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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/16/2026 has been entered.
Status
This action is in response to the amendment filed on 5/18/2026. 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, see pg. 12, filed 5/18/2026 with respect to the previous 112(a), first paragraph have been fully considered and are persuasive in view of applicant’s amendments. The previous 112(a), first paragraph rejection has been withdrawn.
Applicant's arguments filed 5/18/2026 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 at least by "tracking, by a processor of a computing system and using a tracking element associated with a networked user device of the user, user interactions of the user via the networked user device, the user interactions with a plurality of user interfaces associated with a plurality of virtual shopping carts," "receiving, by the processor and over a network, transaction data of an electronic transaction initiated by the user and the tracking element, wherein the transaction data includes an authorization request and information of the electronic transaction including a purchase amount," and "routing, by the processor, the authorization request to an issuer processor," as recited in amended claim 1. 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 a tracking element over a network. The tracking step is data gathering. The claim does not recite any particular technical means by which the tracking element is generated, computed, or distinguished from conventional identifiers. The receiving step is also a generic data receipt. Receiving data over a network is a basic function of a networked computer, and does not improve the function of the computer or the network and does not by itself improve the functioning of the computer or the network. It merely uses the network for its conventional purpose of transmitting a message. 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, and routes 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, 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 “According to the above, the claims do not recite a judicial exception (e.g., a "No" for Step 2A, Prong One). 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." The examiner respectfully disagrees. The applicant is merely reciting the entirety of the claim without asserting which limitations that the applicant believes integrates the judicial exception into a practical application. The cited passage does not integrate the identified abstract idea into a practical application. The differential sales treatment limitations are the abstract idea as they are directed to a mental process and certain methods of organizing human activity. A merchant comparing purchase frequency and discount depth between two products could perform this same evaluation with historical records and a price list. The receiving and updating limitations are generic data receipt and data storage. The routing limitations is merely an instruction to transmit. As an order combination the claim is data gathering, abstract analysis, and data output. 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. Taking away the abstract idea what remains is generic collection of user interaction, cart, and transaction data, using conventional tracking and tokenization techniques, an abstract determination of differential sales treatment and purchase likelihood, and a generic transmission of an authorization request to a network recipient.
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 applicant has not specifically argued which limitations that the applicant believes constitutes the abstract idea itself as additional elements, does not identify any additional element that amounts to more than conventional data gathering, data organization, or data transmission activity, and does not explain how the claimed combination improves the function of a computer, network, or any other technology, applicant’s argument is not persuasive.
The previous 101 has been maintained and updated in view of applicant’s amendments.
The closest prior art of record includes, Zoldi et al. (US 20140310159 A1) which discloses computing a customer propensity score which represents a propensity for the consumer to conduct the merchant transaction. 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 personalized discount for each user on an e-commerce system. Rowen (US 20110238510 A1) which discloses a verification system for detecting and preventing fraudulent transactions. 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. No single reference, or combination, discloses the full differential sales treatment limitation. The combination of prior art solves different problems in different fields and none of the prior art points toward supplementing a card-issue’s propensity score with a merchant’s product level, price reduction frequency analysis. It is not in one limitation that the prior art rejection was withdrawn, it is in the combination of elements.
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, storing the user interactions, receiving shopping cart data, identifying a differential sales treatment, determining data, updating data, receiving 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. 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 comprising “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... storing, by the processor…receiving, by the processor…identifying, by the processor…determining, by the processor.. updating, by the processor…. receiving, by the processor and over a network …” 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 decentralized computer system,” “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”, “using a tracking element associated with a networked user device of the user, user interactions of [[a]]the user via the networked user device, the user interactions 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”, “receiving, by the processor and over a network,” 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 a computing system and using a tracking element associated with a networked user device of the user, user interactions of the user via the networked user device, the user interactions 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”, “a network,” “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. 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... storing, by the processor…receiving, by the processor…identifying, by the processor…determining, by the processor.. updating, by the processor…. receiving, by the processor and over a network …” 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 decentralized computer system,” “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”, “using a tracking element associated with a networked user device of the user, user interactions of [[a]]the user via the networked user device, the user interactions 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”, “receiving, by the processor and over a network,” 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 a computing system and using a tracking element associated with a networked user device of the user, user interactions of the user via the networked user device, the user interactions 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”, “a network,” “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 track, store, receive, provide, determine, update, 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 transaction data of an electronic transaction initiated by the user and the tracking element. The specification supports “where a transaction is initiated by a user,” (¶ 82) and the specification further supports the tracking element being associated with/provided alongside the transaction, but does not describe the user and tracking element as jointly initiating a transaction. Appropriate correction is required.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 2, 4-9, 11-16, 18-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 8, 15, recites the limitation “a networked user device of the user” There is insufficient antecedent basis for “the user” in the claim.
Regarding claim 15, the phrase "by a processor of a computing system" renders the claim indefinite because previously the claim recites “a non-transitory machine-readable medium storing instructions that, when executed by a computing system, cause the computing system to perform a method.” It is unclear if the applicant is claiming an additional computing system or is referring back to the previously claimed computing system. Clarification is requested.
The claims that depend from the previously rejected claims inherit the rejection from which they depend.
Conclusion
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
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