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 .
Status
This action is in response to the amendment filed on 1/2/2026. Claims 1, 2, 4-9, 11-16, 18-20 are pending. Claims 1, 8, 15, are amended. No claims have been added. No claims are currently cancelled.
Response to Arguments
Applicant's arguments filed 1/2/2026 have been fully considered but they are not persuasive. The applicant has argued “Contrary to what the Office Action alleges, the claims do not recite an abstract idea. The disclosed systems and methods improve at least the functioning of a computing device (e.g., the computing system) at least by "receiving, by the processor, transaction data of an electronic transaction initiated by the user, wherein the transaction data includes an authorization request and information of the electronic transaction including a purchase amount," "comparing, by the processor, the purchase amount to the updated likelihood and historical spend data of the profile associated with the user," and "routing, by the processor, the authorization request to an issuer processor based on the comparing," as recited in the amended claims. Contrary to what the Office Action alleges, the claims therefore do not recite an abstract idea..” The examiner respectfully disagrees. Specifically looking at the newly added limitations the applicant is claiming receiving information, comparing information, and routing an authorization request. The routing is not a technological improvement. Simply taking a manual process (e.g. a human receiving a request and routing it) and stating that it is done by or on a computer does not make the claims eligible. Applicant’s invention is directed to generating consumer analytics for products placed in shopping carts. The invention tracks interactions, receives shopping cart data, identifies a differential sales treatment, determines information related to price reductions, updates data about the likelihood, receives data, compares data, and routs an authorization request. Any improvement would be to the data and not to the technology. An improvement to an abstract idea does not make the invention any less abstract. The claimed subject matter recites a commercial interaction because the various functions recited in the claims all recite aspects of the abstract idea of identifying a differential sales treatment between products based on a price reduction and updating a likelihood of purchase. More particularly, the recited functions (i.e., tracking user interaction, receiving shopping cart data, identifying a differential sales treatment, determining price reduction, updating a likelihood of purchase, receiving transaction data, comparing data, and routing an authorization request) all comprise aspects of determining the likelihood of purchase based on price reduction, which is a sales activity and, therefore, falls within the certain methods of organizing human activity category of abstract ideas. MPEP § 2106.04(a)(2)(II)(B); see, Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (holding abstract claims directed to “tracking financial transactions to determine whether they exceed a pre-set spending limit (i.e., budgeting)”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015). The claims are also directed to a mental process. The claims are directed to a mental process as the applicant is merely performing a mental process in a computer environment. Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures “can be carried out in existing computers long in use, no new machinery being necessary.” 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of “anonymous loan shopping” recited in a computer system claim is an abstract idea because it could be “performed by humans without a computer”). The applicant is analyzing information in a computer environment. The applicant is merely performing a mental process in a computer environment. An example of a case identifying a mental process performed in a computer environment as an abstract idea is Symantec Corp., 838 F.3d at 1316-18, 120 USPQ2d at 1360. In this case, the Federal Circuit relied upon the specification when explaining that the claimed electronic post office, which recited limitations describing how the system would receive, screen and distribute email on a computer network, was analogous to how a person decides whether to read or dispose of a particular piece of mail and that “with the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper”. 838 F.3d at 1318, 120 USPQ2d at 1360. Another example is FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 120 USPQ2d 1293 (Fed. Cir. 2016). The patentee in FairWarning claimed a system and method of detecting fraud and/or misuse in a computer environment, in which information regarding accesses of a patient’s personal health information was analyzed according to one of several rules (i.e., related to accesses in excess of a specific volume, accesses during a pre-determined time interval, or accesses by a specific user) to determine if the activity indicates improper access. 839 F.3d. at 1092, 120 USPQ2d at 1294. The court determined that these claims were directed to a mental process of detecting misuse, and that the claimed rules here were “the same questions (though perhaps phrased with different words) that humans in analogous situations detecting fraud have asked for decades, if not centuries.” 839 F.3d. at 1094-95, 120 USPQ2d at 1296. When evaluating whether a claim that requires a computer recites a mental process, the claims are considered in view of the broadest reasonable interpretation of the claim in light of the specification. The claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite a mental process. The use of a computer or even in this case two computers as a tool to perform the steps of the invention still recite a mental process.
The applicant argues “Nonetheless, even if the amended claims did necessitate an evaluation of Prong Two, which Applicant does not concede, the amended claims do recite additional elements that integrate the alleged judicial exception into a practical application. For example, the amended claims at least recite elements directed to updating, by the processor, the profile associated with the user with a likelihood of the first product to be more frequently purchased during a future transaction based on the differential sales treatment, the first price reduction being less frequently issued, and the first price reduction falling below a range of pricing, receiving, by the processor, transaction data of an electronic transaction initiated by the user, wherein the transaction data includes an authorization request and information of the electronic transaction including a purchase amount, comparing, by the processor, the purchase amount to the updated likelihood and historical spend data of the profile associated with the user, and routing, by the processor, the authorization request to an issuer processor based on the comparing.” The examiner respectfully disagrees. As claimed the applicant is merely using computer components to execute operations, amounts to implementing the abstract idea on a generic computer, or using generic computer components, and, therefore, does not integrate the abstract ideas into a practical application. The "improvements" analysis in determines whether the claim pertains to an improvement to the functioning of a computer or to another technology without reference to what is well-understood, routine, conventional activity. That is, the claimed invention may integrate the judicial exception into a practical application by demonstrating that it improves the relevant existing technology although it may not be an improvement over well-understood, routine, conventional activity. Examples of claims that improve technology and are not directed to a judicial exception include: Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339, 118 USPQ2d 1684, 1691-92 (Fed. Cir. 2016) (claims to a self-referential table for a computer database were directed to an improvement in computer capabilities and not directed to an abstract idea); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315, 120 USPQ2d 1091, 1102-03 (Fed. Cir. 2016) (claims to automatic lip synchronization and facial expression animation were directed to an improvement in computer-related technology and not directed to an abstract idea); Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253,1259-60, 123 USPQ2d 1712, 1717 (Fed. Cir. 2017) (claims to an enhanced computer memory system were directed to an improvement in computer capabilities and not an abstract idea); Finjan Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 125 USPQ2d 1282 (Fed. Cir. 2018) (claims to virus scanning were found to be an improvement in computer technology and not directed to an abstract idea); SRI Int’l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1303 (Fed. Cir. 2019) (claims to detecting suspicious activity by using network monitors and analyzing network packets were found to be an improvement in computer network technology and not directed to an abstract idea). Additional examples are provided in MPEP § 2106.05(a). To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology. See MPEP § 2106.05(f) for more information about mere instructions to apply an exception. Limiting the claims to ecommerce and electronic shopping carts, at best, links the abstract idea to a particular technological environment, which also is insufficient to integrate the abstract idea into a practical application. Guidance, 84 Fed. Reg. at 55; see MPEP § 2106.05(h). The applicant has not specifically argued any of the claims limitations in view of prong 2A, merely citing court cases and making general statements.
Considered as an ordered combination, the computer components of Applicant’s claims add nothing that is not already present when the steps are considered separately. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract), Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017). The ordering of the steps is, therefore, ordinary and conventional.
The additional elements were analyzed to determine whether they add well-understood, routine and conventional activity in the field. In any case, as the additional elements of the processing element and user device are described as general purpose computers being used in a computer environment, the Specification itself establishes that the additional elements are well-understood, conventional and routine. The additional elements outside the abstract idea do not transform the nature of the claim into a patent-eligible application. The only claim elements beyond the abstract idea are the processor, merchant device, computing system, computer, data storage device, interface, and non-transitory medium that are recited generally, and that the Specification indisputably shows were well-understood, routine, and conventional at the time of the filing. See supra. Accordingly, based on the applicant’s description, these components are well understood, routine, or conventional. MPEP § 2106.05(d)(I) (“For example, in many instances, the specification of the application may indicate that additional elements are well-known or conventional.”); (arguing, without evidence, that “the claimed method, which utilizes a processing system that implements these features, includes a particular machine”). As discussed above, the applicant does not contend that it invented any of those components or their basic functions or that those components, claimed generally, were unknown in the art as of time of the invention. There is no technological improvement to the computer or components used. Computers “have become the substrate of our daily lives- -the ‘basic tool [ ],’ Gottschalk v. Benson, 409 U.S. 63, 67 . . . (1972), of a great many of our social and economic interactions--generic computer functions, such as storing, analyzing, organizing, and communicating information, carry no weight in the eligibility analysis. See Alice, 134 S. Ct. at 2357.” In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1165 (Fed. Cir. 2018) (Mayer concurring). Rather than being tied to a particular machine, claim 1 merely implements an abstract idea using generic computer components, which is not enough for patent eligibility. See Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”); BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (“An abstract idea on ‘an Internet computer network’ or on a generic computer is still an abstract idea”) (citation omitted).
The previous 101 has been maintained and updated in view of applicant’s amendments.
The closest prior art of record includes, Mashadi et al. (US 20170148046 A1) which discloses online purchasing and account management comprising: a universal shopping cart component, a social networking marketplace, identity and profile management, and a privacy patrol component. Akbarpour et al. (US 20150302449 A1) which discloses content provider-driven shopping. Shaw (US 8332258 B1) which discloses targeted advertising and targeted search results. Kedia (US 20210103950 A1) which discloses generating a peronalised discount for each user on an e-commerce system. Rowen (US 20110238510 A1) which discloses a verification system for detecting and preventing fraudulent transactions. Boal (US 20140180811 A1) which discloses generation, processing, storage, management, usage, distribution and/or delivery of digital offers, including digital coupons and other digital promotional vehicles. Siddens et al. (US 20130212006 A1) which discloses automatically converting the transaction data to correspond to the currency contained in received fraud detection rules. Godsey et al. (US 20150112836 A1) which discloses assisting in an electronic shopping experience. The prior art references in combination or individual do not specifically teach identify a differential sales treatment between a first product of the one or more products associated with a first price reduction and a second product of the one or more products associated with a second price reduction, the differential sales treatment based on the first product being purchased more frequently than the second product, the second product being similar to the first product, and the first price reduction being less than the second price reduction and updating, by the processor, a likelihood of the first product to be more frequently purchased during a future transaction based on the differential sales treatment, the first price reduction being less frequently issued, and the first price reduction falling below a range of pricing.
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, 2, 4-9, 11-16, 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. The claim(s) is/are directed to the abstract idea of identifying and performing an action based on differential sales. The claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more than the judicial exception itself.
Step 2A Prong 1
The claim(s) recite(s) (mathematical relationships/formulas, mental process or certain methods of organizing human activity). Specifically the independent claims recite:
(a) mental process: as drafted, the claim recites the limitations of tracking user interactions, receiving shopping cart data, identifying a differential sales treatment, determining data, updating data, receiving data, comparing data, and routing an authorization request which is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “at a processor,” nothing in the claim precludes the determining step from practically being performed in the human mind. For example, but for the “at a processor” language, the claim encompasses the user manually analyzing and manipulating shopping cart product data. The mere nominal recitation of a generic device does not take the claim limitation out of the mental processes grouping. This limitation is a mental process. While the Guidance provides that claims do not recite a mental process when they contain limitations that can practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitations. However with regard to the instant application the Examiner has reviewed the disclosure and determined that the underlying claimed invention is described as a concept that is performed in the human mind and/or with the aid of a pen and paper, and thus it is viewed that the applicant is merely claiming that concept performed on a generic computer, and therefore is considered to recite a mental process. Claims can recite a mental process even if they are claimed as being performed on a computer. The courts have found claims requiring a generic computer or nominally reciting a generic computer may still recite a mental process even though the clam limitations are not performed entirely in the human mind.
(c) certain methods of organizing human activity: The claim as a whole recites a method of organizing human activity. The claimed invention is a method that generates information about the likelihood of a product purchased by humans with regards to put in shopping carts which is analyzing human activity specifically a fundamental economic practice and marketing or sales activities or behaviors which are commercial or legal interactions. “Fundamental Economic Practices or Principles”; Under the 2019 PEG, “fundamental economic principles or practices,” which describe subject matter relating to the economy and commerce, are considered to be a “certain method of organizing human activity.” According to the 2019 PEG, “fundamental economic principles or practices” include hedging, insurance, and mitigating risk. The term “fundamental” is not used in the sense of necessarily being “old” or “well-known,” although being old or well-known may indicate that the practice is “fundamental.”
Dependent claims 2, 6, 9, 13, 16, 20, further narrow the abstract idea identified in the independent claims and do not introduce further additional elements for consideration.
Dependent claims 4-5, 7, 11-12, 14, 18-19 will be evaluated under Step 2A, Prong 2 below.
Step 2A Prong 2
Independent claims 1, 8, and 15 do not integrate the judicial exception into a practical application. Claim 1 is a method performed “tracking, by a processor of computing system and using a tracking element, user interactions of a user with a plurality of user interfaces associated with a plurality of virtual shopping carts.” Claim 1 further recites the additional elements “a token,” “tokenized payment vehicle data of a payment vehicle,” “the plurality of virtual shopping carts using the plurality of user interfaces,” “a merchant system”, “routing, by the processor, the authorization request to an issuer processor.” Claim 8 is a system that recites limitations performed “A decentralized computer system for generating analytics for products placed in virtual or physical shopping carts, the system comprising.” Claim 8 further recites the additional elements of “a data storage device storing instructions for generating analytics for products placed in virtual or physical shopping carts”, “a processor configured to execute the instructions to perform a method”, “tracking, by the processor and using a tracking element, user interactions of a user with a plurality of user interfaces associated with a plurality of virtual shopping carts”, “a token,” “tokenized payment vehicle data of a payment vehicle,” “the plurality of virtual shopping carts using the plurality of user interfaces,“ “identifying, by the processor, a differential sales treatment,” “a merchant system”, and “routing, by the processor, the authorization request to an issuer processor.” Claim 15 is a non-transitory computer readable medium that comprises “A non-transitory machine-readable medium storing instructions that, when executed by a purchase tracking system, cause the purchase tracking computing system to perform a method for generating analytics for products placed in virtual or physical shopping carts.” Claim 15 further recites the additional element of “tracking, by a processor of the computing system and using a tracking element, user interactions of a user with a plurality of user interfaces associated with a plurality of virtual shopping carts,” “a token,” “tokenized payment vehicle data of a payment vehicle,” “at the processor,” “using the plurality of interfaces,” “identifying, by the processor, a differential sales treatment”, “a merchant system”, “routing, by the processor, the authorization request to an issuer processor.” These additional elements are mere instructions to implement an abstract idea using a computer in its ordinary capacity, or merely uses the computer as a tool to perform the identified abstract idea. Use of a computer or other machinery in its ordinary capacity for performing the steps of the abstract idea or other tasks (e.g., to receive, manipulate, and route data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., certain methods of organizing human activity) does not integrate a judicial exception into a practical application. See MPEP 2106.05(f).
Therefore, the additional elements of the independent claims, when considered both individually and in combination, are not sufficient to prove integration into a practical application.
Dependent claims 2, 6, 9, 13, 16, 20 further narrow the abstract idea identified in the independent claims and do not introduce further additional elements for consideration, which does not integrate the judicial exception into a practical application.
Dependent claims 4, 11, 18 includes the additional element of “one of the plurality of virtual shopping carts.” Use of a computer or other machinery in its ordinary capacity for performing the steps of the abstract idea or other tasks or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., certain methods of organizing human activity) does not integrate a judicial exception into a practical application. See MPEP 2106.05(f).
Dependent claims 5, 12, 19 includes the additional element of a “merchant system,” “virtual shopping cart.” Use of a computer or other machinery in its ordinary capacity for performing the steps of the abstract idea or other tasks or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., certain methods of organizing human activity) does not integrate a judicial exception into a practical application. See MPEP 2106.05(f).
Dependent claims 7, 14 introduces the additional element of “a display of the merchant system.” Use of a computer or other machinery in its ordinary capacity for performing the steps of the abstract idea or other tasks or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., certain methods of organizing human activity) does not integrate a judicial exception into a practical application. See MPEP 2106.05(f). MPEP 2106.05(h).
Therefore, the additional elements of the dependent claims, when considered both individually and in the context of the independent claims, are not sufficient to prove integration into a practical application. Thus the problem the claimed invention is directed to answering the question based on gathered and analyzed information about differential sales treatment. This is not a technical or technological problem but is rather in the realm of business or marketing management and therefore an abstract idea.
Step 2B
Independent claims 1, 8, and 15 do not comprise anything significantly more than the judicial exception. 1 is a method performed “tracking, by a processor of computing system and using a tracking element, user interactions of a user with a plurality of user interfaces associated with a plurality of virtual shopping carts.” Claim 1 further recites the additional elements “a token,” “tokenized payment vehicle data of a payment vehicle,” “the plurality of virtual shopping carts using the plurality of user interfaces,” “a merchant system”, “routing, by the processor, the authorization request to an issuer processor.” Claim 8 is a system that recites limitations performed “A decentralized computer system for generating analytics for products placed in virtual or physical shopping carts, the system comprising.” Claim 8 further recites the additional elements of “a data storage device storing instructions for generating analytics for products placed in virtual or physical shopping carts”, “a processor configured to execute the instructions to perform a method”, “tracking, by the processor and using a tracking element, user interactions of a user with a plurality of user interfaces associated with a plurality of virtual shopping carts”, “a token,” “tokenized payment vehicle data of a payment vehicle,” “the plurality of virtual shopping carts using the plurality of user interfaces,“ “identifying, by the processor, a differential sales treatment,” “a merchant system”, and “routing, by the processor, the authorization request to an issuer processor.” Claim 15 is a non-transitory computer readable medium that comprises “A non-transitory machine-readable medium storing instructions that, when executed by a purchase tracking system, cause the purchase tracking computing system to perform a method for generating analytics for products placed in virtual or physical shopping carts.” Claim 15 further recites the additional element of “tracking, by a processor of the computing system and using a tracking element, user interactions of a user with a plurality of user interfaces associated with a plurality of virtual shopping carts,” “a token,” “tokenized payment vehicle data of a payment vehicle,” “at the processor,” “using the plurality of interfaces,” “identifying, by the processor, a differential sales treatment”, “a merchant system”, “routing, by the processor, the authorization request to an issuer processor.” These additional elements are mere instructions to implement an abstract idea using a computer in its ordinary capacity, or merely uses the computer as a tool to perform the identified abstract idea. Use of a computer or other machinery in its ordinary capacity for performing the steps of the abstract idea or other tasks (e.g., to receive, manipulate, and route data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., certain methods of organizing human activity) is not anything significantly more than the judicial exception. See MPEP 2106.05(f).
Therefore, the additional elements of the independent claims, when considered both individually and in combination, do not comprise anything significantly more than the judicial exception.
Dependent claims 2, 6, 9, 13, 16, 20 further narrow the abstract idea identified in the independent claims and do not introduce further additional elements for consideration, which is not anything significantly more than the judicial exception.
Dependent claims 4, 11, 18 includes the additional element of “one of the plurality of virtual shopping carts.” Use of a computer or other machinery in its ordinary capacity for performing the steps of the abstract idea or other tasks or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., certain methods of organizing human activity) is not anything significantly more than the judicial exception. See MPEP 2106.05(f).
Dependent claims 5, 12, 19 includes the additional element of a “merchant system,” “virtual shopping cart.” Use of a computer or other machinery in its ordinary capacity for performing the steps of the abstract idea or other tasks or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., certain methods of organizing human activity) is not anything significantly more than the judicial exception. See MPEP 2106.05(f).
Dependent claims 7, 14 introduces the additional element of “a display of the merchant system.” This limitation is not anything significantly more than the judicial exception because it is nothing more than generally linking the use of the judicial exception to a particular technological environment. See MPEP 2106.05(h).
The additional elements of the dependent claims, when considered both individually and in the context of the independent claims, are not anything significantly more than the judicial exception.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed with respect to Step 2A Prong Two, the additional elements in the claims amounts to no more than mere instructions to apply the exception using a generic computer component.
Thus the claims recite an abstract idea directed to a mental process applied to certain methods of organizing human activity (i.e. identifying and performing an action based on differential sales). Using a computer to receive, provide, determine, update, compare, and route the data resulting from this kind of mental process merely implements the abstract idea in the manner of “apply it” and does not provide 'something more' to make the claimed invention patent eligible. The claimed limitations of a computing device is not constraining the abstract idea to a particular technological environment and do not provide significantly more. The claim is ineligible.
Accordingly, claims 1, 2, 4-9, 11-16, 18-20 are rejected under 35 USC 101.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 2, 4-9, 11-16, 18-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The applicant has amended in the new limitations of comparing, by the processor, the purchase amount to the updated likelihood and historical spend data of the profile associated with the user; and routing, by the processor, the authorization request to an issuer processor based on the comparing. Although the applicant has support in the originally filed disclosure for benchmarking a merchants performance, however, the applicant does not have support for comparing a “purchase amount” to an “updated likelihood and historical spend data” of user profile. Although the applicant has support in the originally filed disclosure for routing data. However, there is no support in the originally filed disclosure for routing an ”authorization request” based on “comparing.” Appropriate correction is required.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JAMIE H AUSTIN whose telephone number is (571)272-7363. The examiner can normally be reached Monday, Tuesday, Thursday, Friday 7am-2pm.
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JAMIE H. AUSTIN
Examiner
Art Unit 3625
/JAMIE H AUSTIN/Primary Examiner, Art Unit 3625