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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 23 February 2026, has been entered.
The following is a Non-Final office action on the merits in response to the communications filed on 23 February 2026. Claims 1, 5-8, 12-15 and 18-20 are currently pending. The rejections under 35 USC § 101 directed to double patenting and non-statutory subject matter are maintained. The rejections are as stated below.
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, 5-8, 12-15 and 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. In particular, claims are directed to a judicial exception (abstract idea) without significantly more. Examiner incorporates the rejection and response to arguments from the previous office action mailed on 02 December 2025. Further:
Claim 1 (exemplary) recites a series of steps for processing an auto-provisioning workflow for transmitting customer credit co-branded card information to a partner without customer initiation.
The claim is directed to a process, which is a statutory category of invention.
The claim is then analyzed to determine whether it is directed to a judicial exception. The claim recites the limitations of establishing communication between a co-branded partner and a co-branded card issuer; transmitting a message from the co-branded partner to the co-branded card issuer, the message including reward identification number associated with a first relationship between a co-branded partner and a customer corresponding to a reward account created with a co-branded card issuer; identifying a co-branded card associated with the customer based on matching the received reward identification number with a prestored reward identification number associated with the customer; and executing, in response to identifying, an auto-provisioning workflow for automatically transmitting co-branded card information data to the co-branded partner; determining, based on identifying, that the co-branded card is a newly created card account associated with a second relationship between the co-branded card issuer and the customer; executing the auto-provisioning workflow, in response to determining, wherein the auto- provisioning workflow further includes the following; fetching the co-branded card information data associated with the newly created card account; and automatically adding by execution of the auto-provisioning workflow the co-branded card information data as a payment mechanism on the co-branded partner, and wherein the auto-provisioning workflow orchestrates transmission and processing of the co-branded card information data across one or more distributed computing systems without modification of executable code.
The claimed system simply describes series of steps for processing an auto-provisioning workflow for transmitting customer credit co-branded card information to a partner without customer initiation. These limitations, as drafted, are processes that, under its broadest reasonable interpretation, covers performances and concepts relating to fundamental economic principles or practices that enhance customer experience with credit card transactions (see Priceplay.com, Inc. v. AOL Advert., Inc., 83 F. Supp. 3d 577, 580 (D. Del. 2015), aff'd, 627 F. App’x 925 (Fed. Cir. 2016) (Rule 36)), and, therefore, fall within the certain methods of organizing human activity category of the USPTO’s Guidance. See 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14. These limitations are directed to an abstract idea because they are managing transactions and/or activities (provisioning a co-branded card) that fall within the enumerated group of “certain methods of organizing human activity” in the 2019 PEG.
Next, the claim is analyzed to determine if it is integrated into a practical application. The recited judicial exception may be integrated into a practical application by identifying whether there are any additional elements recited in the claim beyond the judicial exception and evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. The claim recites additional limitation of a processor and a memory (see claim 8), partner computing device, an issuer computing device, a communication network, an application programming interface, a database and configuration data that is independent of platform and programming language to perform the steps. The processor in the steps is recited at a high level of generality, i.e., as a generic processor performing a generic computer function of processing data. This generic processor limitations are no more than mere instructions to apply the exception using generic computer component. Merely adding generic computer components to perform abstract ideas does not integrate those ideas into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 55 (identifying “merely includ[ing] instructions to implement an abstract idea on a computer” as an example of when an abstract idea has not been integrated into a practical application). Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to the abstract idea.
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer (using the processor as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the computer at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at or provide an inventive concept.
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea. Therefore, the claim is not patent eligible.
The analysis above applies to the statutory category of invention of claims 1, 8 and 15. Furthermore, the dependent claims 5-7, 12-14 and 18-20 do not resolve the issues raised in the independent claims.
The dependent claims do not add limitations that meaningfully limit the abstract idea. Dependent claims 5-7, 12-14 and 18-20, recite additional limitations and steps. However, as mentioned above with respect to the independent claims, the claimed limitations are no more than mere instructions to apply the exception using generic computer component. Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to the abstract idea.
These claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer. The claim merely amounts to the application or instructions to apply the abstract idea on a device, and is considered to amount to nothing more than requiring a generic device to merely carry out the abstract idea itself.
The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as integrating the abstract idea into a practical application or amounts to significantly more than the abstract idea itself.
Accordingly, claims 1, 5-8, 12-15 and 18-20 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Response to Arguments
Applicant's arguments with respect to 35 USC § 101 directed to non-statutory subject matter been fully considered but they are not persuasive.
Examiner incorporates herein the response to arguments from the previous office actions.
Examiner respectfully disagrees. Claims 1, 5-8, 12-15 and 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Applicant amended the independent claims to include the above-mentioned limitations. However, the concept is directed to processing an auto-provisioning workflow for transmitting customer credit co-branded card information to a partner which does not make it less abstract. The newly added additional element, even when limited to a particular context does not change its character as information or data and therefore, remains within the realm of the abstract idea.
Applicant argues in substance that the features include “additional elements” that integrate the alleged abstract concept into a practical application.
Examiner respectfully disagrees, in the second prong of step 2A of the 2019 Revised Guidance, we determine whether the claims recite a practical application of the recited judicial exception. For example, (1) any additional elements of the claims reflect an improvement in the functioning of a computer or to another technological field, (ii) an application of the judicial exception with, or by use of, a particular machine, (iii) a transformation or reduction of a particular article to a different state or thing (iv) or a use of the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See 2019 Revised Guidance, 84 Fed. Reg. at 55; See also MPEP § 2106.05(a){(c), (e}(h).
Under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Limitations that are not indicative of integration into a practical application are those that are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea.-see MPEP 2106.05(f). The instant claims do not attempt to solve an unconventional technological solution. Using the processor as a tool to implement the abstract idea and the way the information is processed and displayed does not make it less abstract. The claimed use of computer elements recited at a high level of generality is an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
A claim may be found to be eligible if it integrates a judicial exception into a practical application as cited by Applicant. However, examiner notes that "claiming the improved efficiency inherent with applying the abstract idea on a computer" does not provide an inventive concept (see MPEP §2106.05(f)(2).) Claiming improved data processing efficiency inherent with applying any improvement to the judicial exception itself on a computer does not provide an inventive concept. The claims do not integrate the judicial exception into a practical application.
Examiner notes that the focus of the claimed invention in the present application is not on an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.
The courts found that “… if a patent’s recitation of a computer amounts to a mere instruction to ‘implement[t]’ an abstract idea ‘on . . . a computer,’ that addition cannot impart patent eligibility.” Alice Corp., 134 S.Ct. at 2358. The claimed invention does not indicate that specialized computer hardware is necessary to implement the claimed systems, similar to the claims at issue in Alice Corp. See Alice Corp., 134 S.Ct. at 2360 (determining that the hardware recited in the claims was “purely functional and generic,” and did not “offer [] a meaningful limitation beyond generally linking the use of the [method] to a particular technological environment, that is, implementation via computers”).
Applicant further argues that "the newly amended feature provides an inventive concept (Step 2B)”.
Examiner respectfully disagrees, the claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem, the auto-provisioning workflow, automation of a manual process (manually adding a card to a wallet) and the configuration of data that is independent of platform and programming language are not directed to any specific improvement in technology (no technical solution to a technical problem). Also, limiting the use of an abstract idea “‘to a particular technological environment’ does not confer patent eligibility as this cannot be considered an improvement to computer or technology and so cannot be “significantly more.”
Examiner notes that the processor limitations and the claim as a whole do not add significantly more than the abstract idea itself, because the claim does not amount to an improvement to the functioning of a computer itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment. A generic recitation of a processor performing its generic computer functions (merely implements the abstract idea using generic computer elements for processing data).
In making the determination of if the claimed idea is significantly more, the Court gave examples, which included an improvement to another technology or technical field; improvement to the function of the computer itself; or some other meaningful limitation beyond generally linking the use of an abstract idea to a particular technological environment. Such as in Diamond v. Diehr, the claims were found statutory in which the Arrhenius equation is used to improve a process of controlling the operation of a mold in curing rubber parts.
As mentioned previously, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are generic computer components claimed to perform their basic functions. The processor is a general-purpose processor that performs general-purpose functions. The recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer. Taking the additional elements individually and in combination, each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The claim does not amount to significantly more than the abstract idea itself. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply a generic recitation of a computer processor performing its generic computer functions. Accordingly, claims are ineligible.
Examiner submits that under the current 35 USC 101 examining practice, the existence of such novel features would still not cure the deficiencies with respect to the abstract idea. See for example: Ultramercial, Inc. v. Hulu, LLC, 112 USPQ2d 1750, U.S. Court of Appeals Federal Circuit, No. 2010-1544, Decided November 14, 2014, 2014 BL 320546, 772 F.3d 709, Page 1754 last two ¶ : “We do not agree with Ultramercial that the addition of merely novel or non-routine components to the claimed idea necessarily turns an abstraction into something concrete”. Indeed, in this in instant case, the limitations simply narrow or limit the abstract idea without providing anything significantly more than the abstract idea itself.
Lastly, dependent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer. The claim merely amounts to the application or instructions to apply the abstract idea on a processor, and is considered to amount to nothing more than requiring a generic processor to merely carry out the abstract idea itself.
For these reasons the rejection under 35 USC § 101 directed to non-statutory subject matter set forth in this office action is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hani Kazimi whose telephone number is (571) 272-6745. The examiner can normally be reached Monday-Friday from 8:30 AM to 5:00 PM.
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Respectfully Submitted
/HANI M KAZIMI/Primary Examiner, Art Unit 3691