DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/08/2025 has been entered.
Status of Claims
• The following is an office action in response to the communication filed 11/08/2025.
• Claims 1-6, 8-13, and 15-20 have been amended.
• Claims 1-20 are currently pending and have been examined.
Priority
The examiner acknowledges that the instant application is a continuation in part of US Patent No. 11164228 B2, filed 07/12/2016, which claims priority from Provisional Patent Application Serial No. 62/354,672, filed 06/24/2016.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claims recite an abstract idea. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
First, it is determined whether the claims are directed to a statutory category of invention. See MPEP 2106.03(II). In the instant case, claims 1-20 are directed to a process. Therefore, claims 1-20 are directed to statutory subject matter under Step 1 of the Alice/Mayo test (Step 1: YES).
The claims are then analyzed to determine if the claims are directed to a judicial exception. See MPEP 2106.04. In determining whether the claims are directed to a judicial exception, the claims are analyzed to evaluate whether the claims recite a judicial exception (Prong 1 of Step 2A), as well as analyzed to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of the judicial exception (Prong 2 of Step 2A). See MPEP 2106.04.
Taking claim 1 as representative, claim 1 recites at least the following limitations that are believed to recite an abstract idea:
obtaining temporary conditions information from a plurality of temporary conditions sources, wherein the first temporary condition information of the temporary conditions information is regarding a first temporary condition of a plurality of temporary conditions, wherein the first temporary condition information includes a first temporary condition identifier, a first temporary condition type and a first temporary condition value;
storing the temporary conditions information, wherein the temporary conditions information is aggregated with previously stored temporary conditions information to produce updated temporary conditions information
accessing exchange item information for a plurality of exchange items to determine a set of compatible exchange items of the plurality of exchange items, wherein the set of compatible exchange items includes characteristics that compare favorably to the updated temporary conditions information, wherein first exchange item information of the exchange item information is associated with a first compatible exchange item of the set of compatible exchange items, wherein the first exchange item information includes an exchange item rule set and an exchange item data file, and wherein the exchange item data file is stored; and
generating a set of selection matrices for the set of compatible exchange items based on combinations of the updated temporary conditions information and exchange item rule sets associated with the set of compatible exchange items, wherein a first selection matrix of the set of selection matrices includes a plurality of sets of compatible temporary conditions information associated with the first compatible exchange item; and
appending respective selection matrices of the set of selection matrices to respective exchange item data files of respective compatible exchange items of the set of compatible exchange items.
The above limitations recite the concept of determining compatibility of condition information with an exchange item condition. These limitations, under their broadest reasonable interpretation, fall within the “Mental Processes” grouping of abstract ideas, enumerated in the MPEP, in that they recite concepts performed in the human mind, such as observations, evaluations, judgments, and opinions. Specifically, the obtaining information and determining compatibility represents observations, evaluations and judgements and represent concepts that can be performed in the human mind or by a human using pen and paper. Accordingly, under Prong One of Step 2A of the MPEP, claim 1 recites an abstract idea (Step 2A, Prong One: YES).
Under Prong Two of Step 2A of the MPEP, claim 1 recites additional elements, such as a marketplace server, a data communication system, and a database. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. As such, these computer-related limitations are not found to be sufficient to integrate the abstract idea into a practical application. Although these additional computer-related elements are recited, 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, claim 1 merely recites a commonplace business method (i.e., determining compatibility of condition information with an exchange item condition) being applied on a general purpose computer. See MPEP 2106.05(f). Furthermore, claim 1 generally links the use of the abstract idea to a particular technological environment or field of use. The courts have identified various examples of limitations as merely indicating a field of use/technological environment in which to apply the abstract idea, such as specifying that the abstract idea of monitoring audit log data relates to transactions or activities that are executed in a computer environment, because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer (see FairWarning v. Iatric Sys.). Likewise, claim 1 specifying that the abstract idea of determining compatibility of condition information with an exchange item condition is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer. As such, under Prong Two of Step 2A of the MPEP, when considered both individually and as a whole, the limitations of claim 1 are not indicative of integration into a practical application (Step 2A, Prong Two: NO).
Since claim 1 recites an abstract idea and fails to integrate the abstract idea into a practical application, claim 1 is “directed to” an abstract idea (Step 2A: YES).
Next, under Step 2B, the claims are 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. The instant claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for at least the following reasons.
Returning to independent claim 1, this claim recites additional elements, such as a marketplace server, a data communication system, and a database. As discussed above with respect to Prong Two of Step 2A, although additional computer-related elements are recited, the claims merely invoke such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). Moreover, the limitations of claim 1 are manual processes, e.g., receiving information, sending information, etc. The courts have indicated that mere automation of manual processes is not sufficient to show an improvement in computer-functionality (see MPEP 2106.05(a)(I)). Furthermore, as discussed above with respect to Prong Two of Step 2A, claim 1 merely recites the additional elements in order to further define the field of use of the abstract idea, therein attempting to generally link the use of the abstract idea to a particular technological environment, such as the Internet or computing networks (see Ultramercial, Inc. v. Hulu, LLC. (Fed. Cir. 2014); Bilski v. Kappos (2010); MPEP 2106.05(h)). Similar to FairWarning v. Iatric Sys., claim 1 specifying that the abstract idea of determining compatibility of condition information with an exchange item condition is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claim to the computer field, i.e., to execution on a generic computer.
Even when considered as an ordered combination, the additional elements do not add anything that is not already present when they are considered individually. In Alice Corp., the Court considered the additional elements “as an ordered combination,” and determined that “the computer components…‘[a]dd nothing…that is not already present when the steps are considered separately’ and simply recite intermediated settlement as performed by a generic computer.” Id. (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Similarly, viewed as a whole, claim 1 simply conveys the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B of the Alice/Mayo test, there are no meaningful limitations in claim 1 that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself (Step 2B: NO).
Dependent claims 2-20, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because they do not add “significantly more” to the abstract idea. Dependent claims 2-20 further fall within the “Mental Processes” grouping of abstract ideas, enumerated in the MPEP, in that they recite in that they recite concepts performed in the human mind, such as observations, evaluations, judgments, and opinions. Dependent claims 2-13, and 15-18 fail to identify additional elements and as such, are not indicative of integration into a practical application. Dependent claims 14 and 19-20 further identify additional elements, such as a merchant server; an exchange item issuing server; a block chain protocol; and a transactions blockchain. Similar to discussion above the with respect to Prong Two of Step 2A, although additional computer-related elements are recited, the claims merely invoke such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). As such, under Step 2A, dependent claims 2-20 are “directed to” an abstract idea. Similar to the discussion above with respect to claim 1, dependent claims 2-20 analyzed individually and as an ordered combination, invoke such additional elements as a tool to perform the abstract idea and merely indicate a field of use in which to apply the abstract idea because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer, and therefore, do not amount to significantly more than the abstract idea itself. See MPEP 2106.05(f)(2). Accordingly, under the Alice/Mayo test, claims 1-20 are ineligible.
Subject Matter Allowable over the Prior Art
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 101, set forth in this Office action.
Upon review of the evidence at hand, it is hereby concluded that the evidence obtained and made of record, alone or in combination, neither anticipates, reasonably teaches, nor renders obvious the below noted features of applicant’s invention as the noted features amount to more than a predictable use of elements in the prior art.
The most relevant prior art made of record includes previously cited Isaacson et al. (US 20140250001 A1), hereinafter Isaacson, previously cited Khanna (US 20140229327 A1), hereinafter Khanna, previously cited Goerlitz (US 20130310153 A1), hereinafter Goerlitz, newly cited Kim (US 20040039598 A1), hereinafter Kim, and previously cited NPL reference U, initially cited in the Office action dated 08/08/2024.
Although individually the references teach concepts such obtaining temporary conditions information, storing the information as updated temporary conditions information, and determining a set of compatible exchange items including conditions that compare favorably to the updates, none of the references teach nor render obvious the specific temporary condition information is obtained in this way in order to identify compatible exchange items and generate the selection matrices in the specific way based on the compatible exchange items and updated temporary conditions.
Previously cited Isaacson discloses an exchange item method (Isaacson: [0150]). A virtual gift card is provided and can be triggered by a recipient earning straight As on his or her report card. Such data can be defined by a social network or other general data source. The system can monitor the appropriate information source for fulfillment of the trigger (Isaacson: [0150]). An external event to trigger the gift card may include weather reports showing that a storm is coming (Isaacson: [0165]). Additionally, an example offering could be that any giver who went to a professional basketball game this year will get an extra $3 added to any gift card given in the next month. The system can obtain any such data about the giver or recipient through social networking, personal input to a website, tracking financial transactions, third party entry of data, or any other database, the offering may be if the Yankees win the World Series, then all gift card givers will have an extra $2 applied for all New York restaurant gift cards for the week after the game to celebrate (Isaacson: [0163]). The gift card information is stored with various data fields. The exact names, types, sizes, and order of data fields in the packet are exemplary. The packet can be implemented in any variation thereof, including any combination or permutation of these and/or other data elements. These example fields include a security header 472, information about the giver 476, information about the recipient 478, a currency amount 480, a time associated with the virtual gift card 484, a location or geographic limitation associated with the virtual gift card 486 and another optional field 488 or fields (Isaacson: [0120] and Fig. 4C). Yet Ishiyama does not explicitly disclose all of the limitations pertaining to the matrices and the determination of a set of compatible exchange items.
Previously cited Khanna teaches a promotion method (Khanna: [0029]). Khanna further teaches that a user may select a row/product in table, and a display area indicates the selection criteria specified by the user for the selected product (Khanna: [0050] and Fig. 3B). However, Khanna does not explicitly teach all of the limitations regarding the conditions and the exchange item.
Previously cited Goerlitz teaches a promotion method (Goerlitz: [0028]). Goerlitz further teaches data (e.g. stock price or sports score) that is determinative of the outcome may be obtained by querying a data source with the necessary data. Where part of game creation may include specifying conditions for winning the games, conditions for winning are based on objectively verifiable information from a data feed, the data feed being data provided by a trusted system, which may be a participant system or a third-party system. For example, a game may ask participants to decide whether the value of a stock will be higher or lower than a certain value at closing on a particular day. An information source that provides closing stock prices may be utilized to determine who the winners and losers are, one game may be created to ask users whether the total points scored in a football game will be above or below a certain value. The winning and losing team scores may be obtained from a trusted source of sports scores and added together to determine winners and losers of the game, winners of games may be determined based at least in part on objectively verifiable information from trusted data sources, when writing bets, a publisher may specify the data source (Goerlitz: [0037]; [0034-0035]). However, Goerlitz does not explicitly teach all of the limitations regarding the conditions and the exchange item.
Newly cited Kim teaches a method of purchasing conditions (Kim: [abstract]). Kim further teaches a purchase condition database corresponding to conditions for a transaction (Kim: [0138]). However, Kim does not teach the limitations regarding the measurements and determinations of identical products.
Previously cited NPL reference U, initially cited in the Office action dated 08/08/2024, teaches promotional gift cards. Gift card balances may be maintained in a database and updated according to use. Gift cards may be associated with expirations. However, U does not teach all of the limitations regarding the conditions and exchange items.
While these references arguably teach the claimed limitations using a piecemeal analysis, these references would only be combined and deemed obvious based on knowledge gleaned from the applicant's disclosure. Such a reconstruction is improper (i.e., hindsight reasoning). See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Accordingly, claim 1, taken as a whole, are indicated to be allowable over the cited prior art. The examiner emphasizes that it is the interrelationship of the limitations that renders these claims allowable over the prior art/additional art. Claims 2-20 depend from claim 1, and therefore the dependent claims are also indicated as containing allowable subject matter.
The examiner further emphasizes the claims as a whole and hereby asserts that the totality of the evidence fails to set forth, either explicitly or implicitly, an appropriate rationale for further modification of the evidence at hand to arrive at the claimed invention. The combination of features as claimed would not have been obvious to one of ordinary skill in the art as combining various references from the totality of the evidence to reach the combination of features as claimed would require a substantial reconstruction of the Applicant's claimed invention relying on improper hindsight bias.
It is thereby asserted by the examiner that, in light of the above and in further deliberation over all the evidence at hand, that the claims are allowable as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in the art.
Response to Arguments
Applicant’s arguments, filed 11/08/2025, have been fully considered.
35 U.S.C. § 101
Applicant argues the claims are eligible because “the claims, as amended, overcome the present rejection” (Remarks page 11). The examiner respectfully disagrees. The MPEP sets forth, in Step 2A Prong Two, that a claim that recites a judicial exception is not directed to that judicial exception, if the claim as a whole “integrates the recited judicial exception into a practical application of that exception.” The evaluation of Prong Two requires the use of the considerations (e.g. improving technology, effecting a particular treatment or prophylaxis, implementing with a particular machine, etc.) identified by the Supreme Court and the Federal Circuit, to ensure that the claim as a whole ‘integrates [the] judicial exception into a practical application [that] 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.’ In the instant case, the claims include additional elements such as a marketplace server, a data communication system, and a database. While these elements are recited, they are merely peripherally incorporated in order to implement the abstract idea. Put another way, these additional elements are merely used to apply the abstract idea of determining compatibility of condition information with an exchange item condition in a technological environment without effectuating any improvement or change to the functioning of the additional elements or other technology. Applicant’s disclosure does not articulate or suggest how these additional elements function, individually or in combination, in any manner other than using generic functionality nor does the disclosure articulate how the elements provide a technical improvement. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they merely amount to using the software architecture as a tool to perform the abstract idea.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA MAE MITROS whose telephone number is (571)272-3969. The examiner can normally be reached Monday-Friday from 9:30-6.
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/ANNA MAE MITROS/Examiner, Art Unit 3689