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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 16, 2026 has been entered.
Response to Amendment
The amendment filed on March 16, 2026 cancelled no claims. Claims 2-5, 7-11, 13-17, and 19-21 were amended and no new claims were added. Thus, the currently pending claims addressed below are claims 2-21.
Claim Interpretation
The following claim terms have required examiner interpretation:
User interface element: displayable tailored content such as a notification (The applicant’s specification does not include the term “user interface”, much less the term “user interface element”. The closest possible support for generating a user interface element that notifies a user of a reward earned is found in paragraph 36 of the applicant’s specification where the rewards management application transmits a notification of rewards, coupons and offered earned to the user computing device for display).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,776,808. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 2-21 of the instant application are obvious variants of claims 1-20 of U.S. Patent No. 10,776,808.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,935,087. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 2-21 of the instant application are obvious variants of claims 1-20 of U.S. Patent No. 11,935,087.
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 2-21 are directed to a system, a method, 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 2-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claims 2, 9, 15, and 21 recite(s) the following abstract idea:
obtaining/accessing, based on a registration of a user account of a user, a Payment Rewards Identifier (PRI) associated with the user account:
storing the PRI in a database;
obtaining/accessing, from the user, information comprising the PRI and a reward identifier RID) associate with the PRI;
storing the RID in the database;
generating/accessing a payment token;
generating, based on a particular algorithm, an encoded PRI (ePRI) at least in part by encoding (e.g., encrypting) the PRI that is stored;
mapping the algorithm to the ePRI;
modifying the payment token to include the ePRI, thereby generating/obtaining a modified payment token;
storing the modified payment token in association with the PRI, thereby resulting/obtaining in a stored modified payment token;
receiving/accessing transaction information base on an initiation of a transaction by a user device, the transaction information including the modified payment token that includes the ePRI;
identifying a set of transaction characteristics of the transactions;
obtaining/accessing the ePRI of the modified payment token;
decoding (e.g., decrypting), based on the algorithm that was mapped to the ePRI, the ePRI, thereby obtaining a decoded PRI (dPRI);
performing a lookup comprising:
determining that the dPRI matches the PRI;
determining that the modified payment token in the received transaction information matches the stored modified payment token; and
identifying, based on a matching of the dPRI and the PRI and a matching of the modified payment token in the received transaction information and the stored modified payment token, the RID associated with the PRI;
determining, based on the identified RID, a reward record corresponding to the RID stored; and
updating the reward record based on the transaction, by updating a rewards amount based on at least one transaction characteristic of the set of transaction characteristics.
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 and 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 with one or more hardware processors coupled to a non-transitory memory and configured to execute software instructions, such as a rewards management application (e.g., a general-purpose computer with generic computer components) and a database (e.g. a generic computer component).
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)):
obtaining/accessing, based on a registration of a user account of a user, a Payment Rewards Identifier (PRI) associated with the user account (e.g., receiving data and/or transmitting and receiving data):
storing the PRI in a database (e.g., storing data);
obtaining/accessing, from the user, information comprising the PRI and a reward identifier RID) associate with the PRI (e.g., receiving data and/or transmitting and receiving data);
storing the RID in the database (e.g., storing data);
mapping the algorithm to the ePRI (e.g., storing association data);
storing the modified payment token in association with the PRI, thereby resulting/obtaining in a stored modified payment token (e.g., storing data);
receiving/accessing transaction information base on an initiation of a transaction by a user device, the transaction information including the modified payment token that includes the ePRI (e.g., receiving data and/or transmitting and receiving data);
obtaining/accessing the ePRI of the modified payment token (e.g., receiving data and/or transmitting and receiving data); and
updating the reward record based on the transaction (e.g., storing data).
The additional technical elements above are recited at a high-level of generality (i.e., as a generic processor and generic computer components performing a generic computers function of processing, communicating and displaying) such that it amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and 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 one or more computers, or merely uses computers 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 with one or more hardware processors coupled to a non-transitory memory configured to execute software instructions and a database (e.g., a general-purpose computer with generic computer components) to perform the claimed functions amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and 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 one or more computers, 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 computer and generic computer components (as evidenced from paragraphs 48-53 and 61 of the applicant’s specification and the Affinity v DirecTV decision which states that a database is a generic computer component); 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)):
obtaining/accessing, based on a registration of a user account of a user, a Payment Rewards Identifier (PRI) associated with the user account (e.g., receiving data and/or transmitting and receiving data):
storing the PRI in a database (e.g., storing data);
obtaining/accessing, from the user, information comprising the PRI and a reward identifier RID) associate with the PRI (e.g., receiving data and/or transmitting and receiving data);
storing the RID in the database (e.g., storing data);
mapping the algorithm to the ePRI (e.g., storing association data);
storing the modified payment token in association with the PRI, thereby resulting/obtaining in a stored modified payment token (e.g., storing data);
receiving/accessing transaction information base on an initiation of a transaction by a user device, the transaction information including the modified payment token that includes the ePRI (e.g., receiving data and/or transmitting and receiving data);
obtaining/accessing the ePRI of the modified payment token (e.g., receiving data and/or transmitting and receiving data); and
updating the reward record based on the transaction (e.g., storing 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 3-8, 10-14, and 16-20 appear to merely further limit the abstract idea by further limiting the data in the rewards database which is considered part of the abstract idea (Claim 3); further limiting the updating of the rewards amount which is considered part of the abstract idea (Claims 4, 10, and 16); further limiting the PRI and the rewards record and performing the additional steps of determining the payment token corresponds to a second PRI in the rewards database and updating a second rewards record which are all considered part of the abstract idea (Claims 5, 11, and 17); performing the additional steps of identifying one or more additional rewards and updating the one or more additional rewards which are both considered part of the abstract idea (Claims 6, 12, and 18); performing the additional step of generating a user interface element (e.g., tailored content, as indicated in the Claim Interpretation section above) indicating one or more rewards earned which is considered part of the abstract idea (Claims 7, 13, and 19); and performing the additional steps of determining a redemption amount and updating the reward amount which are both considered part of the abstract idea (Claims 8, 14, and 20), 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 2-21 are not patent eligible.
Claim Rejections - 35 USC § 112
The amendment filed on March 16, 2026 has overcome the 35 U.S.C. 112(a) rejections of claims 2-21. Thus, the rejections hare hereby withdrawn.
Possible Allowable Subject Matter
Claims 2-21, if amended in the manner identified above in the the 35 USC 101 rejection above.
The following is a statement of reasons for the indication of allowable subject matter: The examiner has found prior art (see Kedzlie et al. - 2017/0132652 and Nagasundaram et al. - 2015/0112870) that discloses a rewards platform, method, and non-transitory machine-readable medium comprising a processor and memory executing instructions to perform the steps of:
obtaining a unique user account identifier (PRI) when a user registers with the system; storing in a user account database (PRI database) the PRI; obtaining information from the user comprising at least one rewards program identifier (RPI) and at least one reward identifier (RID) associated with said at least one RPI; and storing in the PRI database the RPI and RID in association with the PRI (Kedzlie – Paragraphs 33-36 and 67; Table 1: a user registers with system and a primary account number is obtained and stored in association with the user account along with obtained rewards program identifiers and obtained reward identifiers associated with the rewards program identifiers);;
generating a payment token by encoding the PRI, wherein the encoding is based on an algorithm; mapping, by the rewards management application, the algorithm to the payment token (Nagasundaram - Paragraphs 2, and 42-44: generating a payment token by tokenizing a payment account number; using the payment token, instead of the payment account numbers, in payment transactions, and then performing de-tokenization on the payment token when the payment token is received as part of a transaction);
storing the payment token in a database in association with PRI (Nagasundaram - Paragraphs 2, and 42-44: de-tokenization is process of redeeming a token for the associated PAN value based on a token-to-PAN mapping stored, for example, in a token vault);
receiving transaction information that includes the payment token encoded from the PRI (Kedzlie - Paragraph 19: the transaction data may include, for example, primary account numbers (PANs) for consumers involved in the transactions, amounts of the transactions, merchant IDs for merchants involved in the transactions, merchant category codes (MCCs), dates/times of the transactions, products purchased and related descriptions or identifiers, etc.; Nagasundaram - Paragraphs 2, and 42-44: the PAN is now a payment token encoded from the PAN as taught by Nagasundaram);
decoding, by the rewards management application and based on the algorithm that was mapped to the payment token, the payment token (Nagasundaram - Paragraphs 2, and 42-44: de-tokenization is process of redeeming a token for the associated PAN value based on a token-to-PAN mapping stored, for example, in a token vault);
performing a lookup within the PRI database to: determine the de-tokenized payment token matches the PRI and identifying, based on the matching of the PRI and de-tokenized payment token, the RID associated said PRI (Kedzlie - Paragraphs 40-46, as well as, Table 2: identifying the PAN for the consumer, the rewards account identifier associated with the PAN and the reward identifier associated with the PAN; Nagasundaram - Paragraphs 2, and 42-44: the PAN matching the de-tokenized payment token encoded from the PAN as taught by Nagasundaram) );
determining, based on the identified RID, a reward record associated with the RID stored in a reward database; and updating the reward record based on the transaction (Kedzlie - Paragraphs 40-46, as well as, Table 2: determining a reward record associated with the reward ID, and updating the reward record)
While the examiner has found prior art (see Kannanari – US Patent 8,682,802) that teaches the ability to modify a payment token associated with an account after it has been generated, wherein the payment token includes additional information, neither the original payment token nor the modified token includes an encoded PAN, it is just a token associated with the PAN. Kannanari further discloses encrypting the modified payment token and storing modified payment token in database associated with a user account, there is no indication that the user account includes information regarding rewards programs or reward identifiers.
The examiner has also found prior art (see Ortiz et. al. – 2016/0019536) that discloses storing modified payment tokens in association with loyalty accounts but does not indicate that the user account identifier is a different identifier than the reward account identifier of the loyalty account.
As such, while it may be possible to combine the prior art of Kedzlie, Nagasundaram, Kannanari, and Ortiz to disclose the claim limitations which are absent in prior art of Kedzlie and Nagasundaram, to arrive at the applicant’s invention, doing so would not be obvious to one or ordinary skill in the art without the use of impermissible hindsight by using the applicant’s claims as a roadmap.
Thus, claims 2-21 would be allowable over the prior art if the applicant were to be able to overcome the 35 USC 101 rejection above.
Response to Arguments
Applicant's arguments filed March 16, 2026 have been fully considered but they are not persuasive.
The applicant’s response to the Double Patenting rejection was non-responsive. While the examiner could have issued a Notice of Non-Responsive Amendment, in an order to further the prosecution of the case, he is instead warning the applicant with regards to the requirements of the MPEP with regards to Double Patenting Rejections. As per 37 CFR 1.111, "In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action". While, 37 CFR 1.111 allows for a request to "be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated", a Double Patenting rejection is not an objection or requirement as to form not necessary for further consideration of the claims as noted in MPEP 804 (B)(1) "filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance." This is the second time that the applicant has failed to properly address the double patenting rejection and the second time the examiner is reminding the applicant how to make a proper response to the double patenting rejection, a failure to properly address the Double Patenting rejection in future correspondence is very likely to result in a Notice of Non-Responsive Amendment. The applicant can properly address the Double Patenting rejection by either filing a Terminal Disclaimer or providing specific arguments why one or more limitations in the claims, as amended, are not an obvious variant of the claims in the identified patent. Merely, amending the claims to recite a new limitation and stating that the applicant believes the Double Patenting rejection cannot be maintained over the claims as currently amended is not sufficient. The applicant needs to provide specific arguments as to why said limitation would not be an obvious variant of the claims in the identified patent. In the instant arguments that applicant merely asserts that since some of the terms used in the claims are not recited in US Patent 10,776,808 and/or US Patent 11,935,087. Such a statement does not address the issue of whether or not the use of such terms in the instant claim are not an obvious variant of the claims in US Patent 10,776,808 and/or US Patent 11,935,087. For instance, the claims in US Patent 10,776,808 and/or US Patent 11,935,087 clearly recite the PRI and the RID, the fact that the PRI and RID are stored, and using the PRI and RID to determine a rewards amount corresponding to a transaction and to up update rewards amount. Thus, why does the applicant believe that obtain the PRI, or storing the PRI or obtaining information comprising the PRI and RID, or storing the RID, or encoding the PRI, or mapping an algorithm to the encoded PRI, or modifying the payment token or storing the modified payment token are not obvious variant of the claims in US Patent 10,776,808 and/or US Patent 11,935,087? Does the applicant believe that somehow performing one or more of these steps is not an obvious variant of the claims in US Patent 10,776,808 and/or US Patent 11,935,087? Is the actual receiving or storing of the data not an obvious variant of the previous claims given that said data is recited as already being stored in a database in the previous claims? Since, the previous claim include “determining that a value of the first token corresponds to a first PRI in the PRI database” not merely a broader recitation of the instant claims that encompasses the specific manner in which the instant claims determine such a value using the encoding of the PRI, the mapping of the algorithm to the ePRI? Merely stating that the instant claims include terms not included in the previous claims is not a responsive argument detailing exactly why said terms are not obvious variants of the claim in US Patent 10,776,808 and/or US Patent 11,935,087. However, should the applicant instead present a convincing argument, that the claims of the instant application would also not be obvious variants of the claims of the previous application and/or patent, then it is likely they would also not be obvious variants of the claims of the instant application for which the examiner has issued an Office Action. This is because said previously examined claims were obvious variants of the previous application and/or patent. Thus, a successful argument regarding amended claims not being obvious variants of the previous application and/or patent is likely to result in Restriction by Original Presentation for the newly amended claims in the instant application. Given that the applicant has provided no specific argument as to why the claims as amended are not obvious variants of Patent No. 10,776,808 and Patent No.11,935,087, and that none of the added limitations would appear to be anything other than obvious variants of the claims in said patents, the Double Patenting rejection has been maintained.
The applicant’s arguments with regards to the 35 USC 101 rejections are not convincing.
The applicant asserts that the claims include elements that are significantly more than the abstract idea and thus statutory under Step 2b of the Alice/Mayo Test. The examiner disagrees. First, the USPTO does not directly apply the steps of the Alice/Mayo Test when determining whether a claim is eligible under 35 USC 101. Instead, the USPTO uses the Step 1, Step 2a, Prong 1, Step 2a, Prong 2, and Step 2b test as described in MPEP 2106. While the outcome of the analysis is always the same, Step 2b of the Alice/Mayo test encompasses both Step 2a, Prong 2, and Step 2b of the process required by MPEP 2106. This is only problematic because the examiner must use the process outlined in MPEP 2106 and it is difficult to determine whether the applicant’s argument are directed to Step 2a, Prong 2 or Step 2b when the applicant instead references only Step 2b of the Alice/Mayo test. Given that the applicant’s first argument references “significantly more”, the examiner believes the argument is that the claim overcomes the abstract idea under Step 2b of MPEP 2106. It appears from the applicant’s arguments that the applicant has misconstrues Step 2b of the Alice/Mayo Test; Step 2b of MPEP 2106; and the 2019 PEG. In each of these cases Step 2b requires that the additional elements recited in the claims provide “significantly more” than the recited judicial exception. The applicant appears to somehow believe that Step 2b of the Alice/Mayo Test; Step 2b of MPEP 2106; and the 2019 PEG allows for any element of the claims to be considered significantly more because in support of this argument the applicant has underlined a significant portion of the abstract idea itself as an indication that the claim is “significantly more” than the recited judicial exception. This, is not the correct way in which the Alice/Mayo Test, MPEP 2106, and/or the 2019 is to be applied under Step 2b. Instead of analyzing elements of a claim under Step 2b as the applicant suggests, the proper analysis under Step 2b is whether the additional elements of the claim provide “significantly more” than the recited judicial exception. Additional elements are defined as those elements of a claim that are not part of the abstract idea itself. In the applicant’s arguments, a plethora of limitations that are part of the abstract idea itself have been underlined as supporting “significantly more” under Step 2b. None of said portions of the abstract idea itself are capable of overcoming the rejection under Step 2b, because they are not “additional elements” of the claims because they are part of the abstract idea itself. When analyzed properly, the only additional elements in the claim are a computer with one or more hardware processors coupled to a non-transitory memory and configured to execute software instructions, such as a rewards management application (e.g., a general-purpose computer with generic computer components) and a database (e.g. a generic computer component). Thus, the only “additional elements” of the claim, whether considered individually or as a whole, that are capable of being considered “significantly more” than the judicial exception are a general-purpose computer and generic computer component which are merely used as a tool to apply the abstract idea which is insufficient to be considered “significantly more” under Step 2b. The specific and ordered combination of the general-purpose computer and generic computer components is not unconventional or non-routine as evidence by paragraphs 48-53 and 61 of the applicant’s specification which make it clear that the a computer is nothing more than a general-purpose computer, the one or more hardware processors is nothing more than a generic processor, the non-transitory memory is nothing more than a generic memory, and the rewards management application is nothing more than software. The Affinity v DirecTV decision which states that a database is a generic computer component. Thus, there is nothing unconventional or non-routine about the specific and ordered combination of the ”additional elements” of the claim. The claim merely requires that the abstract idea be merely applied using a general-purpose computer with generic computer components as a tool. As such, the applicant’s arguments are not persuasive and the rejections have been maintained.
The applicant asserts that claim 2 of the instant application are closely analogized to the patent eligible claims in the BASCOM decision (also Example 34 of the Abstract Idea Examples issued by the USPTO), as well as with Claim 2 in Example 35 of the abstract idea examples. The examiner disagrees. First, claim 2 of the instant application bears no resemblance whatsoever to the claims in the BASCOM decision. The claims of the BASCOM decision recited “A content filtering system…comprising: a local client; ….; and a remote ISP server”. Thus, the scope of the claimed system in BASCOMB included both the local client and the remote ISP server. In contrast, claim 2 of the instant invention is to a rewards platform (i.e., system) comprising a memory and a processor which is nothing more than a computer with a memory and a processor. According to claim 2 this computer performs every step of the claim. As such, claim 2 of the instant invention does not recite multiple computers each performing at least one significant step of the abstract idea like the claims in the BASCOM decision. In BASCOM, the whole premise for the claims overcoming the 101 rejection was based on the specific arrangement devices and the specific significant steps of the abstract idea that each device perform. Instead, claim 2 of the instant invention recites a single computer which is merely used as a tool to apply the abstract idea. Therefore, it is clear that the instant claims bear no resemblance to the claims in the BASCOM decision and can in no way be considered analogous to the claims of the BASCOM decision. Second, the instant invention bears absolutely no resemblance to claim 2 of Abstract Idea Example 35. In claim 2 of Abstract Idea Example 35, the claim positively recited both an automated teller machine with a processor and a display with a customer interface, and a keypad that is only accessible upon validation of a customer identity, as well as, a customer’s mobile communication device. Both the ATM and the customer’s mobile device are positively recited as performing significant steps of the abstract idea. The mobile device generates an image in response to receiving a random code from the ATM, wherein the generated image includes encrypted code data. The ATM obtains customer specific information directly from a bank card; generates a random code; reads the image from customer’s mobile device; decrypts the code data in the image; determines if the decrypted code data matches the generated random code; and determines whether the transaction should proceed. As such, claim 2 of Abstract Idea Example 35, positively recites two different devices each performing at least one significant step of an abstract idea. It is the arrangement of devices and the significant steps each perform that was considered significantly more than the abstract idea. Again, in contrast, the instant claims recite only a single general-purpose computer with generic computer components that merely applies an abstract idea. Thus, the instant claims bear no resemblance to claim 2 of Abstract Idea Example 35. If anything, the instant claims resemble claim 1 of Abstract Idea Example 35 in that each and every step of claim 1 of Abstract Idea Example 35 is performed by a single computing device. As such, Abstract Idea Example 35 supports the examiner position that a general-purpose computer with generic computer components that merely applies an abstract idea is ineligible under 35 USC 101. Thus, the applicant’s arguments are not persuasive and the rejections have been maintained.
The applicant’s arguments with regards to the 35 USC 101 rejection regarding the claim including novel and non-obvious improvements over conventional reward management system is not persuasive. Once again, the applicant is confusing “additional elements” with elements of the claim that include the abstract idea. These two terms are mutually exclusive. If an element of a claim is part of the abstract idea, it cannot be an “additional element” of the claim. The improvement explained in paragraph 14 is an improvement rooted solely in the abstract idea that is merely applied using the general-purpose computer with generic computer components. This is not a technological improvement according to MPEP 2106.05(a)(II) which states “However, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology”. Instead, it is an improvement to an abstract idea which, regardless of how groundbreaking, innovative or even brilliant it may be, is an improvement ineligible subject matter (see SAP v. Investpic decision: 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.). The same is true of the enhancement to the security obtained by practicing the abstract idea. The encoding and decoding are part of the abstract idea itself. Thus, any improvement obtained by performing the claimed encoding and decoding is an improvement to the abstract idea which is an improvement in ineligible subject matter. As such, it is clear that none of the argued limitations are “additional elements” of the claims. Instead, they are all part of the abstract idea itself. Elements of the abstract idea itself which is merely applied using a general-purpose computer with generic computer component are incapable of being considered “significantly more”. Only improvements rooted in the “additional elements” of a claim are capable of being considered “significantly more” than the judicial exception. Therefore, the applicant’s arguments are not persuasive and the rejections have been maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Badger et al. (PGPUB: 2016/0379241) which discloses monitoring payment transactions based on communications received from point-of-sale systems of merchants. Based on loyalty program identifiers, primary account numbers loyalty-based rules stored in a ledger, the purchase transaction can be modified to provide a stored benefit to the consumer; tracking loyalty-based activity based on payment transactions can reduce the necessity for consumer involvement or registration with a merchant's loyalty program while increasing a merchant's ability to provide the consumer in meaningful marketing engagements.
Pastore et al. (PGPUB: 2015/0161642) which discloses receiving, by a computer, an authorization request including a payment account number (PAN) and an identifier of a merchant associated with a transaction; determining whether the PAN is associated with a loyalty program of the merchant based on a record of a mapped association between the PAN and a unique account identifier of the merchant's loyalty program; and sending, by the computer, an authorization response in reply to the authorization request, the authorization response including a first indicator indicative of whether the transaction is authorized and a second indicator indicative of whether the PAN included in the authorization request is associated with the loyalty program of the merchant.
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
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