CTNF 18/448,105 CTNF 78162 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 12-151 AIA 26-51 12-51 Status of Claims 2. Claims 8-14 have been examined. Response to Arguments 3. Claim 8 continues to recite “providing incentives to a customer”. For example, the claim recites “receiving… an indication that a user has initiated a transaction to purchase an item or service from a merchant; receiving… a request for an installment payment plan incentive customized for the user; …; and, presenting an offer to the user… the offer comprising the installment payment plan and the selected dynamic incentive customized for the user…”. The additional steps of “collecting… user-specific data…”, “receiving… a set of user-configured rules…”, “applying … the set of user-configured rules… that define preferences and thresholds…”, “based on the application of the set of user-configurable rules to the user-specific data, generating… dynamic incentives…”, “calculating… a score for each of the dynamic incentives… wherein the score represents a predicted likelihood that the user will accept a corresponding incentive…”, and “selecting… a dynamic incentive associated with a highest score…” describes a mathematical process for identifying an incentive, which does no more than further describe the abstract idea and/or represent the addition of one abstract idea (organizing human activity) to another (mathematics) (“Applicant Arguments…”, page 12 (2), (3)) which results in a combination that is itself abstract (MPEP 2106.04, II, A, 2). Nonetheless, Applicant characterizes the related problem as “technical”. For example, Applicant states claim 8 addresses “latency and usability in merchant flows” (‘Applicant Arguments…”, page 12, (1); page 12, (4)). However, the claim lacks technological details beyond a “server” comprising “payment plan manager” and “incentives manager”, where the “server”, “payment plan manager” and “incentives manager” do no more than implement the abstract which is not sufficient for improving computer functionality or improving another technology or technological field. Similarly, with respect to “UI” (“Applicant Arguments…”, page 12, (3), (4)), the claim lacks interface details other than as a device that presents the incentive to a user (“presenting an offer to the user via a user interface device…”). Further, “merchant flows” are not inherently a technological problem. Regarding APIs (“Applicant Arguments…”, page 13, (4)), claim 8 is silent the term. Claims 11 and 13 recite an “application programming interface” (API). However, in each instance the API does no more than generate (claim 11, “generating, by an application programming interface (API), a plurality of dynamic incentives…”) and receive a request for (claim 13, “wherein receiving the request for the installment payment plan incentive… comprises obtaining the request via an application programming interface (API)…”) incentives, which has been held to be insufficient for providing a practical application (MPEP 2106.05(f), (1), (2)). And, as the claimed technology (e.g. server, API) does no more than implement or serve as a tool to implement the abstract idea they do not improve the functioning of a computer or improve another technology or technological field (“Applicant Arguments…”, pages 14-15, (1)-(5)). 07-30-03-h AIA Claim interpretation Non-functional descriptive material 4. Claim 8 recites “A method … performed by a server… the method comprising: …; calculating… a score… wherein the score represents a predicted likelihood that the user will accept a corresponding incentive from the dynamic incentives in a context of the installment payment plan” The language “wherein the score represents a predicted likelihood that the user will accept a corresponding incentive from the dynamic incentives in a context of the installment payment plan” does no more than provide an interpretation of the score. In other words, there is not a functional relationship between the “score” and the server in which it is stored, what the score represents will not distinguish the claim from the prior art (MPEP 2111.05). Intended use 5. Claim 8 “presenting an offer… for acceptance or rejection…” The language “for acceptance or rejection” merely describes the intent of the “offer” and therefore, will not differentiate the claim over the prior art (MPEP 2103 I C). Claim Rejections - 35 USC § 101 07-04-01 AIA 07-04 6. 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. 7. Claims 8-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more. 8. Claim 8 recites- receiving… from a [merchant], an indication that a user has initiated a transaction to purchase an item or service from a merchant; receiving… during the transaction, a request for an installment payment plan incentive customized for the user; collecting… user-specific data associated with interests and preferences of the user from transaction history data and other user specific-data from an issuer of a payment card used in the transaction, the user-specific data further comprising dates of purchases, merchants associated with prior transactions, merchant locations of the prior transactions, payment card category, issuer of the payment card, browsing history, location of the user, and incentive history; receiving… a set of user-configured rules from at least one of a lender and the issuer; applying … the set of user-configured rules to the user-specific data, the set of user-configurable rules being merchant-configurable rules and issuer-configurable rules that define preferences and thresholds for the merchant and the issuer of the payment card; based on the application of the set of user-configurable rules to the user-specific data, generating … dynamic incentives that are customized to the user and are associated with an installment payment plan, wherein the dynamic incentives are customized to the user based on application of at least the merchant-configurable rules and the issuer-configurable rules to the user-specific data; calculating… a score for each of the dynamic incentives, the score associated with each dynamic incentive indicating a priority associated with that dynamic incentive, wherein the score represents a predicted likelihood that the user will accept a corresponding incentive from the dynamic incentives in a context of the installment payment plan; selecting … a dynamic incentive associated with a highest score for presentation to the user; sending… the selected dynamic incentive to the lender; and presenting an offer to the user…for acceptance or rejection, the offer comprising the installment payment plan and the selected dynamic incentive customized for the user in real-time during the transaction. Therefore, the claim recites “providing incentives to a customer”, which is a commercial or legal interaction and/or managing personal behavior or relationships or interactions between people, (including social activities, teaching, and following rules or instructions) (i.e. organizing human activity) and an abstract idea. The additional elements of “server comprising an incentives manager and a payment plan manager”, “webpage”, “browsing” and “user interface device” represent the use of a computer, or computer technology, as a tool to implement the abstract idea and/or generally link the abstract idea to a particular technological environment or field of use. And, as the additional elements do no more than represent the use of a computer, or computer technology, as a tool to perform providing incentives to a customer and/or generally link the abstract idea to a particular technological environment or field of use, they do not improve computer functionality or provide an improvement to another technology or technological field. Hence, claim 8 is not patent eligible. 9. Claim 9 recites “wherein each score indicates a predicted level of desirability of each incentive in the dynamic incentives to the user” and “wherein the method further comprises providing a recommendation for the selected dynamic incentive for pairing with the installment payment plan offered to the user” which further describe the abstract idea of “providing incentives to a customer”. 10. Claim 10 recites “improving an acceptance rate associated with the installment payment plan by updating… at least one rule in the set of user-configured rules”, which further describes the abstract idea of “providing incentives to a customer”. The additional element of “machine learning component” represents the use of a computer, or computer technology, as a tool to implement the abstract idea and/or generally link the abstract idea to a particular technological environment or field of use. And, as the additional element does no more than represent the use of a computer, or computer technology, as a tool to implement the abstract idea and/or generally link the abstract idea to a particular technological environment or field of use, it does not improve computer functionality or provide an improvement to another technology or technological field. 11. Claim 11 recites “generating… a plurality of dynamic incentives corresponding to a plurality of plan options customized for the user… the plurality of plan options comprising a first installment payment plan and a second installment payment plan available from the merchant or a lender” and “presenting an offer to the user… wherein the offer comprises the first installment payment plan paired with a first dynamic incentive and the second installment payment plan paired with a second dynamic incentive” which further describe the abstract idea of “providing incentives to a customer”. The additional elements of “by an application programming interface”, “executing the incentives manager associated with a cloud server” and “the user interface device” represent the use of a computer, or computer technology, as a tool to implement the abstract idea and/or generally link the abstract idea to a particular technological environment or field of use. With respect to “by executing by the incentives manager …” as the limitation lacks technological details regarding an interaction with the “cloud server” it is no more that customizing a payment plan by a computer (i.e. “apply it”; MPEP 2106.05(f)(1)). And, as the additional elements do no more than represent the use of a computer, or computer technology, as a tool to implement the abstract idea and/or generally link the abstract idea to a particular technological environment or field of use, they do not improve computer functionality or provide an improvement to another technology or technological field. 12. Claim 12 recites “analyzing the user-specific data associated with the user and the transaction history data associated with the user and the transaction”, “generating an eligibility score based on a result of analysis of the user-specific data and the transaction history data”, “determining that the eligibility score indicates the user is eligible for dynamic incentives” and “providing a second installment payment plan to the user with a dynamic incentive customized to the user based on the eligibility score indicating the user is eligible for dynamic incentives” which further describe the abstract idea of “providing incentives to a customer”. 13. Claim 13 recites “wherein receiving the request for the installment payment plan incentive customized for the user comprises obtaining the request via … from a merchant … during the transaction”, “wherein collecting the user-specific data comprises retrieving the user-specific data from a merchant… and an issuer…” and “wherein calculating the score for each of the dynamic incentives and selecting the dynamic incentive associated with the highest score are performed while the user is interacting… associated with the merchant to complete the transaction” which further describes the abstract idea of “providing incentives to a customer”. The additional elements of “application programming interface (API)”, “checkout system”, “merchant system”, “issuer system” “via a communications interface of a computing device” and “while the user is interacting with a checkout user interface” represent the use of a computer or computer technology as a tool to implement the abstract idea and/or generally link the abstract idea to a particular technological environment or field of use. With respect to “[wherein collecting]… retrieving from a merchant system and an issuer system via a communications interface of a computing device” this is no more than receiving data and it has been held that mere utilization of a computer in its ordinary capacity (e.g. send, receive, store, output) to perform an economic or other task is not sufficient for providing a practical application or significantly more (MPEP 2106.05(f)(2)). With respect to “while the user is interacting with a checkout interface”, as the language lacks technological details regarding how the “incentives manager” (claim 8 “collecting, by the incentives manager…”) interacts with the “checkout interface”, it does no more than link the “collecting” to a particular technological environment or field of use (MPEP 2106.05(f)(1)). And, as the additional elements do no more than represent the use of a computer, or computer technology, as a tool to implement the abstract idea and/or generally link the abstract idea to a particular technological environment or field of use, they do not improve computer functionality or provide an improvement to another technology or technological field. 14. Claim 14 recites “prompting a user to opt-in to a dynamic incentives service via…”, “receiving an indication that the user selected an option to opt-in” and “onboarding the user into the dynamic incentives service based on the user selecting an option to opt-in”, which further describe the abstract idea of “providing incentives to a customer”. The additional element of “user device” represents the use of a computer, or computer technology, as a tool to implement the abstract idea and/or generally link the abstract idea to a particular technological environment or field of use. And, as the additional element does no more than represent the use of a computer, or computer technology, as a tool to implement the abstract idea and/or generally link the abstract idea to a particular technological environment or field of use, it does not improve computer functionality or provide an improvement to another technology or technological field. Claim Rejections - 35 USC § 112(a) 07-30-01 AIA 15 . The following is a quotation of the first paragraph of 35 U.S.C. 112(a): (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. 07-31-01 16. Claims 8-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. New Matter 17. Claim 8 recites “sending, by the payment plan manager, the selected dynamic incentive to the lender”. However, according to Applicant’s Specification, the lender receives a “dynamic incentive” from an “incentives manager” and not the “payment plan manager” (PGPub, para 123). Claims 9-14 are also rejected as each depends from claim 8. Claim Rejections-35 U.S.C. § 112(b) 07-30-02 AIA 18. The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 07-34-01 19. Claims 8-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Lack of antecedent basis 20. Claim 8 recites “the set of user-configurable rules” in the second line of “applying…”. There is insufficient antecedent basis for this limitation in the claim. More than one interpretation 21. Claim 8 recites: “ applying , by the incentives manager, the set of user-configured rules to the user -specific data… the set of user-configurable rules being merchant-configurable rules and issuer-configurable rules…” and “ based on the application … generating, by the incentives manager, dynamic incentives that are customized to the user and are associated with an installment payment plan, wherein the dynamic incentives are customized to the user based on application of at least the merchant-configurable rules and the issuer-configurable rules to the user-specific data”. With respect to “the dynamic incentives are customized to the user based on application of at least the merchant-configurable rules and the issuer-configurable rules to the user-specific data”, because the customization is based “on application” it is unclear whether the application refers to the initial application of the “the set of user-configurable rules being merchant-configurable rules and issuer-configurable rules” (“applying… the set of user-configurable rules being merchant-configurable rules and issuer-configurable rules”) or another distinct application of the “the set of user-configurable rules being merchant-configurable rules and issuer-configurable rules” (MPEP 2173.02 I). 22. Claim 10 recites “improving… by a machine learning component…”. However, according to the preamble of claim 8, from which claim 10 depends, the “improving” is performed by a “server comprising an incentives manager and a payment plan manager”. Therefore, as the “machine learning component” is neither part of the “server”, “incentives manager” or “payment plan manager”, it is unclear whether the “improving” step is performed by the “server” or a separate device that includes the “machine learning component”. 23. Claim 11 recites “generating, by an application programming interface (API) , … to a plurality of payment plan options customized for the user by executing the incentives manager associated with a cloud server ” The “generating” of claim 11 is performed by “an application programming interface (API)”. According to claim 8, from which claim 11 depends, however, the method is performed by a “server comprising an incentives manager and a payment plan manager”. Therefore, it is unclear whether “generating” is performed by the “server” or a separate “API”. Additionally, giving the language “the incentives manager associated with a cloud server” its broadest reasonable interpretation, “associated with a cloud server” includes an “incentives manager” that is comprised in a “cloud server”. However, as the method is performed by a server that comprises the incentives manager (A method… performed by a server comprising an incentives manager…), it is not clear whether the “incentives manager” of claim 11 is a component of the “server” or a “cloud server”. Unattributed functionality 24. Claim 8 recites “presenting an offer to the user via a user interface device…”. According to the preamble, claim 8 is performed by a “server comprising an incentives manager and a payment plan manager”. While, the other method steps of claim 8 are identified as being performed by either the “incentives manager” or the “payment plan manager”, the “presenting…” step is silent. Therefore, it is unclear whether the step is performed by the “server” alone, or the “incentives manager”, “payment plan manager” or by a combination of the two. The rationale applies to claims 9 (“providing a recommendation…”), 10 (“improving…”), 12 (“analyzing…; generating…; determining…; providing…”) and 14 (“prompting..”, “receiving…” and “onboarding…”), as well. Dependent Claims 25. Claims 9-14 are also rejected as each depends from claim 8. Conclusion 07-96 AIA 26. The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure : Goteti et al. teach automated loan production system that matches borrowers and lenders including checking fraud merchant score and presenting offers to borrowers at a POS platform 27. Any inquiry concerning this communication or earlier communications from the examiner should be directed to CALVIN L HEWITT II whose telephone number is (571) 272-6709. The Examiner can normally be reached Monday-Friday 10a-7p. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /CALVIN L HEWITT II/Supervisory Patent Examiner, Art Unit 3692 Application/Control Number: 18/448,105 Page 2 Art Unit: 4100 Application/Control Number: 18/448,105 Page 3 Art Unit: 4100 Application/Control Number: 18/448,105 Page 4 Art Unit: 4100 Application/Control Number: 18/448,105 Page 5 Art Unit: 4100 Application/Control Number: 18/448,105 Page 6 Art Unit: 4100 Application/Control Number: 18/448,105 Page 7 Art Unit: 4100 Application/Control Number: 18/448,105 Page 8 Art Unit: 4100 Application/Control Number: 18/448,105 Page 9 Art Unit: 4100 Application/Control Number: 18/448,105 Page 10 Art Unit: 4100 Application/Control Number: 18/448,105 Page 11 Art Unit: 4100 Application/Control Number: 18/448,105 Page 12 Art Unit: 4100 Application/Control Number: 18/448,105 Page 13 Art Unit: 4100 Application/Control Number: 18/448,105 Page 14 Art Unit: 4100
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