, but rather involve an exception”. The Examiner has never said that the claims “merely recite” an exception, only that they recite an exception; the applicant does not explain, and the Examiner does not see, how this is supposed to be incorrect..
Second, the Examiner does not see how anything in the claim improves the “functioning of a computer” or other technologies or technical fields. The steps set forth in the following paragraph describe a business issue and a solution to the business issue, rather than a technical issue or a solution to a technical issue or problem.
Gathering data is abstract whether the data gathered comes from one source or multiple sources, and the applicant does not cite any authority to the contrary. The “significantly more” analysis refers to additional, that is, non-abstract claim elements. As the Federal Circuit said in BSG Techs,1: “It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”
The Desjardins decision to which the applicant cites discussed evaluating solutions in the realm of machine learning and does not appear to be applicable to any of the types of limitations of the present claims. The claims are not patent eligible and the rejection is maintained.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT C ANDERSON whose telephone number is (571)270-7442. The examiner can normally be reached M-F 9:00 to 5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett Sigmond can be reached at (303) 297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT C ANDERSON/ Primary Examiner, Art Unit 3694
1 BSG Techs. LLC v. Buyseasons, Inc., 889 F.3d 1281, 1287 (Fed. Cir. 2018)
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