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 22, 2026, cancelled no claims. Claims 2-5, 7-11, 13-17, and 19-20 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: (Examiner note: The applicant’s invention is directed to a management server and the steps it performs. As such, the user device and any steps it performs, the administrator/entity server and any steps it performs, and the device of the merchant entity and any steps it performs are all outside the scope of the element. Therefore, the user device and its functions, the administrator/entity server and its functions, and the device of the merchant entity and its functions have all been included as part of the abstract idea itself because they cannot be considered “additional elements” of management server being claimed by the applicant.)
obtaining and storing a registration of a user account of a user;
generating a Payment Rewards Identifier (PRI) wherein the PRI is associated with the user account;
obtaining/accessing, based on the registration of the user account of the user, the Payment Rewards Identifier (PRI):
storing the PRI;
obtaining/accessing, via a user input received from the user, information comprising a reward identifier RID) associate with the PRI;
storing the RID;
generating/accessing a payment token;
encoding (e.g., encrypting) the PRI that is stored thereby generating an encoded PRI (ePRI), wherein the encoding is based on an algorithm;
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 generated based on an initiation of a transaction by a user device, the transaction involving the user device and a device of a merchant, the transaction information including the modified payment token that includes the ePRI;
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, wherein the updating comprises:
identifying an administrator/entity server associated with the reward account;
identifying a set of administrator rules of a reward program associated with he reward record; and
modifying a rewards amount based on one or more administrator rules of the reward program;
identifying a set of transaction characteristics of the transactions; and
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 reward platform management server comprising one or more hardware processors and a non-transitory memory executing software instructions (e.g., the rewards management application and the token generation program) which is merely a general-purpose computer with generic computer components executing software; and one or more database which is merely 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 with the rewards platform, a Payment Rewards Identifier (PRI) that is generated by a rewards management application of a management server, wherein the PRI is associated with the user account (e.g., receiving data and/or transmitting and receiving data):
storing the PRI in one or more databases (e.g., storing data);
obtaining/accessing, via a user input received from the user through the rewards management application, information comprising a reward identifier (RID) associated with the PRI (e.g., receiving data);
storing the RID in the one or more databases (e.g., storing data)
mapping, by the rewards management application, the algorithm to the ePRI (e.g., storing association data);
storing, in the one or more databases, the modified payment token in association with the PRI, thereby resulting in a stored modified payment token (e.g., storing data);
receiving/accessing, by the rewards management application or by the token generation program, transaction information generated based on an initiation of a transaction by a user device, the transaction involving the user device and a device of a merchant entity, the transaction information including the modified payment token that includes the ePRI (e.g., receiving data and/or transmitting and receiving data); and
obtaining/accessing the ePRI of the modified payment token (e.g., receiving data and/or transmitting and receiving 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 reward platform management server comprising one or more hardware processors and a non-transitory memory executing software instructions (e.g., the rewards management application and the token generation program) which is merely a general-purpose computer with generic computer components executing software; and one or more database which is merely a generic computer component 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 as a tool.
“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 with the rewards platform, a Payment Rewards Identifier (PRI) that is generated by a rewards management application of a management server, wherein the PRI is associated with the user account (e.g., receiving data and/or transmitting and receiving data):
storing the PRI in one or more databases (e.g., storing data);
obtaining/accessing, via a user input received from the user through the rewards management application, information comprising a reward identifier (RID) associated with the PRI (e.g., receiving data);
storing the RID in the one or more databases (e.g., storing data)
mapping, by the rewards management application, the algorithm to the ePRI (e.g., storing association data);
storing, in the one or more databases, the modified payment token in association with the PRI, thereby resulting in a stored modified payment token (e.g., storing data);
receiving/accessing, by the rewards management application or by the token generation program, transaction information generated based on an initiation of a transaction by a user device, the transaction involving the user device and a device of a merchant entity, the transaction information including the modified payment token that includes the ePRI (e.g., receiving data and/or transmitting and receiving data); and
obtaining/accessing the ePRI of the modified payment token (e.g., receiving data and/or transmitting and receiving 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 “additional element” of the one or more databases which has already been addressed above (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 and transmitting it for display 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 following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4, 10, and 16 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 4, 10, and 16 attempt to change the scope of the claims from which they depend rather than further limit said claims. Independent claims 2, 9, and 15 from which they depend recite “one mor more databases”. Thus, the claims are broad enough to encompass the use of a single database. Dependent claim 4, 10, and 16 attempt to change the scope of said one or more databases must comprise more than one database. As such, it is clear that claims 4, 10, and 16 fail to include all the limitations of the claim upon which it depends because they eliminate the possibility that the invention is using only one database. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. For the purpose of prosecuting the claims, the examiner is interpreting the limitations of claim 4 as if it recited: “The rewards platform of claim 2, wherein if there are two databases, then said two databased comprise a first database in which the PRI is stored and a second database in which the RID is stored; interpreting the limitations of claim 10 as if it recited “The method of claim 9, wherein if there are multiple database then the PRI and the RID are stored in different databases of the multiple databases.; and interpreting claim 16 as if it recited “The non-transitory machine-readable medium of claim 15, wherein if there are multiple databases, then the PRI and the RID are stored in different databases of the multiple databases”.
Possible Allowable Subject Matter
Claims 2-21, if amended in the manner identified above in the 35 USC 101 rejections and 35 USC 112(d) rejections 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/generating 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 rejections and 35 USC 112(d) rejections above.
Response to Arguments
Applicant's arguments filed July 22, 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 third time that the applicant has failed to properly address the double patenting rejection and the third 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. The examiner disagrees. The determination of “significantly more” under Step 2b must be rooted in the “additional elements” of the claims. However, the claims, as currently amended, have not introduced any new “additional elements” to the claims. The applicant’s invention is to a reward management server with a processor and a memory executing software to perform the claimed steps. As such, the scope of the applicant’s invention is limited to the reward management server and the functions it performs. While the claim amend has recited some new computing devices such as a “user device”, “a device of a merchant entity”, and an “administrator/entity server”, these devices and any functions they perform are outside the scope of the applicant invented reward management server. As such, they have been included as part of the abstract idea itself because they cannot be considered “additional elements” of the claimed invention. Instead, they are considered an abstract device that the applicant’s invention is intending to communicate with. If the applicant desires for these other devices to be within the scope of the applicant’s invention then the examiner suggests amending the claims to recite, for example, a system comprising a reward management server, a user device, a device of a merchant, and an administrator server, and then claim the actual functions performed by each of these devices. However, as currently claimed, the only “additional elements” within the scope of the applicant’s invention is a general-purpose computer and generic computer components being used as a tool to merely apply the abstract idea. Thus, any purported improvement obtained by practicing the claimed invention is rooted solely in the abstract idea itself which is merely applied using the general-purpose computer and generic computer components as tool which is an improvement to an abstract idea. According to MPEP 2106, improvements of this nature are incapable of transforming an abstract idea into a practical application under Step 2a, Prong 2, and incapable of being considered significantly more under Step 2b (see MPEP 2106.05(a) - “It is important to note, the judicial exception alone cannot provide the improvement”; and MPEP 2106.05(a)(II) - “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”). What the applicant argues is a specific and ordered combination of steps is actually an abstract idea with a specific and ordered combination of steps which is merely applied using a general-purpose computer with generic computer components as a tool which is incapable of being considered significantly more under Step 2b. Thus, the applicant’s arguments are not convincing, and the rejections have been maintained.
The applicant asserts that the claims are similar to the claims in the Bascom decision and claim 2 of abstract idea example 35 and, as such, should overcome the rejection. The examiner disagrees. First, the instant claims bear no similarity to the claims in the Bascom decision. In fact, given the courts analysis in the Bascom decision, the Bascom decision supports the examiner’s contention that the claims recite an abstract idea and should be rejected under 35 USC 101. The core distinction between the instant claims and the claims of the Bascom decision is that in the claims of the Bascom decision the invention comprised: a client device and a remote ISP server. Each of these positively claimed devices were inside the scope of the applicant’s invention and each device was required to perform at least one significant step of the abstract idea. In contrast, the scope of the claims in the instant invention includes only a single computing device and this single computing device performs every significant step of the abstract idea. The reason that the Bascom decision supports the examiner analysis of the instant claims is that in the Bascom decision the court stated that if every step of the abstract idea was performed by the client device the claim would have merely recited an abstract idea. The reason the claims in the Bascom overcame the 101 rejections was because both devices were positively claimed within the scope of the invention and each device was required to perform at least one significant step of the abstract idea and this arrangement devices and the steps being performed resulted in an improvement that overcame the 101 rejections. Since the instant claims do not recite an arrangement devices within the scope of the invention, the instant claims bear no similarity to the claims in the Bascom decision. The same analysis is true with respect to the instant claims and claim 2 of abstract idea example 35. The method of claim 2 comprised: step performed by a processor and steps performed by the automated teller machine. As such, the scope of the method comprised both the processor and the ATM. Claim 2 overcame the 101 rejections because the specific arrangement of devices and the steps of the abstract idea that each is required to perform resulted in an improvement that overcame the 101 rejection. However, as indicated above, neither the system claim, the computer program product claim, nor the method of the instant claim comprises a second device. Each and every step performed by the system, product, and method is a step performed by the reward management server. As such, the instant claims do not recite an arrangement of devices within the scope of the invention. Therefore, it is clear that the claims of the instant invention are in no way similar to the claims of the Bascom decision or claim 2 of abstract idea example 35. Thus, the applicant’s arguments are not convincing, and the rejections have been maintained.
The applicant argues that the claims provided a solution to the problem of maintaining rewards for merchants without the cost of merchant overhead and, as such, should overcome the 101 rejections. The examiner disagrees. The argued solution to the problem of maintaining rewards of merchants without the cost of merchant overhead is a business solution to a business problem. The solution is rooted solely in the abstract idea itself which is merely applied using the “additional elements” of the claim as a tool. Improvements of this nature are improvements to an abstract idea which are improvements in ineligible subject matter (see MPEP 2106.05(a) - “It is important to note, the judicial exception alone cannot provide the improvement”; and MPEP 2106.05(a)(II) - “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”; and the 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.). Thus, 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.
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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Spar Ilana can be reached at 571-270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/John Van Bramer/Primary Examiner, Art Unit 3622
Prosecution Insights