DETAILED ACTION
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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/06/2026 has been entered.
Response to Amendment
Claim 20 is canceled.
Claim 21 is new.
Clams 2-3 are currently amended.
Claims 1-19 and 21 are currently pending and examined below.
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 2-3, 16-19, and 21 is/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 nature phenomenon, or an abstract idea) without significantly more.
Step 1:
Claims 2-3, 16-19, and 21 is/are directed towards a statutory category (i.e., a process, machine, manufacture, or composition of matter) (Step 1, Yes).
Step 2A Prong One:
Claim 2 recites (additional elements underlined):
A communication device comprising:
a display including a touchscreen graphical user interface;
a GPS unit; and
one or more memory units and one or more processors configured to execute a rewards serving module stored in the one or more memory units, wherein the rewards serving module includes program instructions configured to cause the one or more communication device processors to:
record a user performance;
request a reward from a remote server based on the recorded user performance via a network, the reward including a reward from a reward bank of one or more rewards stored in a memory of the remote server, the request programmed to be requested in a reward request form;
determine a location of the recorded user performance using the GPS unit;
upon authentication of the reward request by the remote server using a unique application token and the determined location of the recorded user performance, wherein the unique application token includes a representation of a specific application using the remote server, a rewardable consumer engagement opportunities (RCEO) generated by the specific application using the remote server, and a corresponding bank of the one or more rewards, display a reward message on the graphical user interface of the display indicative of a reward received from the remote server;
receive an acceptance of the reward from a user via the graphical user interface by identifying a user interaction, the received acceptance programmed to be recorded by one or more rewardable consumer engagement opportunity (RCEO) servers in a reward acceptance form; and
transmit the acceptance in the reward acceptance form to the remote server via the network, wherein the transmitted acceptance is configured to cause the remote server to adjust the reward bank to reflect acceptance of the reward, wherein the transmitted acceptance includes the unique application token and the determined location of the user performance,
wherein the communication device is configured to record the user performance received from one or more additional devices, wherein the one or more additional devices are communicatively coupled to the communication device, wherein the one or more additional devices includes a golf swing tracker.
Under the broadest reasonable interpretation, the limitations outlined above that describe or set forth the abstract idea, cover performance of the limitations in the mind but for the recitation of generic computer(s) and/or generic computer component(s). That is, other than reciting the additional elements identified below, nothing in the claim precludes the limitations from practically being performed in the mind. These limitations are considered a mental process because the limitations include an observation, evaluation, judgment, and/or opinion. These limitations are also similar to “collecting information, analyzing it, and displaying certain results of the collection and analysis” and/or “collecting and comparing known information” which were determined to be mental processes in MPEP 2106.04(a)(2)(III)(A). The Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer” (see MPEP 2106.04(a)(2)(III)(C)). The mere nominal recitation of the additional elements identified above do not take the claims out of the mental process grouping. Therefore, the claim recite a mental process (Step 2A Prong One, Yes).
The limitations outlined above also describe or set forth a marketing/advertising activity. marketing/advertising fall within the certain method of organizing human activity enumerated grouping of abstract ideas. The limitations outlined above also describe or set forth a fundamental economic principle or practice because marketing/advertising is related to commerce and economy. The limitations outlined above also describe or set forth a commercial interaction (e.g., advertising, marketing or sales activities or behaviors, business relations). The limitations outlined above also describe or set forth the managing of personal behavior or relationships or interactions between people. Therefore, the claim recites a certain method of organizing human activity (Step 2A Prong One, Yes).
Step 2A Prong Two:
In Step 2A Prong Two, the additional element(s) outlined above are recited at a high level of generality, and under the broadest reasonable interpretation, are generic computer(s) and/or generic computer component(s) that perform generic computer functions. The additional element(s) are merely used as tools, in their ordinary capacity, to perform the abstract idea. The additional element(s) amount adding the words “apply it” with the judicial exception. Merely implementing an abstract idea on generic computer(s) and/or generic computer component(s) does not integrate the judicial exception similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. The Examiner notes that “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 pp 10-11 of FairWarning IP, LLC. v. Iatric Systems, Inc. (Fed. Cir. 2016)). The additional elements also amount to generally linking the use of the abstract idea to a particular technological environment or field of use (e.g., in a computer environment). The courts have found that simply limiting the use of the abstract idea to a particular environment does not integrate the judicial exception into a practical application. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. There is no indication that the combination of elements improves the functioning of a computer, improves any other technology or technical field, applies or uses the judicial exception to effect a particular treatment or prophylaxis for disease or medical condition, applies the judicial exception with, or by use of a particular machine, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses 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 claims as a whole is more than a drafting effort designed to monopolize the exception. Their collective functions merely provide generic computer implementation (Step 2A Prong Two, No).
Step 2B:
In Step 2B, the additional elements also do not amount to significantly more for the same reasons set forth with respect to Step 2A Prong Two. The Examiner notes that revised Step 2A Prong Two overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Their collective functions merely provide generic computer implementation (Step 2B, No).
Claims 17-19 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 2 (i.e., certain methods of organizing human activities and/or mental processes).
Claim 17 recites the additional element “wherein the communication device includes a mobile device.” Claim 18 recites the additional element “wherein the mobile device comprises: a mobile device paired with one or more additional devices.” Claim 19 recites the additional element “wherein the one or more additional devices comprise: at least one of a health tracker device, a sports performance tracker, a wearable device, or a smart watch device.” However, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Claim 3 recites (additional elements underlined):
A method for providing rewardable consumer engagement opportunities comprising:
generating a rewardable consumer engagement opportunity (RCEO) having one or more characteristics based on received entity information in response to an entity request;
generating a bank of one or more rewards based on the one or more characteristics of the rewardable consumer engagement opportunity;
receiving a user-initiated request for a reward based on a reported performance of a user from a communication device;
authenticating the user-initiated request using a unique application token, wherein the unique application token includes a representation of a specific application using one or more RCEO controllers, the generated rewardable consumer engagement opportunities (RCEO) generated by the specific application using the one or more RCEO controllers, and a corresponding reward bank of the one or more rewards;
determining whether the user has reached a reward limit, wherein the reward limit includes a maximum number of awards allowable to a user over a selected time period;
upon authenticating the user-initiated request and determining the user has not reached the reward limit, identifying a reward in the bank of one or more rewards compatible with the reported user performance and a determined location of the user performance;
transmitting the identified reward to the communication device;
receiving a response from the communications device confirming acceptance or rejection of the reward, wherein the transmitted acceptance or rejection includes the unique application token and the determined location of the user performance; and
adjusting the reward bank to reflect acceptance or rejection of the reward, wherein the communication device is configured to record the user performance received from one or more additional devices, wherein the one or more additional devices are communicatively coupled to the communication device.
For the same reasons explained above with respect to claim 2, claim 3 also recites an abstract idea in Step 2A Prong One. For the same reasons explained above with respect to claim 2, claim 3 also does not integrate the judicial exception into a practical application or amount to significantly more.
Claim 16 and 21 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 3 (i.e., certain methods of organizing human activities and/or mental processes).
Claim 16 does not recite the additional elements. Therefore, for the same reasons explained above with respect to claim 3, claim 16 also does not integrate the judicial exception into a practical application or amount to significantly more.
Claim 21 recites the additional element “wherein the one or more additional devices includes a golf swing tracker.” However, this additional element also does not integrate the judicial exception into a practical application or amount to significantly more because it amounts to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Prior Art
The Examiner notes that the claims currently overcome prior art. The closest prior art found to date are the following:
Hoffman et al. (US 2012/0041767 A1) discloses the concept of monitoring and tracking user activity by an athletic monitoring and tracking device. User activity is used to award a user with an amount of virtual currently to encourage the user to continue various activities. In one example, users may use the virtual currency to purchase or otherwise acquire various products, services, discounts, and the like. A user may track an amount of currency earned and/or needed relative to an amount required to acquire a desired product or service. Hoffman et al. also discloses that the virtual currency may be sponsored by an entity. For example an athletic product company may sponsor a website or service that allows users to track and monitor their athletic activity. However, the virtual currency does not exist separately and independently of the entity itself as required by the claims.
Redmann (US 2012/0129138 A1) discloses an exercise computer that monitors the exercises of a user, and provides rewards for exercises done well and regularly. Redmann also records exercise performance over time, the use of a wearable computer to track motion, and the accepting or declining of reward offers.
Fung et al. (US 2007/0192178 A1) discloses the concept of authenticating a reward request using a unique application token.
Goldberg (US 2013/0006737 A1) discloses the concept of providing rewards for performing certain activities at certain locations.
Allowable Subject Matter
Claims 1 and 4-15 are allowable because they recites substantially similar limitations as claims 1-21 of U.S. Patent No. 11,232,486 B1.
Response to Arguments
Applicant's arguments filed 04/06/2026 have been fully considered but they are not persuasive. In the Remarks, Applicant argues:
Argument: “Applicant respectfully submits that the amended claims now incorporate the key claim limitations that render the claims patent-eligible. Specifically, amended Claim 2 has been amended to recite "wherein the one or more additional devices includes a golf swing tracker," which mirrors the specific sensor hardware requirement found in allowed Claim 1 and the parent patent U.S. Patent No. 11,232,486. This limitation specifies particular technological hardware that records user performance data, rather than merely reciting generic computer components. Additionally, amended Claim 3 has been amended to include "determining whether the user has reached a reward limit, wherein the reward limit includes a maximum number of awards allowable to a user over a selected time period" and further requires that the system only proceeds to identify a compatible reward "upon authenticating the user-initiated request and determining the user has not reached the reward limit." These amendments incorporate the conditional system behavior and reward limit determination that were present in allowed Claim 1 and the parent patent U.S. Patent No. 11,232,486. Applicant further notes that the Examiner in the parent case found the claims "apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment." While the Board noted the present claims were "broader," the amendments now incorporate the key claim limitations from the parent claims, specifically, the golf swing tracker requirement in Claim 2 and the reward limit determination in Claim 3, ensuring that the claims are no longer "broader" than the parent patent claims as noted by the Board.”
In response, the Examiner respectfully disagrees. The parent application was not allowable merely because it recited the newly added limitations in isolation. The parent application was allowable over the prior art because the limitations, when viewed as a whole, recite novel and non-obvious subject matter. The parent application was patent-eligible because when viewing the limitations as an ordered combination, the claim applies or uses 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.
Argument: “Even assuming, arguendo, that the amended claims recite an abstract idea under Step 2A Prong One, Applicant respectfully submits that the claims as a whole integrate any such judicial exception into a practical application under Step 2A Prong Two, as set forth below…. Similar to Example 46, amended Claim 2 employs the information from the authentication analysis (using the unique application token and the determined GPS location) to take corrective action by displaying a reward message and adjusting the reward bank. Further, similar to how Example 46, Claim 4 specified the particular sensor hardware (radio frequency reader and animal sensors with radio frequency transponders) such that the claim did not even recite an abstract idea, amended Claim 2 specifies the particular sensor hardware, "wherein the one or more additional devices includes a golf swing tracker," that records the user performance. This is an "other meaningful limitation" that integrates the judicial exception into the overall reward management scheme and accordingly practically applies the exception.”
In response, the Examiner respectfully disagrees. First, the facts of application here do not uniquely match the facts in Example 46. The claimed invention here is directed towards providing rewardable consumer engagement opportunities. The claimed invention in Example 46 is directed towards livestock management. However, for the sake of advancing prosecution, limitation (d) of Examples 46 did not merely link the judicial exception to a technical field, but instead added a meaningful limitation in that it can employ the information provided by the judicial exception (the mental analysis of whether the animal is exhibiting an aberrant behavioral pattern indicative of grass tetany) to operate the feed dispenser. Here, there is no evidence from the claims or specification that the claimed invention provides such an improvement. The additional elements are used as tools, in their ordinary capacity, to perform the abstract idea. “Use of a computer or other machinery in its ordinary capacity for economic or other task (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more” (MPEP 2106.05(f)(2)).
Argument: “Similarly, as in Example 35, the combination of authentication steps in amended Claim 2, including authentication using a unique application token, GPS-determined location verification, and recording performance from a communicatively coupled golf swing tracker, operates in a non-conventional and non-generic way that "set[s] up a sequence of events that address unique problems" associated with verifying remote athletic performance, even though the steps use well-known components.”
In response, the Examiner respectfully disagrees. Unlike claims 2-3 of Example 35 in which the additional elements operated in a non-conventional and non-generic way to ensure that the customer’s identity is verified in a secure manner that is more than the conventional verification process employed by an ATM alone, here the authentication is process is no more than comparing two pieces of information (i.e., a location of the user performance and a unique application token) to stored information in order to authenticate the reward request. The claimed authentication process can be practically performed in the human mind. Additionally, PTAB agrees that the claimed authentication process is a mental process (see p. 10 of the PTAB Decision for this application).
Argument: “Applicant respectfully submits that, unlike the unamended claims previously considered by the Board, the amended claims now provide the non-conventional and non- generic arrangement of known, conventional components that was found lacking under Bascom. In particular, the specific combination of a golf swing tracker communicatively coupled to the communication device, GPS-based location verification, and multi-factor authentication using a unique application token and the determined location constitutes a "specific, discrete implementation" of the claimed subject matter, similar to the non- conventional arrangement found eligible in Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). Applicant notes that the additional elements recite a specific improvement over prior art systems by requiring: (1) integration of specialized sensor hardware where "the communication device is configured to record the user performance received from one or more additional devices, wherein the one or more additional devices are communicatively coupled to the communication device, wherein the one or more additional devices includes a golf swing tracker" for performance recording, (2) GPS- based location verification where the system must "determine a location of the recorded user performance using the GPS unit," and (3) multi-factor authentication where the system performs "authentication of the reward request by the remote server using a unique application token and the determined location of the recorded user performance, wherein the unique application token includes a representation of a specific application using the remote server, a rewardable consumer engagement opportunities (RCEO) generated by the specific application using the remote server, and a corresponding bank of the one or more rewards." Thus, amended Claim 2 is eligible because it is not directed to the recited judicial exception.”
In response, the Examiner respectfully disagrees. The added limitation in claim 2 “wherein the one or more additional devices includes a golf swing tracker” is recited at a high level of generality, and amounts to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use. The added limitation in claim 3 falls within the abstract idea.
Unlike in Bascom in which the particular arrangement of known elements provided a technical improvement over prior art ways of filtering content, here 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 a computer, improves any other technology or technical field, applies or uses the judicial exception to effect a particular treatment or prophylaxis for disease or medical condition, applies the judicial exception with, or by use of a particular machine, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses 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 claims as a whole is more than a drafting effort designed to monopolize the exception. Their collective functions merely provide generic computer implementation. The claims at issue do not require any non-conventional computer, network or display components, or even a non-conventional and non-generic arrangement of known conventional pieces. The claims at issue merely call for the performance of the claimed invention on a set of generic computer components and display devices. “As correctly recognized by the Examiner, there is no evidence in the record to support the contention that Appellant’s claimed system is provided with any non-conventional and non-generic arrangement of known, conventional components, similarly to Bascom” (see p. 15 of PTAB Decision for this application).
Argument: “Applicant respectfully submits that amended Claim 3 similarly integrates the judicial exception into a practical application. Similar to how Example 46, Claim 3 employed the analysis results to automatically operate a sorting gate to route animals based on their behavioral patterns, amended Claim 3 employs the authentication and reward limit determination to control whether a reward is identified and served. The system only proceeds to identify a compatible reward "upon authenticating the user- initiated request and determining the user has not reached the reward limit," as recited in Claim 3. This conditional system behavior, where the reward distribution is controlled based on both authentication and reward limit checks, goes beyond merely automating an abstract idea and instead uses the information obtained via the judicial exception to take corrective action in a particular way. Further, as in Example 35, the combination of authentication and reward limit determination in amended Claim 3, including authenticating the user-initiated request using a unique application token and determining whether the user has reached a reward limit before identifying a compatible reward, operates in a non-conventional and non- generic way that addresses unique problems associated with networked reward distribution, even though the steps use well-known components. Applicant notes that the additional elements recite a specific improvement over prior art systems by requiring: (1) "authenticating the user-initiated request using a unique application token, wherein the unique application token includes a representation of a specific application using one or more RCEO controllers, the generated rewardable consumer engagement opportunities (RCEO) generated by the specific application using the one or more RCEO controllers, and a corresponding reward bank of the one or more rewards,” as recited in Claim 3 (2) “determining whether the user has reached a reward limit, wherein the reward limit includes a maximum number of awards allowable to a user over a selected time period,” as recited in Claim 3, and (3) only “upon authenticating the user-initiated request and determining the user has not reached the reward limit, identifying a reward in the bank of the one or more rewards compatible with the reported user performance and a determined location of the user performance,” as recited in Claim 3. Thus, amended Claim 3 is eligible because it is not directed to the recited judicial exception.”
In response, the Examiner respectfully disagrees. First, the facts of application here do not uniquely match the facts in Example 46. The claimed invention here is directed towards providing rewardable consumer engagement opportunities. The claimed invention in Example 46 is directed towards livestock management. However, for the sake of advancing prosecution, step (d) of Examples 46 did not merely link the judicial exception to a technical field, but instead added a meaningful limitation in that it can employ the information provided by the judicial exception (the mental analysis of whether the animal is exhibiting an aberrant behavioral pattern indicative of grass tetany) to operate the gate control mechanism and route the animals, thus avoiding the need for a farmer to visually evaluate the behavior of each animal in the herd on a continual basis. Here, there is no evidence from the claims or specification that the claimed invention provides such an improvement. The additional elements are used as tools, in their ordinary capacity, to perform the abstract idea. “Use of a computer or other machinery in its ordinary capacity for economic or other task (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more” (MPEP 2106.05(f)(2)).
Argument: “The Board cited prior art references including Hoffman et al. (US 2012/0041767 A1), Redmann (US 2012/0129138 A1), Fung et al. (US 2007/0192178 A1), and Goldberg (US 2013/0006737 A1) as evidence that the additional elements are conventional. Decision on Appeal, pages 17-18. However, none of these references, alone or in combination, disclose or suggest the amended claim limitations. In particular, none of the cited references disclose "wherein the one or more additional devices includes a golf swing tracker," as now recited in amended Claim 2, or "determining whether the user has reached a reward limit, wherein the reward limit includes a maximum number of awards allowable to a user over a selected time period," as now recited in amended Claim 3. Applicant respectfully notes that the Patent Office has stated that the claims in the instant application currently overcome all prior art rejections. By overcoming all prior art rejections, Applicant respectfully submits that the amended claims inherently "add a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field."
In response, the Examiner respectfully disagrees. First, the Office Action does not take the position that any of the additional elements amount to adding insignificant extra-solution activity in Step 2A Prong Two that would warrant an analysis in Step 2B to determine that the additional element also amounts to significantly more. The Examiner notes that revised Step 2A Prong Two overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same.
Second, “the ‘novelty’ of any element or step in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possible patentable subject matter” (MPEP 2106.05(I)). Additionally, "the relevant inquiry is not whether the claimed invention as a whole is unconventional or non-routine" (see p. 16 of BSG Tech LLC v. BuySeasons, Inc. (Fed. Cir. 2018).
Therefore, the claims as currently amended still do not integrate the judicial exception into a practical application or amount to significantly more.
Conclusion
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/SAM REFAI/Primary Examiner, Art Unit 3681
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