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 .
Response to Amendment
The Amendment filed on 07 November 2025 has been entered. The following is in reply to the Amendments and Arguments.
Claims amended: 1, 5, 11, 15
Claims cancelled: 2, 10, 20
Claims added: none
Claims currently pending: 1, 3-9, 11-19
Response to Arguments
Applicant, in the “REMARKS” and “Interview Summary” sections, presents opening remarks regarding the disposition of the claims, the amendments to the claims, and the previously conducted interview. As no specific argument is raised in this/these section(s) with respect to the instant application, no rebuttal is required.
Applicant, in the “Double Patenting” section, refers to the newly filed terminal disclaimer and requests withdrawal of the grounds of rejection. Examiner has withdrawn the previously presented grounds of rejection due to the acceptance of the terminal disclaimer.
Applicant, in the “Claim Rejections – 35 U.S.C. § 112” section, notes the amendments made to the claims and requests the rejections under 35 U.S.C. § 112 be withdrawn. Examiner agrees that the amendments to the claims overcome the previously presented grounds of rejection in question and has withdrawn the grounds of rejection.
Applicant, in the “Claim Rejections – 35 U.S.C. § 101” section, refers to Berkheimer and asserts that “dynamically populating a pixel script across controller servers requires high scalability and good system performance”. Applicant’s assertion is absent notation of which structures in the claimed invention provide the “high scalability” and “good system performance”. It appears Applicant is relying on the claim language referring to “controller servers” to support this argument. However, the specification, in 0029, simply refers to “controller servers” and does not expound on their structure. This leaves the Examiner to conclude that standard servers are employed to perform this step, which represents a generic computer performing well-understood, routine and conventional tasks. Therefore, this argument is unpersuasive and the grounds of rejection under this statute is herein maintained, albeit updated to reflect Applicant’s amendments to the claims.
Applicant, in the “Claim Rejections – 35 U.S.C. § 103” section, refers to newly amended claim language, especially the “wherein the pixel script is provided dynamically to controller servers” and argues that “Pottjegort does not teach dynamically populating controller servers”. Examiner disagrees to this notion and had provided updated grounds of rejection herein with new citations to Pottjegort. Therefore, Applicant’s arguments are moot in view of the new grounds of rejection presented herein which were necessitated by Applicant’s amendments to the claims.
Applicant does not present any arguments in support of the patentability of the dependent claims except to assert that the claims are patentable based on their dependence from the independent claim(s) argued above. Therefore, said dependent claims stand rejected under the grounds of rejection presented herein and no detailed rebuttal is required.
Double Patenting / Terminal Disclaimer
The Terminal Disclaimer to U.S. Patent No. 11,741,504 B2 filed on 07 November 2025 has overcome the previously presented grounds of rejection under double patenting with respect to the ‘504 patent.
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, 11-19 are rejected under 35 U.S.C. § 101 because 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.
Step 1: Claims 1, 3-9 are directed towards a method. Claims 11-19 are directed towards a system. Thus, these claims, on their face, are directed to one of the statutory categories of 35 U.S.C. § 101.
Step 2A - Prong One: As per MPEP 2106.04, Prong One asks does the claim recite an abstract idea, law of nature, or natural phenomenon. In Prong One examiners evaluate whether the claim(s) recites a judicial exception; that is, whether the claim(s) set forth or describe a law of nature, natural phenomenon, or abstract idea.
Claim 1 is presented here as a representative claim for specific analysis (The underlined claim terms here are interpreted as additional elements beyond the abstract idea.):
A computer-implemented method, comprising:
receiving, in an in-store media platform, an updated feature of an account associated with a consumer, the updated feature resulting from an event trigger invoked in a pixel script, the pixel script embedded in a digital content displayed on a mobile device or desktop device for the consumer;
allowing the consumer to receive a value-added certificate based on the updated feature,
wherein the pixel script is provided dynamically to controller servers
and pixel script comprises a targeted banner, a video advertisement, or an audio advertisement in the digital content displayed on the mobile or desktop device for the consumer;
identifying a location of the consumer within a retail store associated with the in-store media platform;
instructing, a client device within the retail store, to print the value-added certificate, based on the updated feature of the account associate with the consumer;
and requesting, to an online media server, to retarget the digital content to a mobile or desktop device for the consumer upon redemption of the value-added certificate for the consumer.
The claims here are based on the recitation of an abstract idea (i.e. recitation other than the additional elements delineated here with underlining and further addressed per Step 2A - Prong Two and Step 2B). The claims recite the abstract idea of presenting a user with digital and printed offers based on user information that includes the user’s location which falls within certain methods of organizing human activity.
The phrase "certain methods of organizing human activity" applies to fundamental economic principles or practices including hedging insurance, mitigating risk; commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors business relations; managing personal behavior or relationships or interactions between people including social activities teaching, and following rules or instructions. Refer to MPEP 2106.04(a)(2) II. A-C.
The Remaining Claims: The additional independent claim(s) fail to recite any additional elements beyond those identified above except “one or more processors”, and “a memory storing instructions” (Claim 11). The dependent claims recite fail to recite any additional elements beyond those already identified.
The dependent claims further reiterate the same abstract idea with further embellishments: identifying a user location and access for loyalty account information (claims 3 and 13); print a coupon in-store (claims 4 and 14); update user information with coupon redemption (claims 5 and 15); correlate device id with loyalty program id (claims 6 and 16); update retail account upon coupon redemption (claims 7 and 17); send ad for another product upon coupon redemption (claims 8 and 18); provide content to user after linking mobile id with loyalty id (claims 9 and 19); print means displaying QR code on user device (claim 11). Therefore, the identified claims fall within the subject matter groupings of abstract ideas enumerated in MPEP 2106.04(a)(2).
Step 2A - Prong Two: As per MPEP 2106.04.II.A.2, Prong Two determines if the claim(s) recite additional elements that integrate the judicial exception into a practical application.
The claims offer the additional elements of: “computer-implemented”, “in-store media platform”, “a mobile device”, “desktop device”, ”controller servers”, “a retail store”, “a client device”, “an online media server”, “one or more processor”, “a memory storing instructions”. To be patent-eligible, the elements additional to the identified abstract idea must amount to more than "an instruction to apply the abstract idea . . . using some unspecified, generic computer" to render the claim patent-eligible. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 226 (2014). Here, Applicant's Specification broadly describes support for well-known generic computer elements. Paragraph 0044 discloses that that the “computer system 700 may be implemented using hardware or a combination of software and hardware”. Paragraph 0054 details that there is broad “interchangeability of hardware and software”. It would have been readily apparent to one having ordinary skill in the art (PHOSITA) at the time the invention was filed that the additional elements represent generic computing devices. Therefore, the claims amount to no more than a mere method, system, and/or computer program product to implement the abstract idea on a generic computer system. See MPEP § 2106.05(f).
The claims offer the additional elements of: receiving…an updated feature of an account associated with a consumer with represents extra-solution activity. The gathering of data represents insignificant extra-solution activity that comprises mere data gathering. The gathering of data represents insignificant extra-solution activity that comprises mere data gathering. The additional element(s) represent insignificant extra-solution activity incidental to the primary process or product that are merely a nominal or tangential addition to the claim as noted in MPEP 2106.05(g).
The additional element of a “a retail store” represents an effort to link the use of the invention to a particular environment (MPEP 2106.05(h)). The ordered combination of these additional elements amounts to generally linking the use of the abstract idea to a particular technological environment or field of use (MPEP 2106.05(h)). The ordered combination offers nothing more than employing a generic configuration of computer devices and computer functions. The claims do not amount to a practical application, similar to how limiting the abstract idea in Flook to petrochemical and oil-refining industries was insufficient.
Step 2B: As per MPEP 2106.05, the additional elements are analyzed, both individually and in combination, to determine whether an "inventive concept" is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim, as a whole, amounts to significantly more than the judicial exception itself.
As stated above, the claims contain the additional elements:
The claims offer the additional elements of: receiving…an updated feature of an account associated with a consumer with represents extra-solution activity. The gathering of data represents insignificant extra-solution activity that comprises mere data gathering. The gathering of data represents insignificant extra-solution activity that comprises mere data gathering. The additional element(s) represent insignificant extra-solution activity incidental to the primary process or product that are merely a nominal or tangential addition to the claim as noted in MPEP 2106.05(g). This finding is similar to that found in Symantec: receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information)
References of Record but not Applied in the Current Grounds of Rejection
The prior art listed below is made of record as considered pertinent to applicant's disclosure and is not relied upon in the grounds of rejection presented in this Office action. Those starred with '*' were added to this list in this Office action. Those without "*" were added in a previous Office action and are not repeated on a PTO-892 Notice of References Cited form, but are maintained herein for informational purposes only.
* Belvin et al. (Pub. #: 2012/0016733 A1) discloses an advertisement system that utilizes a script in conjunction with content/advertisements to track users and correlates the user’s visits to retail locations with the advertisements.
Ikumi et al. (Pub. #: JP 2017-097837-A) discloses a system for printing advertisements at a POS dependent upon information regarding the consumer.
Arzubov et al., in “Analyzing ways of building user profile based on web surf history”, discusses a variety of means of tracking user web activity.
Examiner's Note on the Format of the Prior Art Rejections
The prior art rejections below contain underlined markings of the limitations (e.g. sample limitation). The underlined portions of a claim are addressed at the end of the grounds of rejection for that claim. Examiner notes that the underlining of the claim language is not a statement that the primary reference does not teach that language, but simply that said claim language is addressed at the end of the grounds of rejection for that claim.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 3-9, 11-19 is/are rejected under 35 U.S.C. § 103 as being unpatentable over
VanDeVelde (Pub. #: US 2016/0225029 A1) in view of
Pottjegort et al. (Pub. #: US 9,865,005 B1).
Claim(s) 1, 11:
These claims are analogous with different representative embodiments: claim 1 is a method embodiment and claim 11 is a system embodiment. VanDeVelde teaches a computer system with computer-readable media in at least 0238-0249 for performing the steps:
receiving, in an in-store media platform, an updated feature of an account associated with a consumer,
(VanDeVelde discloses updating a user profile database with "one or more UPC's scanned while the identified consumer is present at one of the POS terminals" in at least 0039, 0107-0110. VanDeVelde discloses a "retail server" that "manages many or all of the retail services" in at least 0080-0082.)
the updated feature resulting from an event trigger invoked in a pixel script, the pixel script embedded in a digital content displayed on a mobile device or desktop device for the consumer;
allowing the consumer to receive a value-added certificate based on the updated feature,
(VanDeVelde discloses presenting a consumer various advertisements based on information in a user profile in at least 0103-0107. VanDeVelde discloses that advertisements may comprise offers/coupons in at least 0005-0008.)
wherein the pixel script is provided dynamically to controller servers
and pixel script comprises a targeted banner, a video advertisement, or an audio advertisement in the digital content displayed on the mobile or desktop device for the consumer;
identifying a location of the consumer within a retail store associated with the in-store media platform;
(VanDeVelde discloses determining a user's location both near/in a retail location and to a location within a retail location in at least and 0082, 0126, and 0132.)
instructing, to a client device closest to the location of the consumer, to print the value- added certificate, based on the updated feature of the account associate with the consumer;
(VanDeVelde discloses printing an advertisement at a POS nearby the user in at least 0034-0036, 0044, 0071, and 0185.)
and requesting, to an online media server, to retarget the digital content to a mobile or desktop device for the consumer upon redemption of the value-added certificate for the consumer.
(VanDeVelde discloses targeting advertisements to users based on past advertisements viewed and new advertisements immediately after a purchase based on products purchased in at least 0126 and 0132. VanDeVelde discloses presenting advertisements to users based upon "one or more UPCs scanned while a consumer is present at one POS terminal of numerous POS terminals in physical stores" and presenting advertisements based thereon in at least 0036, 0075, and 0125 which corresponds to a redemption. VanDeVelde discloses a "return visit" wherein new advertisements are provided to a user based upon promotions received in a prior visit in at least 0132.)
As for, "the updated feature resulting from an event trigger invoked in a pixel script, the pixel script embedded in a digital content displayed on a mobile device or desktop device for the consumer;", “wherein the pixel script is provided dynamically to controller servers” and “and pixel script comprises a targeted banner, a video advertisement, or an audio advertisement in the digital content displayed on the mobile or desktop device for the consumer;”: VanDeVelde discloses updating a user profile database with "one or more UPC's scanned while the identified consumer is present at one of the POS terminals" in at least 0039, 0107-0110. VanDeVelde does not appear to specify utilizing a "pixel script" embedded in digital media to provide the updated feature. However, Pottjegort teaches a technique of a using a pixel script for tracking of advertisements being viewed in digital content in at least Col. 29, Line 47 to Col. 30, Line 2 and Col. 39, Ll. 37-45. Pottjegort discloses, specifically, that the “metadata” utilized in the pixel script request is provided to an “ad-server or a content delivery network, or it may request a video advertisement from a third party video ad network/broker” in at least Col. 29, Ll. 10-46.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of presenting offers to a user within a store based upon updated user profile information taught by VanDeVelde with the technique of using a pixel script in digital content to retrieve user information as taught by Pottjegort. Motivation to combine VanDeVelde with Pottjegort comes from both references pertaining to gathering data for use in advertisement systems and in order to determine that an advertisement sent to a user is viewed prior to acting on the presentation of the advertisement (Pottjegort: Col. 3, Ll. 24-37).
Claim(s) 3, 13:
further comprising identifying a presence of the consumer in a store location,
(VanDeVelde discloses determining a user's location both near/in a retail location and to a location within a retail location in at least and 0082 and 0126.)
and receiving a request for accessing a consumer's frequent shopper loyalty account from a consumer device at a point of sale in the retail store.
(VanDeVelde discloses a consumer providing shopping cart data to a POS system which includes "consumer loyalty card information" in at least 0131, 0143, 0152, and 0162.)
Claim(s) 4, 14:
wherein allowing a consumer to receive a value-added certificate requesting to print a personalized coupon for the consumer comprises instructing a printer communicatively coupled to the in-store media platform, to print a coupon for an account associated with the consumer.
(VanDeVelde discloses printing an advertisement at a POS nearby the user in at least 0034-0036, 0044, 0071, and 0185.)
Claim(s) 5, 15:
further comprising updating an account associated with the consumer when the consumer redeems the value-added certificate, digital promotion, or a coupon associated with the consumer packaged good.
(VanDeVelde discloses that the advertisements may be provided by "General Mills" and/or "Kellogg's" for the advertisement of "Corn Flakes" or "Cheerios" which constitute "consumer packaged" goods in at least 0009, and 0072-0074. VanDeVelde discloses that advertisements may comprise offers/coupons in at least 0005-0008. VanDeVelde discloses updating a user profile database with "one or more UPC's scanned while the identified consumer is present at one of the POS terminals" in at least 0039, 0107-0110.)
Claim(s) 6, 16:
wherein receiving an updated feature of an account associated with a consumer comprises correlating an identifier for the mobile or desktop device for the consumer with a frequent shopper identification for the retail store.
(VanDeVelde discloses a consumer providing shopping cart data to a POS system which includes "consumer loyalty card information" in at least 0131, 0143, 0152, and 0162. Paragraph 0020 of the specification discloses that a "mobile device identifier" may comprise "a mobile cookie ID" (i.e., not explicitly tied to the device's hardware), which is akin to the user identification of the application provided by the user in the above cited paragraphs.)
Claim(s) 7, 17:
further comprising instructing a retail server to update the account associated with the consumer upon redemption of the value-added certificate.
(VanDeVelde discloses updating a user profile database with "one or more UPC's scanned while the identified consumer is present at one of the POS terminals" in at least 0039, 0107-0110. VanDeVelde discloses a "retail server" that "manages many or all of the retail services" in at least 0080-0082.)
Claim(s) 8, 18:
further comprising requesting, to the online media server, to target a new digital content associated with a different product available at the retail store to the mobile or desktop device for the consumer upon redemption of the value- added certificate.
(VanDeVelde discloses targeting advertisements to users based on past advertisements viewed and new advertisements immediately after a purchase based on products purchased in at least 0126 and 0132.)
Claim(s) 9, 19:
requesting the online media server to provide the digital content to the consumer upon correlating a mobile identifier for a consumer mobile device within the retail store with a frequent shopper identifier for a retail chain prior to receiving the updated feature of an account associated with the consumer.
(VanDeVelde discloses a consumer providing shopping cart data to a POS system which includes "consumer loyalty card information" in at least 0131, 0143, 0152, and 0162. Paragraph 0020 of the specification discloses that a "mobile device identifier" may comprise "a mobile cookie ID" (i.e., not explicitly tied to the device's hardware), which is akin to the user identification of the application provided by the user in the above cited paragraphs.)
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 SCOTT SNIDER whose telephone number is (571)272-9604. The examiner can normally be reached M-W: 9:00-4:30 Mountain (11:00-6:30 Eastern).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Waseem Ashraf can be reached at (571)270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.S/Examiner, Art Unit 3621
/WASEEM ASHRAF/Supervisory Patent Examiner, Art Unit 3621