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 .
DETAILED ACTION
Status of Claims
This action is in reply to the communication filed on 04/10/2026.
Claims 1 and 8-9 have been amended.
Claims 2 and 10 have been canceled.
Claims 1, 3-9 are currently pending and have been examined.
Response to Applicant’s Arguments
Applicant’s amendments and arguments filed on 04/10/2026 have been fully considered and discussed in the next section. Applicant is reminded that the claims must be given its broadest, reasonable interpretation.
With regard to claims 1, 3-9 rejection under 35 USC § 101:
Applicant argues that “As an initial matter, the Office Action errs is grouping the following limitations as a part of the alleged abstract idea: “not transmit [when the amount of the reward does not exceed the predetermined value] an input request of wearable terminal identification information on the wearable terminal that measured the health data of the user to the user terminal; transmit [when the amount of the reward exceeds the predetermined value] the input request of the wearable terminal identification information on the wearable terminal that measured the health data of the user to the user terminal”. Consistent with Ex Parte Vulcano, an element is considered to be a certain method of organizing human activity only if it is a longstanding human practice. See Ex Parte Vulcano, Appeal 2018-009113 (PTAB 2018). Stated differently, if a limitation does not recite a longstanding human practice, it should not be considered as part of any alleged abstract idea that is a certain method of organizing human activity. In the above case, transmitting data to terminals is not a longstanding human practice, in fact, it is not a human practice at all, as it requires communications devices. As such, these limitations must be considered additional elements and must be analyzed for a practical application of, or significantly more than, any alleged abstract idea. At least the above-underlined features of claim 1 recite a clear branching behavior at the server side that directly controls whether or not the subsequent authentication process (and related communication) is initiated. Accordingly, the claims are not merely automating a business rule, but rather dynamically controlling the flow of communication between devices, thereby suppressing unnecessary data transmission and improving runtime system efficiency. These advantages are discussed in e.g. pages 28-31 of the original specification. Such technical effects render any abstract idea as integrated into a practical application, satisfying Step 2A, Prong 2 (page 3/8)”.
Examiner disagrees. First, the Ex Parte Vulcano decision is non-precedential. Secondly, the Vulcano decision found that the graphical user interface claimed resulted in an improvement that transformed the abstract idea into a practical application under Step 2a, Prong 2. In fact, the Vulcano decision supports the opposite of the applicant's interpretation when finding the claims are directed to patent-ineligible subject matter because the receiving step of claim inherently requires to transmit to the mobile device. As such, it is clear that the Vulcano decision does not indicate "an element is considered to be a certain method of organizing human activity only if it is a longstanding human practice", and cannot be said to require that "if a limitation does not recite a longstanding human practice, it should not be considered as part of any alleged abstract idea that is a certain method of organizing human activity".
Unlike the claims found to overcome the 101 rejections in the Vulcano decision, the instant claims do not recite a specific graphical user interface with a technical activity rooted in an additional element of the claims. Thus, the instant claims bear no similarity to the claims in the Vulcano decision. Instead, the transmitting steps of the instant claims are much more similar to the causing communication step in the precedential Int. Ventures v. Cap One Bank '382 decision which was considered part of the abstract idea. As such, the applicant's arguments are not convincing and the rejections have been maintained.
Also , as stated in the Office Action the following limitations of “ not transmit [when the amount of the reward does not exceed the predetermined value] an input request of wearable terminal identification information on the wearable terminal that measured the health data of the user to the user terminal; transmit [when the amount of the reward exceeds the predetermined value] the input request of the wearable terminal identification information on the wearable terminal that measured the health data of the user to the user terminal”, if removed from the abstract idea and considered additional elements, merely perform generic computer function of processing, storing, communicating (e.g., transmitting and receiving), and displaying data and, as such, are insignificant extra-solution activities (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)): and if removed from the abstract idea and considered additional elements, would be considered insignificant extra solution activity as they are directed to merely receiving, displaying, storing, and/or transmitting data (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)).
Furthermore, the recitation of additional elements of using a computer with one or more hardware processors and a database (e.g. a general purpose computer with generic computer component such as a “ system, terminals , processor and storage”, fails to (a) improve another technology or technical field and (b) improve the functioning of the computer itself and (c) applies the abstract idea with or by use of, a particular machine, which is a generic computer performing generic computer functions and are not seen to recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself.
Indeed, the identified improvements recited by Applicant are really, at best improvements to the performance of the abstract idea (e.g., improvements made in the underlying business method (dynamically controlling the flow of communication between devices, thereby suppressing unnecessary data transmission and improving runtime system efficiency) and not in the operations of any additional elements or technology. As thus, Applicant's claimed solution is NOT technological and does not addresses a technological problem.
Therefore, the claim rejection of claims 1, 3-9 rejection under 35 USC § 101 is maintained.
Applicant argues that “the Office Action continued rejection of the recited features is contrary to guidance promulgated by the USPTO. Specifically, at least Example 40, claim 1, Example 42, claim 1, and example 47, claim 3, which were all found eligible, are analogous to claim 1. With respect to Example 40 claim 1, the U.S.P.T.O. provides a hypothetical claim. The present claims provide an improvement analogous to the improvement found eligible above. Specifically, the present invention limits the communication of IMEI data, i.e. data collection and transmission, based on a condition, which avoids excess traffic volume on the network and hindrance of network performance, similar to, or the same as the above example. Additionally,. the transmission frequency related to IMEI input requests is reduced, thereby suppressing unnecessary communication traffic and alleviating network load (page 4/8)”.
Examiner disagrees. In example 40, the claim recites the combination of additional elements of collecting at least one of network delay, packet loss, or jitter relating to the network traffic passing through the network appliance, and collecting additional Netflow protocol data relating to the network traffic when the collected network delay, packet loss, or jitter is greater than the predefined threshold. Although each of the collecting steps analyzed individually may be viewed as mere pre- or post-solution activity, the claim as a whole is directed to a particular improvement in collecting traffic data. Specifically, the method limits collection of additional Netflow protocol data to when the initially collected data reflects an abnormal condition, which avoids excess traffic volume on the network and hindrance of network performance. The collected data can then be used to analyze the cause of the abnormal condition. This provides a specific improvement over prior systems, resulting in improved network monitoring. The claim as a whole integrates the mental process into a practical application. Thus, the claim is eligible because it is not directed to the recited judicial exception (abstract idea).
In example 42, the claim recites a combination of additional elements including storing information, providing remote access over a network, converting updated information that was input by a user in a non-standardized form to a standardized format, automatically generating a message whenever updated information is stored, and transmitting the message to all of the users. The claim as a whole integrates the method of organizing human activity into practical application. Specifically, the additional elements recite a specific improvement over prior art systems by allowing remote users to share information in real time in a standardized format regardless of the format in which the information was input by the user. Thus, the claim is eligible because it is not directed to the recited judicial exception (abstract idea).
With regards to Example 47, the applicant's arguments are not convincing because the instant claims bear no similarities to the claim 3 of abstract idea Example 47. In claim 3 of abstract idea example 47, limitations d-f did not fall within any of the abstract idea categories and, as such, were considered "additional elements" under Step 2a, Prong 2. When considering steps d-f in combination, claim 3 recited an improvement rooted in the additional elements of d-f that transformed the abstract idea into a practical application. In contrast, the argued limitation fall withing the "Certain Methods of Organizing Human Activity" category because they either recite an advertising activity or are steps performed in order for advertising “e.g . reward” to be provided to a user. Hence, it is clear that the argued limitations bear no similarities to step d-f in claim 3 of Abstract Idea example 47. If anything, the argued limitation are similar to steps a-c in claim 3 of Abstract Idea Example 47, in that they recite an abstract idea.
The instant Although the Applicant tries to compare the instant invention to an improvement of computer operation. However, the additional elements of “ system, terminals , processor and storage” of the instant invention, fails to (a) improve another technology or technical field and (b) improve the functioning of the computer itself and (c) applies the abstract idea with or by use of, a particular machine, which is a generic computer performing generic computer functions and are not seen to recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself.
That is the mere nominal recitation of a generic processor does not take the claim out of the methods of organizing human activity as stated above. thus, the claim recites an abstract idea. The claimed processor for instance is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful li limits on practicing the abstract idea.
As such, the applicant's arguments are not convincing. Therefore, the claim rejection of claims 1, 3-9 rejection under 35 USC § 101 is maintained.
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 1,3-9 are directed to a system and a method which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
However, claims 1,3-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) the following abstract idea:
acquire health data measured by a wearable terminal of the user;
determine, based on the health data, an amount of reward to be granted to the user; and
transmit, reward information indicating the amount of the reward and user identification information on the user used at the service,
the server system including a storage and at least one processor, the storage being configured to:
store wearable terminal identification information on any one of a plurality of wearable terminals belonging to the operator in association with the user identification information,
determine, based on the reward information, whether the amount of the reward exceeds a predetermined value;
when the amount of the reward does not exceed the predetermined value: not transmit an input request of wearable terminal identification information on the wearable terminal that measured the health data of the user to the user terminal;
make a first determination of whether the user identification information transmitted by the user terminal is associated with wearable terminal identification information on any one of the plurality of wearable terminals belonging to the operator stored in the storage; and
transmit screen data indicating the amount of the reward to the user terminal; and
when the amount of the reward exceeds the predetermined value:
transmit input screen data for inputting the wearable terminal identification information on the wearable terminal, to the user terminal; and
transmit the input request of the wearable terminal identification information on the transmit, the wearable terminal identification information input to the user terminal in response to the input request,
when the amount of the reward exceeds the predetermined value:
make a second determination of whether the wearable terminal identification information transmitted by the user terminal matches the wearable terminal identification information on any one of the plurality of wearable terminals belonging to the operator stored; and
when the wearable terminal identification information transmitted by the user terminal matches the wearable terminal identification information on any one of the plurality of wearable terminals belonging to the operator stored, transmit screen data indicating the amount of the reward to the user terminal; and
register the reward information and the user identification information in association with each other based on a result of the first determination or a result of the second determination, wherein the wearable terminal identification information comprises International Mobile Equipment Identity (IMEI);
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely commercial or legal interactions because they recite advertising, marketing and sales activities or behaviors. Accordingly, the claim recites an abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application because the claim only recites the additional elements of “the server system including a storage and at least one processor (e.g. a general purpose computer with generic computer components) and user terminal (e.g. wearable terminal).
The following limitations, if removed from the abstract idea and considered additional elements, merely perform generic computer function of processing, storing, communicating (e.g., transmitting and receiving), and displaying data and, as such, are insignificant extra-solution activities (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
transmit, to the server system, reward information indicating the amount of the reward and user identification information on the user used at the service,
store wearable terminal identification information on any one of a plurality of wearable terminals belonging to the operator in association with the user identification information,
transmit screen data indicating the amount of the reward to the user terminal; and
when the amount of the reward exceeds the predetermined value:
transmit input screen data for inputting the wearable terminal identification information on the wearable terminal, to the user terminal; and
transmit the input request of the wearable terminal identification information on the wearable terminal that measured the health data of the user, to the user terminal,
transmit, to the server system, the wearable terminal identification information input to the user terminal in response to the input request,
The additional technical elements above are recited at a high-level of generality (i.e., as a generic processor and generic computer components performing a generic computers function of processing, communicating and displaying) such that it amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and generic computer components. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (see MPEP 2106.05(e) and Vanda memo).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on one or more computers, or merely uses computers as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
Thus, the claim is “directed to” an abstract idea (i.e. “PEG” Revised Step 2A Prong Two=Yes)
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using “the server system including a storage and at least one processor (e.g. a general purpose computer with generic computer components) and user terminal (e.g. wearable terminal), to perform the claimed functions amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and one or more generic computer component.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on one or more computers, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent-eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires one or more general-purpose computer and generic computer components (as evidenced from pages (10-13/31) of the applicant’s specification) and the affinity v Direct TV decision which states that a database is a generic computer component); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility.
Finally, the following limitations, if removed from the abstract idea and considered additional elements, would be considered insignificant extra solution activity as they are directed to merely receiving, displaying, storing, and/or transmitting data (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
transmit, to the server system, reward information indicating the amount of the reward and user identification information on the user used at the service,
store wearable terminal identification information on any one of a plurality of wearable terminals belonging to the operator in association with the user identification information,
transmit screen data indicating the amount of the reward to the user terminal; and
when the amount of the reward exceeds the predetermined value:
transmit input screen data for inputting the wearable terminal identification information on the wearable terminal, to the user terminal; and
transmit the input request of the wearable terminal identification information on the wearable terminal that measured the health data of the user, to the user terminal,
transmit, to the server system, the wearable terminal identification information input to the user terminal in response to the input request,
Thus, taken individually and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea) (i.e., “PEG” Step 2B=No). For the same reason these elements are not sufficient to provide an inventive concept. For these reasons, there is no inventive concept in the claim, and thus the claim is not patent eligible. Same Judicial analysis is applied here to independent claims 8-9.
The dependent claims 3-7 appear to merely further limit the abstract idea by further limiting the reward granting information which is considered part of the abstract idea (store identification information on each of the plurality of wearable terminals belonging to the operator (claim 3); when the content amount of the reward does not satisfy exceed the predetermined condition value, further determine whether the user possesses any one of the plurality of wearable terminals belonging to the operator (claim 4); store in association with the user identification information, possession information indicating whether the user possesses any one of the plurality of wearable terminals belonging to the operator (claim 5); receives the identification information input by the user in response to the input request (claim 6); store, in association with the user identification information or the identification information, contract information indicating whether the communication line is usable of the use (claim 7); and therefore only further limit the abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes), does/do not include any new additional elements that are sufficient to amount to significantly more than the judicial exception, and as such are “directed to” said abstract idea (i.e. “PEG” Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. “PEG” Step 2B=No). Thus, based on the detailed analysis above, claims 1, 3-9 are not patent eligible.
Possible Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: The most relevant prior the examiner has found is:
Molettiere, US Pub No: 2016/0285985 A1, teaches Methods, devices, and computer programs are presented for creating a unified data stream from multiple data streams acquired from multiple devices. One method includes an operation for receiving activity data streams from the devices, each activity data stream being associated with physical activity data of a user. Further, the method includes an operation for assembling the unified activity data stream for a period of time. The unified activity data stream includes data segments from the data streams of at least two devices, and the data segments are organized time-wise over the period of time.
Watterson, US Pub No: 2013/0330694 A1, teaches A system incentivizes people to engage in physical activity. A person's physical activity may be monitored over a period of time. Such monitoring may occur by using a sensing device carried or worn by the user. In the system, one or more thresholds for physical activity are established. Information tracked using the sensing device can be compared to the thresholds. A percentage of physical activity relative to the threshold can be translated to a reward established for the physical activity, and the percentage may be used to determine a reward value for an electronic device relative to a full available value. Rewards may include times or amounts. Time values may indicate durations during which particular activities or devices may be used. Amount values may indicate an amount of a battery charge, a number of communications, a currency value, or other values relative to use of an electronic device.
Inuzuka, US Pub No : 2015/0149266 A, teaches A reward granting device includes a determination unit that determines whether address information from a user terminal corresponds to reward address information, a reward-related information generation unit that generates reward-related information indicating that a website indicated by the address information is a website related to reward granting when it is determined that the address information corresponds to the reward address information, and a transmitting unit that transmits the reward-related information to the user terminal. A user of the user terminal can thereby recognize that the address information in an access request is relevant to reward granting, and therefore an access to the website by the user is encouraged, motivated by reward granting. Accordingly, the opportunities to view a specific website are increased.
Muraki, US Pub No: 2012/0102558 A1, teaches A merchant point-of-sale (“POS”) system architecture is provided. Systems and methods are provided for enabling free form rewards in a custom rewards transaction at a POS terminal. A custom rewards transaction may be a transaction in which a customer opts-in to a merchant-funded rewards (“MFR”) program. The merchant may offer rewards in the MFR program based on location and customer data. The merchant may offer rewards that promote customer behaviors that are advantageous to the merchant. Opting-in to the MFR program may terminate the customer's default enrollment in a conventional issuer-bank funded rewards program.
As such, claims 1, 3-9 would be allowable over the prior art if the applicant were to be able to overcome the 35 USC 101 rejections identified above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant' s disclosure.
Monaco US Pub No: 2021/0217046 A1, teaches the method involves formulating a merchant-funded reward (MFR) to offer to a customer on a merchant computer system processor, such that formulating the MFR to offer the customer further comprises generating a set of potential MFRs. The potential MFRs are eliminated from the set of potential MFRs comprising a cost to the merchant above a threshold cost that is a predetermined amount or a predetermined percentage of the purchase price of the products being purchased. A customer received value is calculated for each potential MFR remaining in the set based on the data in the database. The difference between a first customer received value, and a second merchant cost value are calculated for each MFR in the set. An MFR is selected with the greatest difference between first and second values, and the selected MFR is communicated to the notifying device to offer to the customer, such that the selected MFR is the MFR
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 files within TWO MONTHS from 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 extension fee 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Affaf Ahmed whose telephone number is 571-270-1835. The examiner can normally be reached on [ Mon-Thursday 8-6 pm ].
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached at 571-270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AFAF OSMAN BILAL AHMED/ Primary Examiner, Art Unit 3622
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