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 July 11, 2025 cancelled claims 21 and 25-26. Claims 1, 3-4, 13-14, and 17-18 were amended and new claims 27-29 were added. Thus, the currently pending claims addressed below are claims 1, 3-4, 6, 9-14, 16-18, 20, 22-24, and 27-29.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows: As per MPEP 211.05(I)(B), a claim in a subsequently filed application that relies on a combination of prior applications may not be entitled to the benefit of an earlier filing date under 35 U.S.C. 120 since 35 U.S.C. 120 requires that the earlier filed application contain a disclosure which complies with 35 U.S.C. 112(a) except for the best mode requirement for each claim in the subsequently filed application. Studiengesellschaft Kohle m.b.H. v. Shell Oil Co., 112 F.3d 1561, 1564, 42 USPQ2d 1674, 1677 (Fed. Cir. 1997). In the instant case, at least provisional application 62/332,266 does not have support for at least “training data set”, “machine learning model to determine patterns from consumer characteristics that correspond to consumer shopping habits”, “user shopping profile identifies a preferred merchant of the user and a preferred product of the user”, and/or “a communication associated with a preferred product…associated with the preferred merchant”. Thus, the earliest prior date for which the current application can be granted is the filing date of Application 15/498,828 which is April 27, 2017.
Should the applicant desire an earlier priority date than April 27, 2017, the applicant is required to identify which one single provisional application of provisional applications 62/332,226; 62/338,749; 62/338,752; 62/341,677; 62/436,899; or 62/436,883 has support for each and every limitation of the claims by mapping each limitation to a specific paragraph is said provisional application. The mapping provided in the Applicant’s Arguments filed on July 11, 2025 has been reviewed and the examiner has determined that the cited sections in provisional application 62/338,752 do not support at least “generating, by the computing system, and using a trained machine learning model, a shopping profile of the user by: receiving, from at least one financial institution, financial information indicating transactions between the user and a plurality of merchants; identifying user characteristics of the user, using the trained machine learning model, based at least in part on the financial information; and generating, using the trained machine learning model, the shopping profile based on the user characteristics, wherein the shopping profile identifies a preferred merchant of the user and a preferred product of the user” as required by claims 1, 13 and 17. While application 62/338,752, supports building a shopping profile using a machine learning model every instance of doing so appears to require the user to give permission (see at least paragraphs 144 and 150). The claim as currently written does not require obtaining such a permission, and the disclosure of the instant application allows for the generation of the shopping profile by the machine learning model to be perform without obtaining such a permission in at least the original claims. As such, the breadth of the claim encompasses subject matter that was not disclosed in application 62/338,752. Additionally, the examiner is unable to find support, in application 62/338,752, for the machine learning model generating the shopping profile to be able to identify the user characteristics “based at least in part on the financial information” or generating the shopping profile “based at least in part on the financial information”. It appears from the disclosure in application 62/338,752 in at least paragraphs 139-151, that the disclosure only supports the shopping profile generated by the machine learning model based only on the financial transaction data. It also appears from paragraphs 139-151 that the identified user characteristics based on the financial transaction information are limited to preferred offers, preferred merchant and/or predicted life events such as the customer or their children graduating high school or college, children turning 16 years old, an expected birth of a child, an expected marriage, an increase in income, a move to a new location etc. One of ordinary skill in the art would realize that each of these predicted life events is predictable based solely on financial transaction information and the only information provided to the machine learning model when generating a shopping profile in the disclosure of application 62/338,752 is financial transaction information. As such application 62/338,752, does not appear to support a machine learning model identifying user characteristics “based at least in part on the financial information” or generating the shopping profile “based at least in part on the financial information”. Additionally, application 62/338,752 does not appear to support “identifying, using the trained machine learning model, the user characteristics based at least in part on the additional user information; and generating, using the trained machine learning model, the shopping profile of the user based at least in part on the user characteristics indicated by the additional user information” as required by claims 4, 14, and 18. There is no disclosure application 62/338,752, of generating the shopping profile based on additional information such as social media information associated with the user, web browsing habits of the user, retailer data associated with the user, an income level associated with the user, assets owned by the user, or mortgage loan information associated with the user. While application 62/338,752, does support such additional data sources being used to facilitate the execution of one or more cognitive computing and/or predictive modeling algorithms via personalized banking engine to calculate the statistical probability that an overdraft is about to occur, generate financial data profiles in at least paragraphs 50-52, there is no indication that data aggregation module 129 or database 170 in which one or more additional data sources are stored are used or accessed when the machine learning model generates the shopping profile. Instead, the disclosure is clear that the machine learning model generates shopping profiles based on the financial transaction data in at least paragraphs 144 and 150. The examiner has also been unable to find support, in application 62/338,752, for “based on a receive the user-provided location tracking permission provided by, from the user during a registration phase associated with the client application upon at least one of: an installation of the client application on the mobile device, or an initial launch of the client application on the mobile device” as recited in claim 22. According to the disclosure in application 62/338,752, location tracking permissions can be provided during a registration process upon installing an launching the application. However, there is no disclosure in application 62/338,752 for a registration phase when installing the client application. Additionally, application 62/338,752, supports a machine learning model trained to generate a shopping profile for a customer using the financial transaction data in at least paragraphs 144 and 150 (the only mention of train, training, or trained in the disclosure), there is no indication that a plurality of profiles associated with a plurality of users were used to perform the training as recited in claims 21, 25, and 26. Finally, the examiner has been unable to find support in application 62/338,752, for “comparing, by the computing system, the geographic locations of the mobile device indicated by the location data against a plurality of geofences associated with a set of merchants; identifying, by the computing system, the geofence of the plurality of geofences that encompasses a current geographic location of the mobile device indicated by the location data;” as recited in claim 24. Application 62/338,752 has support for each merchant being associated with a geofence, determining that a user has entered the geofence (e.g., crossed a boundary, crossed a geofence associated with boundary, predetermined distance, or in proximity to) of a merchant, and determining that the merchant is a preferred merchant in at least paragraphs 22, 40, 66, 139-140, and 145-147. However, nowhere in application 62/338,752 is it disclosed that the computing system performs a comparison of the geographic locations of the mobile device against a plurality of geofences associated with a set of merchants or identifies a geofence of a plurality of geofences that encompasses a current geographic location. Therefore, the earliest prior date for which the current application can be granted is the filing date of Application 15/498,828 which is April 27, 2017.
Double Patenting
The Terminal Disclaimer filed on February 11, 2025 overcame the Double Patenting rejections. Thus, the rejection was withdrawn in the Office Action dated May 15, 2025.
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, 3-4, 6, 9-14, 16-18, 20, 22-24, and 27-29 are directed to a method, a system, and a computer program product 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, 3-4, 6, 9-14, 16-18, 20, 22-24, and 27-29 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Independent claim(s) 1, 13, and 17 recite(s) the following abstract idea: (Examiner’s Note: the mobile device itself, network, and financial institution have been included as part of the abstract idea because they are outside the scope of the invention and, as such, cannot be considered an “additional element” of the claimed invention)
periodically providing from the mobile device via a network and over a period of time, location data indicating geographic locations of the mobile device;
training, based on historical profiles associated with a plurality of users, an algorithmic model to identify user characteristics that are predictive of user shopping habits;
receiving, from at least one financial institution using login credentials provided by the user, financial information indicating transactions between the user and different merchants;
identifying, using the trained algorithmic model and based at least in part on the financial information one or more of the user characteristics, identified during the training of the algorithmic model, that are exhibited by the user;
generating, using the trained algorithmic model, a shopping profile of the user based on the one or more of the user characteristics, wherein the generated shopping profile identifies a preferred merchant, of the different merchants, of the user, and a preferred product of the user;
receiving, from mobile device, the location data indicating the geographic locations of the mobile device over the period of time; and
determining, based on the location data, that the mobile device has entered a geofence corresponding to the preferred merchant identified in the generated shopping profile; and
selecting, in response to determining that the mobile device has entered the geofence, a communication associated with the preferred product identified in the generated shopping profile from among a set of communications associated with the preferred merchant;
transmitting, in response to determining that the mobile device has entered the geofence, the communication to the mobile device, wherein the communication is displayed via the mobile device.
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, or 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:
a computer comprising one or more processors, memory storing computer-executable instructions, and a machine learning model (e.g., personalized banking engine that applies a machine learning model); and
providing a client application programmed to execute at least in part as a background process on a mobile device (e.g., computer software).
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)):
periodically providing, from the mobile device to the computing system via a network and over a period of time as the client application is executing as the background process, location data indicating geographic locations of the mobile device (transmitting data);
receiving, by the computing system, and from at least one financial institution using login credential provided by the user, financial information indicating transactions between the user and different merchants (receiving data);
receiving, by the computing system, and from a client application executing as a background process on the mobile device, the location data indicating the geographic locations of the mobile device over the period of time (receiving data); and
transmitting, by the computing system, and in response to determining that the mobile device has entered the geofence, the communication to the client application executing on the mobile device, wherein the client application is configured to display the communication via the mobile device (transmitting data and displaying data).
The additional technical elements above are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of processing, communicating (e.g., transmitting and receiving), and displaying) such that it amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and/or one or more 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 a computer, or merely uses a computer 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 a computer comprising one or more processors, memory storing computer-executable instructions, and a machine learning model (e.g., personalized banking engine that applies a machine learning model); and providing a client application programmed to execute at least in part as a background process on a mobile device (e.g. software) to perform the claimed functions amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and/or one or more generic computer components.
“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 a computer, 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 computers and/or one or more generic computer components (as evidenced from the applicant’s specification in at least paragraphs 32, 60-61 and 194-200 which discloses that the computer is a general-purpose computer with generic computer components and paragraphs 64-68 which discloses that the applicant is using a well-known machine learning model and not a new machine learning model invented by the applicant; and at least page 7, lines 23-29 of Langley et al. (“Approaches to Machine Learning”, Journal of the American Society for Information Science, February 16, 1984, pgs. 1-28) which discloses that machine learning models were old and well known by at least 1984); and Fernandez et al. (Location Services. In: Beginning App Development with Parse and Phonegap 2015. Apress, Berkeley, CA. https://doi.org/10.1007/978-1-4842-0235-7_9; pages 195-222 which discloses on at least page 204 and figure 9-4 that client applications programmed to execute as a background process on a mobile device for location services was well-known by at least 2015), and, as such are generic computer components); 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)):
periodically providing, from the mobile device to the computing system via a network and over a period of time as the client application is executing as the background process, location data indicating geographic locations of the mobile device (transmitting data);
receiving, by the computing system, and from at least one financial institution using login credential provided by the user, financial information indicating transactions between the user and different merchants (receiving data);
receiving, by the computing system, and from a client application executing as a background process on the mobile device, the location data indicating the geographic locations of the mobile device over the period of time (receiving data); and
transmitting, by the computing system, and in response to determining that the mobile device has entered the geofence, the communication to the client application executing on the mobile device, wherein the client application is configured to display the communication via the mobile device (transmitting data and displaying data).
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).
The dependent claims 3-4, 6, 9-12, 14, 16, 18, 20, 22-24, and 27-29 appear to merely further limit the abstract idea by adding additional steps regarding receiving login credential which is considered part of the abstract idea (Claim 3); adding an additional step of receiving additional user information; identifying, using the trained algorithmic model, the one or more of the user characteristics based in part on the additional user information; and generating, using the trained algorithmic model, the shopping profile based at least in part on the one or more of the user characteristic indicated by the additional user information which are all considered part of the abstract idea (Claims 4, 14, and 18); adding an additional step of obtaining user provided permissions which is considered part of the abstract idea, and an additional element of the client application on the mobile device executing at least in part as a background process which has already been addressed above (Claim 6); further limiting the shopping profile and selection of the communication which are considered part of the abstract idea (Claims 9-10, 16, and 20); further limiting the communication which is considered part of the abstract idea (Claim 11); and adding the additional steps of determining, based on at least one of the shopping profile or the financial information, that at least a predetermined amount of time has passed and further limiting the designated payment type both of which are considered part of the abstract idea (Claim 12); further limiting the client applications to include receiving additional information, transmitting additional information, obtaining user provided permissions which are all considered part of the abstract idea; as well as further limiting the mobile device to include a location acquisition unit which is considered part of the abstract idea because the mobile device and it’s units are outside the scope of the claim and, as such, cannot be considered additional elements of the claimed invention (Claim 22); further limiting the client application and how the geographic locations are received or accessed which is considered part of the abstract idea and further limiting the mobile device to include a location acquisition unit which is considered part of the abstract idea because the mobile device and it’s units are outside the scope of the claim and, as such, cannot be considered additional elements of the claimed invention (Claim 23); further limiting the way a determination that the user has entered the geofence corresponding to the preferred merchant is made which is considered part of the abstract idea (Claim 24); further limiting the generating of the shopping profile and the selecting and transmitting of the communication; and further limiting the location data which are all considered part of the abstract idea (Claims 27-28) and adding an additional element of a personalized banking engine which merely further limits the instructions executed by the general-purpose computer and, as such, is just considered part of the general-purpose computer with generic computer components (Claim 29), 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, 3-4, 6, 9-14, 16-18, 20, 22-24, and 27-29 are not patent eligible.
Possible Allowable Subject Matter
Claims 1, 3-4, 6, 9-14, 16-18, 20, 22-24, and 27-29 would be allowable over the prior art if the applicant were to be able to overcome the 35 USC 101 rejections above.
The following is a statement of reasons for the indication of allowable subject matter: The examiner has found prior art (see Argue et al. - 2014/0156395; Thomas et al. - 2020/0314194; Showers et al. - 2014/0365304; and Anderson et al. – 2009/0132347) which teaches each and every limitation of independent claims 1, 13 and 17. However, the examiner has determined that it would not have been obvious to combine these four different references to arrive at the applicant’s invention without the use of impermissible hindsight by using the applicant’s claims as a roadmap. As such, claims 1, 3-4, 6, 9-14, 16-18, 20, 22-24, and 27-29 would be allowable over the prior art if the applicant were to be able to overcome the 35 USC 101 rejections above.
Response to Arguments
Applicant's arguments filed December 11, 2025 have been fully considered but they are not persuasive.
The applicant’s arguments with regards to the 35 USC 103 rejection is moot as the claim amendment has overcome the 35 USC 103 rejections. Thus, the rejection has been withdrawn.
The applicant’s arguments with regards to the Priority Issue are not convincing. The applicant indicates that title of MPEP 211.05(I)(B) is Claiming the Benefit of Nonprovisional Applications and, as such, is not pertinent to provisional applications. The indication in MPEP 211.05(I)(B) which states “Under 35 U.S.C. 120, a claim in a U.S. application is entitled to the benefit of the filing date of an earlier filed U.S. application if the subject matter of the claim is disclosed in the manner provided by 35 U.S.C. 112(a) except for the best mode requirement, in the earlier filed application. See, e.g., Tronzo v. Biomet, Inc., 156 F.3d 1154, 47 USPQ2d 1829 (Fed. Cir. 1998); In re Scheiber, 587 F.2d 59, 199 USPQ 782 (CCPA 1978). A claim in a subsequently filed application that relies on a combination of prior applications may not be entitled to the benefit of an earlier filing date under 35 U.S.C. 120 since 35 U.S.C. 120 requires that the earlier filed application contain a disclosure which complies with 35 U.S.C. 112(a) except for the best mode requirement for each claim in the subsequently filed application. Studiengesellschaft Kohle m.b.H. v. Shell Oil Co., 112 F.3d 1561, 1564, 42 USPQ2d 1674, 1677 (Fed. Cir. 1997).” Is in reference all applications filed under 35 USC 120 and not just claiming the benefit of a earlier filed non-provisional application. This is further clarified in MPEP 211.05(I)(A) which states “However, for a claim in a later filed nonprovisional application to be entitled to the benefit of the filing date of the provisional application, the written description and drawing(s) (if any) of the provisional application must adequately support and enable the subject matter of the claim in the later filed nonprovisional application. If a claim in the nonprovisional application is not adequately supported by the written description and drawing(s) (if any) of the provisional application (as in New Railhead), that claim in the nonprovisional application is not entitled to the benefit of the filing date of the provisional application.”. Thus, unless the applicant can show support for each and every claim limitation is a single provisional application, the priority date of the instant invention will remain April 27, 2017.
The applicant argues, in regards to the 35 USC 101 rejection are not directed to an abstract idea under Step 2a, Prong 2 because the “additional elements” of the claim as a whole integrate the abstract idea into a practical application. The applicant asserts that the mobile device, the network and the financial institution are “additional elements” of the claimed invention. The examiner disagrees. The applicant’s invention in claims 1-20 are to a computing system with a processor that performs each and every step of the claims. As such, the scope of the applicant’s invention does not include the mobile device, the network and the financial institution because they are not part of the computing system with the processor. Thus, the mobile device, the network, and the financial institution cannot be considered “additional element” of the claimed invention. If the applicant wishes for the mobile device, the network and the financial institution to be part of the scope of the claimed invention then the applicant should amend the claims to recite, assuming support can be found in the applicant’s disclosure, that the invention comprises: the computing device with a processor, a mobile device, a network, and a financial institution. Contrary to the applicant’s assertion to the contrary, the examiner has not discounted or ignored the mobile device, the network and the financial institution as each and every one of these has been included as part of the abstract idea itself because it cannot be considered an “additional element” of the claimed invention. As such, the examiner has thoroughly addressed the mobile device, the network and the financial institution in the proper manner when formulating the 35 USC 101 rejection. Should the applicant amend the claims to require the invention to comprise the computing device with the processor, a mobile device, a network and a financial institution thus making them “additional elements” of the claimed invention, then the examiner address such “additional elements” under Step 2a, Prong 2 and Step 2b. Thus, the rejections have been maintained.
The applicant asserts that the Office has erred in including the mobile device, the network and the financial institution as part of the abstract idea because none of them can be considered an advertising, or sales activity or behavior. The examiner disagrees. As made clear in at least the Electric Power Group decision (see page 9, lines 6-14), merely enumerating the type of information and information sources available with a technological environment does nothing significant to differentiate a process from an abstract idea, whose implicit exclusion from 101 undergirds the information-based category of abstract idea. Thus, receiving from and/or transmitting data to data sources such as a mobile device and a financial institution via a network does recite an abstract idea because the data received is for the purpose of performing an advertising, marketing, or sales activity and the mobile device, financial institution, and network do nothing significant to differentiate a process from an abstract idea because they are outside the scope of the invention itself. Perhaps, it will be easier to understand if the applicant were to consider the fact that, as currently claimed, the applicant’s invention has no control over the mobile device, the financial institution, or the network. Thus, the mobile device, a financial institution, and network are not physical objects but instead an idea of physical objects to and/or from which the applicant would like their invention to receive and/or transmit data. Thus, if the applicant would like to positively claim that their invention comprises: the computing device with a processor, a mobile device, a network, and a financial institution, the object become actual physical objects under the control of the applicant’s invention. Thus, the rejections have been maintained.
.The applicant asserts that the claims recite additional elements in addition to just a computing device and generic computer components such as a “client application” that executes “as a background process” and a “machine learning model”, wherein the application periodically provides location data and the machine learning model is trained “based on historical profiles” to identify “user characteristics that are predictive of user shopping habits”, wherein the machine learning model uses financial information received “from at least one financial institution” (using login credentials provided by a user) to generate a shopping profile of the user, using the location data provided by the client application to determine “that the mobile device has entered a geofence” corresponding to a “preferred merchant indicated in the generated shopping profile” and in response selecting and transmitting a communication; and that all of these claim elements should all be considered “additional elements” under Step 2a, Prong 2 because Step 2a, Prong 2 requires that the claim be considered as a whole because the way in which additional elements use or interact with the exception may integrate a judicial application into a practical application; and as recited in the August 2025 USPTO Memorandum “additional limitations should not be evaluated in a vacuum”. The examiner disagrees. The applicant appears to be misconstruing MPEP 2106.04 and the August 2025 USPTO Memorandum. An “additional element” is defined as those limitations outside of the abstract idea itself. Likewise, an “additional limitation” is defined as a limitation of the claim that is not part of abstract idea itself. While the examiner concurs that the “client application” that executes “as a background process” and a “machine learning model” are “additional elements” of the claim, the argued limitation directed towards periodically provides location data; training a model “based on historical profiles” to identify “user characteristics that are predictive of user shopping habits”, the model using financial information received “from at least one financial institution” (using login credentials provided by a user) to generate a shopping profile of the user, using the location data provided to determine “that the mobile device has entered a geofence” corresponding to a “preferred merchant indicated in the generated shopping profile” and in response selecting and transmitting a communication are all part of the abstract idea itself and, as such, cannot be considered “additional elements” of the claim. MPEP 2106.04 requires that the “additional elements” be considered both individual and as a whole and not the elements of the claim be considered as a whole. The examiner has considered each of the “additional elements”, both individually and in combination, and found that they amount to no more than using a general-purpose computer with generic computer components and a client application as a tool to merely implement the abstract idea. The Recentive Analytics decision makes it clear that a generic machine learning model is just a software program executing on a computer. The Recentive Analytics decision also makes it clear that the manner in which a machine learning model is trained, or dynamically adjusted does not represent a technological improvement. Thus, the claim requires a computing device with a memory and a processor executing instructions (e.g., a generic-machine learning model) which is merely a general-purpose computer with generic computing components and a client application that executing in the background of a device to provide location information. The client application performs no significant step of the claim. Instead, it is merely required to transmit data. Thus, the general-purpose computer with generic computer components is the only “additional element” that is required to perform a significant step of the abstract idea. As such, the arrangement of devices and the significant steps performed using this arrangement is not capable of transforming the abstract idea into a practical application. The Recentive Analytics decision also makes it clear that the manner in which a machine learning model is trained, or dynamically adjusted does not represent a technological improvement. Thus, when considered individually and as a whole, the additional elements of the claim are merely tools used to apply the abstract idea which is insufficient to transform an abstract idea into a practical application. Thus, the rejections have been maintained.
The applicant argues that the claim overcome the 35 USC 101 rejection because providing a “client application” that executes on a mobile device as a background process to, over a period of time, periodically provide a separate “computing system” with “location data indicating geographic locations of the mobile device”, such that when the client application provides location data indicating that the “mobile device has entered a geofence” the separate computing system may perform other operations “in response to determining that the mobile device has entered the geofence” because they recite additional elements that demonstrate that the claim as a whole integrates the judicial exception into a practical application when the judicial exception is implemented by a particular machine or manufacture that is integral to the claim. The examiner disagrees. The claims recite no “particular machine” nor a “particular manufacture”. Instead, the claims recite a general-purpose computer with generic computer components (i.e., a processor, memory, and software such as a machine learning model) and software executing as a background process on another general-purpose computer. All other argued limitations are not “additional elements” of the claim but instead part of the identified abstract idea itself. It appears that the applicant has once again misconstrued the term “additional element” and instead believes that MPEP 2106.04 requires that all elements of the claim be considered. This is not the case. Thus, the applicant’s argument is not convincing. Second, the only significant steps of the invention are performed by the first general-purpose computer with generic computer components (i.e., the computing device with a processor, memory, and software such as a machine learning model) because the client application is merely required to transmit data, and perhaps receive location data from the mobile device or its components which is/are insignificant extra-solution activities. Thus, the “additional elements” when considered as a whole merely apply the abstract idea using the “additional elements” as a tool which is insufficient to transform an abstract idea into a practical application. As such, the applicant’s arguments are not convincing and the rejections have been maintained.
The applicant argues that the “additional elements” of the claim improves the functioning of a computer or improves another technology of technological field. The examiner disagrees. First, there is no limitation in the claims that could have any impact on the computer itself. It still has the same processor and the same memory and still executes all software instruction in the same manner as it did before the applicant applied their abstract idea using the general-purpose computer. Thus, the applilcant’s argument is not convincing. Second, an improvement to a technology or technological field can only transform an abstract idea into a practical application if said improvement to a technology or technological field is rooted in the “additional elements” of a claim in a manner other than merely applying the abstract idea using the “additional elements” as a tool. Improvement that are rooted solely in the abstract idea itself which is merely applied using the “additional elements” of the claim, even if the applicant believes they are an improvement to a technology or technological field, are improvements to an abstract idea which are improvement in ineligible subject matter (see SAP v. Investpic: Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because they are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms. Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non-abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract.). Thus, the applicant’s argument is not convincing. Hence, the rejections have been maintained.
The applicant argues that the “personalized banking engine” and the steps it performs reduce usage of bandwidth, memory, computer cycles, and other computing resources is a technical improvement that demonstrates a practical application of the alleged abstract idea. The examiner disagrees. As indicated above the overall bandwidth, memory, computer cycles, and other computing resources of the computing device and/or network remain the same. The purported improvements regarding a reduced usage of bandwidth, memory, computer cycles, and other computing resources is solely a result of executing the abstract idea using the “additional element” as a tool. If the examiner where to write a basic “hello world” application that transmits “hello world” to a mobile device once a day; and then write a basic “hello world” application that transmits “hello world” to a mobile device every hour, the first application uses less bandwidth, memory, computer cycles and other computer resources than the second application yet the computer itself remains unchanged. Thus, the purported improvement rests solely in how many times a day I want my abstract idea to transmit “hello world” to the mobile device. As such, the applicant’s arguments are not convincing and the rejections have been maintained.
The applicant argues that claims that recite “a particular solution to a problem or a particular way to achieve a desired outcome as oppose to merely claiming the idea of a solution or outcome” which the August 2025 Memorandum indicates is an important consideration in determining whether a claim improves a technology of technological field, and the instant claims recite a particular solution or a particular way of achieving an outcome. Thus, the claims should overcome the 35 USC 101 rejection. The examiner disagrees. Both MPEP 2106.04 and the August 2025 USPTO Memorandum, require that the “additional elements” of the claim provide a technical solution to a technical problem. Neither the August 2025 USPTO Memorandum (which was merely a reminder of how MPEP 2106.04 requires claims to be analyzed and not a change in the manner in which claims are analyzed) nor MPEP 2106.04 indicate that an abstract idea that recites a solution to a problem or a particular way of achieving a desired outcome is patent eligible. In the instant case, the applicant argues that the limitation of the abstract idea which is merely applied using the “additional elements” of claims as tool provides a technical improvement that should overcome the 101 rejection. This argument is not convincing. As indicated in a previous response, improvement of this nature, whether the applicant considers them to be technical improvement, are improvements to an abstract idea which are improvement in ineligible subject matter (see SAP v. Investpic). Thus, the rejection have been maintained.
The applicant argues that the claim overcome the 35 USC 101 rejection under Step 2b because the claim recite an additional element or a combination additional elements show an improvement to the functioning of a computer or to any other technological field as per MPEP 2106.05 for the same reasons argued with regard to Step 2a, Prong 2. The examiner disagrees. The applicant continues to mix and match “additional elements” of the claim with elements of the abstract idea when formulating their arguments. MPEP 2106.05 requires that the “additional elements” of the claim be considered significantly more than the abstract idea. For the same reasoning used in the examiner’s response to arguments with regards to Step 2a, Prong 2 above, the instant claims merely recite well-understood, routine, and conventional “additional elements”, which are merely applied as a tool to the abstract idea. As per MPEP 2106.05, Improvement obtained by an abstract idea that merely applies well-understood, routine, and conventional “additional elements” are insufficient to be considered “significantly more” under Step 2b. The examiner notes that he has provided proof that a client application executing in the background of a mobile device to provide location information was well-understood, routine, and conventional before the effective filing date of the invention. The examiner has provided proof machine learning models were well-understood, routine, and conventional before the effective filing date of the invention. Thus, the claims recite no “additional elements” that are not well-understood routine, and conventional. As such, when considered individually the “additional elements” cannot be considered significantly more under Step 2b. Thus, the applicant’s arguments are not convincing. Additionally, the only significant steps of the invention are performed by the first general-purpose computer with generic computer components (i.e., the computing device with a processor, memory, and software such as a machine learning model) because the client application is merely required to transmit data, and perhaps receive location data from the mobile device or its components which is/are insignificant extra-solution activities. Thus, the “additional elements” when considered as a whole cannot be considered “significantly more” than the abstract idea. As such, the applicant’s arguments are not convincing and the rejections have been maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bondesen et al. (PGPUB: 2015/0254699) which discloses aggregating financial information indicating transactions between the user and different merchants is received from at least one financial institution, wherein the financial information is obtained using authentication credentials.
Dev et al. (PGPUB: 2004/0054587) which discloses making a user shopping profile, generated by the computing system, customizable by the user.
Beatty et al. (PGPUB: 2016/0125449) which discloses offers that include at least one of an offer of reward points for completing a purchase of the preferred product within a designated amount of time, with a designated payment type, or with a loan product, or an indication of pricing for a bundle of products offered by the preferred merchant.
Vergari et al. (PGPUB: 2016/0224964) which discloses determining, by the computing system, and based on at least one of the shopping profile or the financial information, that at least a predetermined amount of time has passed since the user last used a particular financial account, wherein the designated payment type is associated with the particular financial account.
Begin et al. (PGPUB: 2015/0031326) which discloses obtaining user-provided app permission during a registration phase upon at least one of an installation or initial launch of the client application on the mobile device.
Simmons (PGPUB: 2013/0166386) which discloses using user location information and user profile information, such input user preferences including specific merchants from which they would like to receive offers, to select and provide targeted offers to users when they are within a geographic proximity of said merchants.
Root et al. (PGPUB: 2014/0279015) which discloses selecting and providing location-based advertisement to users when they are in geographic proximity to a merchant, wherein the advertisement is selected based on determined shopping habits and user profile information that is either inferred or input by the user
Blume et al. (PGPUB: 6,839,682) which discloses using predictive modeling of consumer financial behavior to determine user interests and preferences based on financial transaction information and using this information to select and provide targeted advertisements to said users.
Bansal et al. (PGPUB: 2012/0258726) which discloses that mobile devices and GPS units on said mobile devices were well-known by at least April 6, 2011.
Zeto (PGPUB: 20130275198) which discloses a proximity-based advertising and marketing systems, and more particularly to the creation, syndication, and distribution of advertising and marketing content to consumer mobile devices based at least in part on a physical, geo-location or proximity of the mobile devices, wherein the confirming and allowing of redemption of the location-restricted offers is based on the user being proximate to a particular location of the offering merchant.
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 JOHN W VAN BRAMER whose telephone number is (571)272-8198. The examiner can normally be reached Monday-Thursday 5:30 am - 4 pm EST.
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/John Van Bramer/Primary Examiner, Art Unit 3622