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
Response to Amendment
The following is a FINAL Office action in reply to the Amendments and Arguments received on July 6, 2026.
Status of Claims
Claims 1, 9 and 17 have been amended.
Claims 1-20 are currently pending and have been examined.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claims 1-8 are drawn to methods while claim(s) 9-20 is/are drawn to an apparatus. As such, claims 1-20 are drawn to one of the statutory categories of invention (Step 1: YES).
Step 2A - Prong One:
In prong one of step 2A, the claims are analyzed to evaluate whether they recite a judicial exception.
Claim 1 (representative of independent claim(s) 9 and 17) recites the following steps:
providing one or more features of a point-based subscription plan to a user of a product
generating, one or more actions for the user to complete,
displaying, the one or more actions to a user, each action of the one or more actions displaying an associated point value and a period of time in which the user may complete the one or more actions;
parsing data received from a third party to determine history corresponding to the user,
parsing the history to determine an indication that the user has completed at least one of the one or more actions within the period of time;
adjusting the displayed associated point value based on the user completing a certain number of the one or more actions within the period of time, the adjusting based on providing an incentive for the user to continue completing the one or more actions;
determining at a predetermined time interval, a number of earned points by the user based on the at least one completed action and the corresponding associated point value of the at least one completed action;
storing, the number of earned points by the user in a user profile for the user;
determining, at a predetermined time interval whether a total number of earned points by the user is equal to or greater than a threshold number of points for a first feature and a threshold number of points for a second feature;
upon determining that the total number of earned points is equal to or greater than the threshold number of points for the first feature and the threshold number of points for a second feature, displaying, the one or more features of the point-based subscription plan as one or more selectable features to the user,
These steps, under its broadest reasonable interpretation, describe providing one or more features of a product to a user based on the completion of point based actions, which amounts to a “commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations.” These limitations therefore fall within the "certain methods of organizing human activity" subject matter grouping of abstract ideas.
As such, the Examiner concludes that claim 1 recites an abstract idea (Step 2A - Prong One: YES).
Independent claim(s) 9 and 17 recite/describe nearly identical steps (and therefore also recite limitations that fall within this subject matter grouping of abstract ideas), and this/these claim(s) is/are therefore determined to recite an abstract idea under the same analysis.
Step 2A - Prong Two:
This judicial exception is not integrated into a practical application. The claim(s) recite the additional elements/limitations of:
an action module (Claim 1, 9 and 17)
email account (Claim 1, 9 and 17)
at least one processor of a server (Claim 1, 9 and 17)
a graphical user interface (Claim 1, 9 and 17)
user device (Claim 1, 9 and 17)
external data server (Claim 1, 9 and 17)
web browser history (Claim 1, 9 and 17)
at the server, using the at least one processor, (Claim 9)
system (Claim 9)
storage device (Claim 9)
non-transitory computer readable medium (Claim 17)
The requirement to execute the claimed steps/functions listed above is equivalent to adding the words ''apply it'' on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. This/these limitation(s) do/does not impose any meaningful limits on producing the abstract idea nor do they represent an improvement to the technology, and therefore do/does not integrate the abstract idea into a practical application (see MPEP 2106.05(f)).
Additionally, “Step 2A - Prong 2”, the recited additional element(s) of "the one or more actions comprising linking an account to a product or service, wherein linking the account automatically causes the user to receive emails related to the product or service" and/or "the one or more selectable features including displaying a compose message window having a size smaller than a message inbox window and positioned in front of the message inbox window, wherein the displaying of the one or more selectable features enables the user to select individual features based on user preferences;" and “based on receiving a selection for a first selectable feature and a second selectable feature, by the user through the graphical user interface, automatically enabling the first feature and the second feature on the user device by modifying the GUI to provide the first feature and the second feature, such that subsequent use of the user device continues to enable the first feature and the second feature for a predetermined amount of time, without requiring a re-determination of access by the user device to the first feature and the second feature” serve merely to generally link the use of the judicial exception to a particular technological environment or field of use. These limitations therefore do not integrate the abstract idea into a practical application (see MPEP 2106.05(h)).
The Examiner has therefore determined that the additional elements, or combination of additional elements, do not integrate the abstract idea into a practical application. Accordingly, the claim(s) is/are directed to an abstract idea (Step 2A -Prong Two: NO).
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above in "Step 2A - Prong 2", the requirement to execute the claimed steps/functions listed above is equivalent to adding the words "apply it" on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations therefore do not qualify as "significantly more" (see MPEP 2106.05 (f)).
As discussed above in, “Step 2A - Prong 2”, the recited additional element(s) of "the one or more actions comprising linking an account to a product or service, wherein linking the account automatically causes the user to receive related to the product or service" and/or " the one or more selectable features including displaying a compose message window having a size smaller than a message inbox window and positioned in front of the message inbox window, wherein the displaying of the one or more selectable features enables the user to select individual features based on user preferences;” and/or " based on receiving a selection for a first selectable feature and a second selectable feature, by the user through the graphical user interface, automatically enabling the first feature and the second feature on the user device by modifying the GUI to provide the first feature and the second feature, such that subsequent use of the user device continues to enable the first feature and the second feature for a predetermined amount of time, without requiring a re-determination of access by the user device to the first feature and the second feature." serve merely to generally link the use of the judicial exception to a particular technological environment or field of use. These limitations therefore do not integrate the abstract idea into a practical application (see MPEP 2106.05(h)).
The Examiner has therefore determined that no additional element, or combination of additional claims elements is/are sufficient to ensure the claim(s) amount to significantly more than the abstract idea identified above (Step 2B: NO).
Regarding Dependent Claims (2A/ 2B):
Dependent claims 2, 3, 6, , 10, 11, 14, 18, and 19 fail to include any additional elements and are further part of the abstract idea as identified by the Examiner.
Dependent claims 4, 5, 8, 12, 13, 16 and 20 include additional limitations that are a part of the abstract idea except for:
user device
using the at least one processor
graphical user interface of the user device,
system of a third party
The additional elements of the dependent claims are equivalent to adding the words ''apply it'' on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. Even in combination, these additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. The claims are ineligible.
Dependent claims 7 and 15 include the following additional limitations that serve merely to generally link the use of the judicial exception to a particular technological environment or field of use. These limitations therefore do not integrate the abstract idea into a practical application:
wherein the one or more features of the point based subscription plan comprise at least one of message-to- message navigation within a message inbox, display of a compose message in a separate window from a message inbox window containing the message inbox, the separate window being smaller than the message inbox window and in front of the message inbox window, domain blocking, providing reminders to send a reply to a message in the message inbox, or providing the product without advertisements.
Prior Art
Examiner conducted a thorough search of the body of available prior art (see attached documents regards PTO-892 Notice of Reference Cited and PE2E Search History). Notably, Examiner discovered several patent literature documents that taught aspects of the invention, but no single disclosure taught “every element required by the claims under its broadest reasonable interpretation” [MPEP § 2131] to make a 35 USC § 102 rejection. Further, Examiner considered the individual elements of the recited claims taught across the prior art cited below, but did not find it obvious to combine such disclosures [MPEP § 2142] to make a 35 USC § 103 rejection. In particular, Chai et al., U.S. Publication No. US2016/0078465 discloses, a graphical user interface including one or more cards associated with a reward may include one or more cards associated with a reward and each card may include a point value required for a reward, a total number of available points, and a number of additional points required to receive the reward, however it is silent with respect to enabling features “without requiring a re-determination of access by the user device to the first feature and the second.”
Response to Arguments
Applicant's arguments with respect to the rejection under 35 USC 101 have been fully considered but they are not persuasive.
Applicant Argues: The amended claims do not recite advertising, marketing, or sales activities. Rather, the claims recite a specific technical method for dynamically configuring a graphical user interface based on user-selected features. The claims recite specific technical operations…
Examiner respectfully disagrees. The independent claims clearly states “adjusting, by the action module, the displayed associated point value of the GUI based on the user completing a certain number of the one or more actions within the period of time, the adjusting based on providing an incentive for the user to continue completing the one or more actions;…” This is supported by the specification at paragraph [0001] which states that disclosure relates to providing one or more features of a product to a user based on the completion of point based actions. The claims are in fact directed to encouraging a user behavior by rewarding the behavior with a point value. The claims further state that the points can reach a threshold where they can be used to select features of interest to the user. Examiner maintains that the incentivizing of user behavior, which has been further defined as providing one or more features of a product to a user based on the completion of point based actions represents a marketing or sales activity or behavior which is a Certain Method of Organizing Human Activity.
Applicant highlights features such as “parsing data received from a third-party external data server to determine web browser history; parsing the web browser history to determine an indication that the user has completed actions; dynamically adjusting displayed point values on the GUI; displaying a compose message window having a specific size smaller than a message inbox window and positioned in front of the message inbox window; and automatically enabling features on the user device by modifying the GUI…” These features, but for the recitation of generic computing elements represent a part of the abstract idea. The technical features have been evaluated in Step 2A- Prong II to determine if there are additional elements that transform the claims into eligible subject matter, they do not. The rejection is maintained.
Applicant argues: Mental Process
Examiner agrees that the claims do not represent a mental process.
Applicant argues: The claims are not directed to an abstract idea because the claims as a whole integrate the abstract idea into a practical application under Prong Two of Revised Step 2A. (MPEP § 2106.04(d).)
Applicant’s alleged improvement is not directed to an improvement to computer functionality/capabilities, an improvement to a computer-related technology or technological environment, and do not amount to a technology-based solution to a technology-based problem. A showing that a claim is directed to any improvement does not automatically mean a claim is patent eligible (e.g., an improved business function or an improved idea itself is not patent eligible). In this case, displaying a personalized options for features of a point based subscription service is an abstract idea, and an “improved” way of accomplishing this is, if anything, an improvement to the idea itself.
Applicant argues: The above-recited elements of independent claim 1 describe a method that provides a technical solution to a specific technical problem in the field of graphical user interface technology. The technical problem is identified in the specification: "Providers typically bundle some or all premium features together as a means of adding value for a subscription plan. Pricing of individual premium features is not an easy way to scale premium business. Due to the lack of options for choosing individual premium features, very few users opt to buy subscription plans. That is, because of the relatively high cost for the subscription plans, and because users do not necessarily need or want some of the premium features included in a bundle of a given subscription plan, users do not opt to buy subscription plans that include premium features."
Examiner respectfully disagrees. The lack of options for choosing premium features is not a technical problem, nor one that represents an improvement to the field of graphical user interface technology. At best, the Examiner contends that this allegation at best amounts to an improvement to the abstract idea itself. The Applicant essentially alleges that better subscription plans (i.e., "dynamically configure GUI functionality") is their technical improvement. However, the GUI isn’t actually being improved, the information being displayed represents better data being display (i.e., improvement to the abstract idea itself). The GUI is merely gathering the user provided data (selected features) and displaying it. The claimed subject matter fails to recite any technically improved way in which this data is being displayed. The claimed invention simply allows a user to decide which features they wish to use and allows the user to earn and redeem points to use those features. Furthermore, the selection of the subscription service they want to use does not need to be communicated using technology. This method is not rooted in technology, and can be done without the use of any technology, as evidenced above in the analysis.
Applicant argues: The specification further describes specific technical improvements to GUI functionality. In particular, the specification explains that the features include "display of a compose message in a separate window from a message inbox window containing the message inbox, the separate window being smaller than the message in box window and in front of the message in box window."
Examiner does not agree that these technical features represent an improvement. They are merely describing the design choice of a generically cited graphical user interface. Additionally, Applicant has not provided evidence of how the compose message feature improves the interface or the process of a user making a selection of features of the point based subscription service they wish to use.
Applicant argues: The claims are analogous to Example 42 of the USPTO's Subject Matter Eligibility Examples (Method for Transmission of Notifications When Medical Records Are Updated), where the claim was found to integrate the method of organizing human activity into a practical application because "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."
Examiner respectfully disagrees. The claims of Examiner 42 are not at all like the instant claims. In Example 42 the claims are directed to converting nonstandard updated information into the standardized format. The combination of additional elements is what makes the claim patent eligible. The instant claims are not actually changing the interface, rather they are selecting information to be displayed on the screen. Similar to creating a user profile, the user is instructed to select preferences and only shown the items reflecting their preferences. This is a personalization to the information being displayed because it is more relevant to the user but it is not changing or improving the graphical user interface.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RASHIDA R SHORTER whose telephone number is (571)272-9345. The examiner can normally be reached Monday- Friday from 9:00 a.m.- 5:30 p.m. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jessica Lemieux can be reached at (571) 270-3445. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RASHIDA R SHORTER/Primary Examiner, Art Unit 3626
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