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 .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 12, 2026 has been entered.
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,
based on receiving a selection of the for a first selectable feature and a second selectable feature, automatically enabling the first feature and the second feature such that subsequent use continues to enable the first feature and the second feature for a predetermined amount of time, without requiring a re-determination of access to the first feature and the second feature
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 smaller than a message inbox window and in front of a message inbox window and domain blocking" 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 smaller than a message inbox window and in front of a message inbox window and domain blocking " and/or "and based on receiving a selection of the for a first selectable feature and a second selectable feature, by the user through the graphical user interface, automatically blocking domains and automatically displaying a compose message window when composing a message" 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, Suomela et al., U.S. Publication No. US20100274617 [hereinafter XXXXXX] discloses, rewarding user activity in linked services which includes determining whether the user has completed the one or more tasks based on the synchronized information, and initiates providing one or more rewards to the user within the first service based on the determination, the reward may include, for instance, additional subscribed service time (e.g., completing a task results in increasing the length of a current subscription to a service), additional right to use a service (e.g., completing a task results in increasing the amount of time the user has by right to use a service), or a combination thereof 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: Applicant respectfully points out that none of the claim features previously pending or as currently amended recite any such advertising, marketing or sales activities or behaviors.
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. The rejection is maintained.
Conclusion
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 9am- 530pm.
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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.
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/RASHIDA R SHORTER/Primary Examiner, Art Unit 3626
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