DETAILED ACTION
This Office action is in reply to correspondence filed 10 September 2026 in regard to application no. 17/842,265. Claims 1-20 are pending and are considered below.
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 an abstract idea without significantly more. The claims are directed to statutory categories of invention, as each is directed to a method (process) or system (machine). Claim 17 is the most detailed of the independent claims, so it will serve here as exemplary. The claim(s) recite(s) (a) associating an item of value (e.g. product or service) with a person ("user"), (b) creating a token in no particular manner, (c) communicating information about the token based on a request, (d) tracking use of the token by a third party in no particular manner, (e) storing information and (f) providing compensation to the person after verifying two pieces of data.
First, this recites a commercial interaction or a fundamental business practice. Businesses have been providing items of value (e.g. coupons) to consumers for many decades, and have tracked their use and stored information about them, and have done so long before there was any such thing as a computer. For one example, well known to people of the Examiner's age, for a good many decades the Sperry & Hutchinson company provided collectible stamps ("S&H Green Stamps") through retailers; consumers earned the stamps by making purchases, and when they had filled various-sized books with the stamps, could go to a redemption center and redeem the stamps for merchandise. The company initiated this reward system in 1896, five decades before there was any such thing as a computer. Similarly, in banking transactions, it was quite routine, years before computers came into being, for bankers to verify account numbers and customers' identities prior to allowing transactions.
Further, these steps recite mental steps and insignificant, extra-solution activity. Step (d) is mere data gathering, which is insignificant, pre-solution activity. Step (c) is simply provision of output, which is insignificant, post-solution activity. Steps a, b and e can be practically performed in the human mind or, at most, with a pen and paper.
A store clerk (or anyone else) can mentally associate a person with a product; e.g. she may mentally observe that a customer is carrying a carton of milk. Consistent with the instant specification, e.g. pg. 6, lines 25-29, a token is an indicia of value, so the store clerk writing a coupon on a piece of paper would suffice as such, and then she could provide compensation (e.g. a discounted price) in exchange for the customer using the coupon. The consumer could share the coupon with another person who might use it in her place. The clerk could validate the coupon and the identity of the person using it. Various platforms and devices can be used: one person could be given a coupon using pen and paper; another could be told verbally over the telephone of an offer. None of this would present any practical difficulty, and none requires any technology beyond a pen and paper or conventional use of the telephone.
This judicial exception is not integrated into a practical application because aside from the bare inclusion of a generic computer, nothing is done beyond what was set forth above. This is, at most, simply using a generic computer as a tool to implement the abstract idea. See MPEP § 2106.05(f).
As the claims only manipulate data about tokens, purchases 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 toa different state or thing", MPEP § 2106.05(c). First, such data, being intangible, are 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 the lack of technical and algorithmic detail in the claims is so as not to 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 limitations, considered individually and as an ordered combination, are insufficient to confer patent eligibility on an otherwise-ineligible invention. The claims generally include a processor and memory which can execute a "data application" and use a "network". It makes use of a "smart contract", which is nothing more than software stored in a specific place.
These elements are recited at a high degree of generality and the specification does not meaningfully limit them, such that generic computers will suffice. They only perform generic computer functions of nondescriptly manipulating data and sharing data with persons and/or other devices. 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. Saying a step is performed "automatically" does not alter the analysis; anything done by a computer is, to some extent, automatic. The claim elements when considered as an ordered combination - generic computers performing a chronological sequence of abstract steps - do nothing more than when they are analyzed individually.
The other independent claims are simply different embodiments but likewise are directed to a computer performing, essentially, the same process. The dependent claims further do not amount to significantly more than the abstract idea: claims 2, 12 and 20 appear to limit objects entirely outside the scope of the claimed invention. Claims 3, 10 and 13 simply recite further, abstract manipulation of data. Claims 4, 6 and 14 simply recite output; claims 5 and 18 consist entirely of mere labeling, and claims 7-9, 15, 16 and 19 are simply further descriptive of the type of information being manipulated.
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, revised October 2019)).
Response to Arguments
Applicant's arguments filed 10 September 2026 in regard to rejections made under 35 U.S.C. § 101 have been fully considered but they are not persuasive. The present amendment has overcome the objection previously raised, and that is withdrawn.
In regard to the Examiner’s position that the claim does not require conditioning a compensation step “on an express cryptographic identifier-to-transaction verification”, this is because the claim does not require it. That the specification allows for it does not make it a limitation of the claim. Examiners are cautioned against reading items on a specification into a claim, and courts have upheld this cautionary note; see e.g. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
The fact that computers are used does not negate the fact that they need not be used. Asking a customer what he or she has purchased from a competitor (or suggesting that he or she do so, which is similar) is an ages-old custom which requires no technology at all; when Edmund Gwenn’s Santa suggested to a Macy’s customer that she try to find an item at Gimbel’s in Miracle on 34th Street in 1947, he did not need a computer or any other technology to do so.
The well-understood, routine and conventional analysis focuses on the non-abstract claim elements and their interactions with the process, and not the abstract steps themselves. In the present claims there is nothing beyond a generic computer performing abstract steps. The lack of an art rejection is absolutely irrelevant to the § 101 analysis, as the courts have repeatedly and consistently pointed out.
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.
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/SCOTT C ANDERSON/Primary Examiner, Art Unit 3694
