DETAILED ACTION
This Office action is in reply to correspondence filed 20 May 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 Objections
Claim 1 is objected to because of the following informalities: on the next-to-last line of the claim, a hyphen symbol appears to the left of “one”. It is presumed this is a typographic error. Appropriate correction is required.
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. 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"), (6) 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.
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)).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Chatterjee et al. (U.S. Publication No. 2018/0276654) in view of Molinari et al. (U.S. Publication No. 2019/0080406) further in view of Castinado et al. (U.S. Publication No. 2017/0243213).
In-line citations are to Chatterjee.
With regard to Claim 11:
Chatterjee teaches: A system for token utilization, comprising:
a plurality of electronic devices executing a data application, [0050; "computers" are used] the data application is configured to automatically communicate one or more tokens; [Fig. 2; in response to creating a token which, as shown above, was based on a request, it is communicated to a database]
a data platform accessible by the plurality of electronic devices through one or more network executing the data application, [0015; "the Internet”] wherein the data platform generates the one or more tokens and an identifier associated with a product or service and a user, [Fig. 5; each token is assigned a "Token #" which reads on an identifier and associates it with a rewards identifier; 0031; the tokens are generated in response to a request from a user; 0017; it may be related to a product such as "free item" or service such as "hotel nights"] communicate the one or more tokens to one or more of the plurality of electronic devices based on a request from the user, [Fig. 2; in response to creating the token which, as shown above, was based on a request, it is communicated to a database and, 0029, transmitted "to the device of the registered user"] tracks… associated with the one or more tokens... [0001; "tracking rewards associated with tokenized transactions originating in a digital wallet"] and automatically compensates the user... associated with the one or more tokens. [0012; merchants may provide rewards in exchange for tokenized transactions using a computer]
Chatterjee does not explicitly teach tracking the use of tokens for purchases of the product or service, or using a smart contract, but it is known in the art. Molinari teaches an e-wallet system. [title] A person may use a "token" to receive "rewards" that "can be used in exchange to purchase the products or services of the issuer", [0085] and tracking of this is performed. [0096] It uses "smart contracts". [0022] Molinari and Chatterjee are analogous art as each is directed to electronic means for using tokens to exchange for other items of value.
It would have been obvious to one of ordinary skill in the art just prior to the filing of the claimed invention to combine the teaching of Molinari with that of Chatterjee in order to improve safekeeping of assets, as taught by Molinari; [0021] further, it is simply a substitution of one known part for another with predictable results, simply using tokens and storing software in the manner of Molinari rather than the less-specific manner of Chatterjee; the substitution produces no new and unexpected result.
Chatterjee does not explicitly teach associating the token with third parties across unaffiliated platforms and devices, utilizing one or more digital ledgers or verif(ying) the identifier associated with the token and one or more of the purchases, but it is known in the art. Castinado teaches a contactless transaction system [title] that operate with multiple differently-owned computers across networks. [Sheet 1, Fig. 1] It stores data in "distributed ledger(s)" of "block chain systems". [0026] Data is "verified across multiple proprietary platforms" during "NFC transactions". [0064] The system may "verify individual identities" and a "unique identification number associated with the user" such as an "account number". [0067] Castinado and Chatterjee are analogous art as each is directed to the use of identifiers in financial transactions.
It would have been obvious to one of ordinary skill in the art just prior to the filing of the claimed invention to combine the teaching of Castinado with that of Chatterjee in order to enable contactless transactions, as taught by Castinado; [abstract] further, it is simply a substitution of one known part for another with predictable results, simply processing a transaction in the manner of, and using the network topology of, Castinado in place of that of Chatterjee; the substitution produces no new and unexpected result.
With regard to Claim 12:
The system of claim 11, wherein compensation of the user is controlled by the smart contract, [Molinari, as cited above in regard to claim 11] and wherein communication of the one or more tokens is tracked via a secure application program interface (API). [Molinari, 0036; APIs are used]
With regard to Claim 13:
The system of claim 11, wherein the data platform associates the one or more tokens with the product or service. [Chatterjee, as cited above in regard to claim 11]
With regard to Claim 14:
The system of claim 11, wherein the data platform communicates the one or more tokens including information regarding the goods and services through a web page or mobile application. [0027; it may be on a "merchant or rewards program website"]
With regard to Claim 15:
The system of claim 11, further comprising: one or more databases in communication with the data platform, [0005; a "database" is used to manage rewards] wherein the one or more databases store a smart contract governing creation and utilization of the one or more tokens associated with the product or service. [Molinari as cited above in regard to claim 11]
With regard to Claim 16:
The system of claim 15, wherein the one or more databases further store utilization data associated with the one or more tokens and utilization or transactions involving the one or more tokens. [0005; a "database" is used to manage [the] rewards account" which involves use of data as cited above]
Response to Arguments
Applicant's arguments filed 20 May 2026 have been fully considered but they are not persuasive. In regard to the rejections made under 35 U.S.C. § 112(a)-(b), the present amendment has addressed the concerns that led to those rejections, rendering them moot, and they are withdrawn.
In regard to the overall structure of the argument, the Examiner is concerned about some errors in the introductory section. First, it says that in the “Final Office Action”, the Examiner took certain actions, but the applicant’s present response is to a non-final rejection. Second, in the previous Office action, only claims 11-16 were rejected under § 103. The Examiner wonders if perhaps the arguments made were in reply to an earlier Office action and not the most recent one. Only arguments pertinent to the rejections actually made in the previous Office action will be addressed herein.
In regard to § 101, the Examiner must respectfully disagree with the applicant’s assertion, pg. 10, that an 1896 retailer could not perform the claimed steps. In conflating the computer components with the essentially abstract process, the applicant is combining the step 2A, prong one analysis with the step 2A, prong two analysis, and they are separate.
Prong one of step 2A is an inquiry into whether a claim “recites”, that is, “sets forth or describes”, an abstract idea. Saying that the claims do not recite “the Green Stamps abstract ide” but rather a “particular technical architecture” is not persuasive, because the applicant does not actually argue persuasively that the claims actually do not recite an abstract idea but rather appears to be arguing that they do not merely recite the abstract idea, which the Examiner has never said that they do. The Examiner maintains the position that the claims recite an abstract idea.
In regard to prong two, the inquiry into whether the claims integrate the abstract idea into a practical application. In particular, the applicant makes the following argument: “The ‘smart contract’ recited in the claims is not, as the Office Action suggests, ‘merely software stored in a particular place’; it is on-ledger executable code that conditions the compensation step on an express cryptographic identifier-to-transaction verification”. First, “executable code” is software, and that it is “on-ledger” means that it is stored in a particular place. So, up to this point, the applicant and the Examiner agree that a “smart contract” is what the Examiner has said that it is.
The other language, that it “conditions the compensation step on an express cryptographic identifier-to-transaction verification” does not refer to anything in the claims of the present invention and is therefore not relevant to the § 101 analysis.
The structural components mentioned in the arguments are also not reflective of the claims, in which a single computer performs a sequence of steps while communicating with external devices. This is not any inventive or even unusual topology; the Internet, as it existed for many years prior to the filing of the claimed invention, supported all of this.
The Examiner maintains the position that the claims do not integrate the abstract idea into a practical application and therefore are directed to the abstract idea.
In regard to step 2B, it is the additional, that is, non-abstract claim elements that are considered, individually and as an ordered combination, to determine whether they amount to “significantly more” than the abstract idea. In the present claims, the only additional elements are a computer executing software stored somewhere, and the Examiner cannot see how such a thing could reasonably be considered as going beyond the well-understood, routine and conventional, fifty years into the Internet age and twenty-seven years into the age of the World Wide Web.
The claims are not patent eligible and the rejection is maintained.
In regard to § 103, the applicant argues about language that goes beyond anything in claim 11 in pointing out the supposed deficiencies in the rejection. That Molinari does not “describe verifying a token identifier against a third-party recorded purchase stored on a digital ledger as a precondition to triggering compensation” may be so, but the claim does not require this either; the closest language in claim 11 the Examiner can find merely requires that the system “verifies the identifier associated with the token and one or more of the purchases”. Arguments about unclaimed language are not relevant to the § 103 analysis. The rejection is maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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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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
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