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 .
Status of the Application
This final office action is in response to the amendment filed on 8/29/2025. Claims 1, 8, and 14 have been amended. Claims 1-20 are currently pending and have been examined below.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11869030. Although the claims at issue are not identical, they are not patentably distinct from each other because independent patent claims 1, 6, and 11 of US. Patent No. 11869030 recite all of the limitations of independent claims 1, 8, and 14 of the present claims, in addition to reciting additional imitations that further limit the patented claims. Furthermore, dependent claims 2-5, 7-10, and 12-21 of U.S. Patent No. 11869030 recite all of the limitations of dependent claims 2-7, 9-13, and 15-21 of the present claims. Therefore claims 1-21 of U.S. Patent No. 11869030 are in essence “species” of the generic invention of claims 1-20 of the present application. It has been held that a generic invention is "anticipated" by a "species" within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Claim Rejections – 35 U.S.C. 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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Per step 1 of the eligibility analysis set forth in MPEP § 2106, subsection III, the claims are directed towards a process, machine, or manufacture.
Per step 2A Prong One, independent claim 14 recites specific limitations which fall within at least one of the groupings of abstract ideas enumerated in MPEP 2106.04(a)(2) as follows:
receiving a token that identifies a loyalty rewards account, wherein the token includes an alias account identifier that is mapped to the loyalty rewards account;
adding the loyalty rewards account as a payment medium;
receiving a selection of the loyalty rewards account for payment of a transaction at a checkout of a merchant;
transmitting the transaction request for the transaction, wherein the transaction request includes the token that identifies the loyalty rewards account as the payment medium for the transaction, wherein the indicator which specifies the manner in which to route the transaction request is identified as indicating the manner in which to route the transaction request; and
configuring the token that identifies the loyalty rewards account as the payment medium for the transaction to at least include an indicator that specifies an account type for the loyalty rewards account and an indicator which specifies a manner in which to route a transaction request for the transaction.
As noted above, these limitations fall within at least one of the groupings of abstract ideas enumerated in MPEP 2106.04(a)(2). Specifically, these limitations fall within the group Certain Methods of Organizing Human Activity (i.e., fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). That is, the limitations describe a commercial interaction of utilizing a loyalty rewards account during a checkout transaction. Accordingly claim 1 recites an abstract idea.
Per step 2A Prong 2, the Examiner finds that the judicial exception is not integrated into a practical application. Claim 14 recites the additional limitations of:
a computing device [to receive the token, receive the selection; transmit a transaction request; and configure the token];
[adding the rewards account as a payment medium] for a digital wallet application;
rendering, by the computing device, a card construct within a user interface of the digital wallet application, the user interface being rendered on a display of the computing device and the card construct containing a view field that displays a status of the loyalty rewards account represented by the card construct;
the card construct [representing the loyalty rewards account] that accepts mobile wallet payments; and
[the token] includes an indication whether to route the transaction request to a loyalty settlement process during settlement processing.
The additional limitations when viewed individually and when viewed as an ordered combination, and pursuant to the broadest reasonable interpretation, do not integrate the abstract idea into a practical application because each of the additional elements are recited at high level of generality implementing the abstract idea on a computer (i.e. apply it); or generally linking the use of the judicial exception to a particular technological environment.
Specifically, the use of a generic computing device to receive a token and selection; transmit a transaction request; and configure the token only generally links the abstract idea to a particular technological environment or uses a generic computer as a tool to perform the abstract idea. Further, the limitations of rendering, by the computing device, a card construct within a user interface of the digital wallet application, the user interface being rendered on a display of the computing device and the card construct containing a view field that displays a status of the loyalty rewards account represented by the card construct; the card construct that accepts mobile wallet payments; and [adding the rewards account as a payment medium] for a digital wallet application are recited at a high level of generality and only generally links the abstract idea to a particular technological environment (i.e., mobile wallets that display available payment accounts).
Additionally, with respect to rendering, by the computing device, a card construct within a user interface of the digital wallet application, the user interface being rendered on a display of the computing device and the card construct containing a view field that displays a status of the loyalty rewards account represented by the card construct and [the token] includes an indication whether to route the transaction request to a loyalty settlement process during settlement processing, Examiner notes that the claims do not positively recite actually routing the transaction request to loyalty settlement processing using the identifier. Accordingly, simply indicating the manner in which to route the transaction without actually routing does not integrate the abstract idea into a practical application or amount to significantly more than the abstract idea.
The broadest reasonable interpretation of this limitation merely includes a token with information that can be used to route a transaction. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to the abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements are recited at high level of generality implementing the abstract idea on a computer (i.e. apply it); generally linking the use of the judicial exception to a particular technological environment; or amount to insignificant extra-solution activity. The same analysis applies here in 2B, i.e., mere instructions to apply an exception in a particular technological environment cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Alice Corp. also establishes that the same analysis should be used for all categories of claims (e.g., product and process claims). Therefore, independent system claim 1 and independent non-transitory computer readable medium claim 8 are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as independent method claim 14. The additional limitations in claim 1 (i.e., a client device comprising a processor and memory, and machine readable medium) and the additional limitations in independent claim 8 (i.e., a non-transitory computer readable medium) add nothing of substance to the underlying abstract idea. At best, the components in independent claims 1 and 8 merely provide an environment to implement the abstract idea.
Dependent claims 2-7, 9-13, and 15-20 when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. §101 because the additional recited limitations fail to establish that the claims are not directed to the same abstract idea of Independent claim 1, 8, and 14 without integrating the abstract idea into a practical application or amounting to significantly more. Specifically, the additional limitations in claims 2-7, 9-13, and 15-20 merely further limit the abstract idea or generally link the abstract idea to a particular technological environment.
Response to Arguments
35 U.S.C. 103
Applicant's arguments, see pages 18-26, filed 8/29/2025 with respect to the rejection(s) of claims
1-20 under 35 U.S.C. 103(a) have been fully considered and are persuasive. Therefore the rejections have been withdrawn.
35 U.S.C. 101
Applicant's arguments, see pages 9-18, filed 8/29/2025 with respect to the rejection(s) of claims
1-20 under 35 U.S.C. 103(a) have been fully considered but are not persuasive.
First, Applicant argues that:
Applicant respectfully submits the Office has at least not shown that claim 14 falls within the enumerated list of Commercial Interactions. On page 5, The Office Action indicates that claim 14's limitations "describe a commercial interaction of utilizing a loyalty reward account during a checkout transaction," and further alleges likewise for claims 1 and 8. Applicant respectfully disagrees. The Office does not show or suggest any example in the enumerated list that is comparable to claim 14, nor does it offer an explanation for how "utilizing a loyalty reward account during a checkout transaction falls within "[m]anaging a [ ] life insurance policy," "[p]rocessing insurance claims," "[h]edging," "[m]itigating settlement risk," "[a]rbitration," "[s]tructuring a sales force or marketing company," "determining the optimal number of visits," "[o]ffer-based price optimization," or "[p]rocessing information through a clearing-house." It instead offers only conclusory statements without articulated reasoning." (remarks pages 9-11).
Examiner respectfully disagrees. The independent claims explicitly recite receiving a selection of a loyalty rewards account for payment of a transaction at a checkout of a merchant and transmitting the transaction request for the transaction. These limitations clearly describe a commercial interaction of utilizing a loyalty rewards account during a checkout transaction (i.e., a checkout transaction is a commercial interaction). The examples of commercial interactions in the MPEP are not exclusive and there is no requirement that a claim recites the specific examples provided to qualify as a commercial or legal interaction that falls within the certain method of human activities. Accordingly the independent claims recite an abstract idea.
Second, Applicant argues that “[b]ecause Applicant is claiming a technical solution to a technical problem, claim 1 is not abstract under Step 2A, Prong Two” (remarks page 15) and points to paragraphs [0002]-[0004] and [0017] to support this assertion. At the level of generality claimed it is not clear to the Examiner what specific technological improvement is recited in the claims. Examiner notes that the claims do not positively recite routing the transaction request or performing the settlement process, but merely recite transmitting the transaction request including the token. At this level of generality, the claims do not appear to recite a technological improvement.
Finally, Applicant argues that “elements such as "the token includ[ing] an alias account identifier that is mapped to the loyalty rewards account" as well as "the token that identifies the loyalty rewards account as the payment medium for the transaction" and "an indicator which specifies a manner in which to route the transaction request, which at least includes an indication whether to route the transaction request to a loyalty settlement process during settlement processing" are unconventional steps” (remarks page 17). Examiner respectfully replies that mapping an alias account identifier to the loyalty rewards account and identifying the loyalty rewards account as a payment medium is part of the abstract idea. Additionally, while the indicator specifies the manner in which to route transaction request, the claims do not positively recite actually routing the transaction request to loyalty settlement processing using the identifier. Accordingly, simply indicating the manner in which to route the transaction without actually routing it is not an unconventional step that amounts to significantly more than the abstract idea.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Patent Application Publication Number 20100057551 (“Blaisdell”) discloses different conversion factors for loyalty reward programs
US Patent Application Publication Number 20140172660 (“Louie”) discloses a plurality of linked loyalty accounts
US Patent Application Publication 20160358199 (“Os”) discloses adding a loyalty account to an electronic wallet and displaying a visual graphical representation of the loyalty account card
US Patent Application Publication Number Lehman 20110068170 (“Lehman”) discloses updating loyalty program information displayed on payment card digital display screen including a total balance of loyalty points accumulated by the cardholder
However, the prior art fails to teach each and every limitation as claimed, and would involve
hindsight reasoning to arrive at the claimed invention. Therefore, the claims are considered allowable
over the prior art.
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 ALLAN J WOODWORTH, II whose telephone number is (571)272-6904. The examiner can normally be reached Mon-Fri 9:00-5:30.
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/ALLAN J WOODWORTH, II/
Primary Examiner, Art Unit 3622