Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
1. This office action is responsive to amendment filed on 11/25/2025. Claims 1, 9, 10, 12, and 18 are amended. Claims 2-21 are pending examination.
Claim Rejections - 35 USC § 101
2. 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 rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim(s) 10 is/are drawn to method (i.e., a process), claim(s) 2 is/are drawn to a system (i.e., a machine/manufacture), and claim(s) 18 is/are drawn to non-transitory computer readable medium (i.e., a machine/manufacture). As such, claims 2, 10, and 18 is/are drawn to one of the statutory categories of invention.
Claims 2-21 are directed to providing coupons to a digital wallet during transaction with a point of sale of the merchant based on item being purchased and preferences of the user. Specifically, claim(s) 2, 10, and 18 recite(s) determine, from online content, a first digital coupon corresponding to user preferences for coupons usable by a digital wallet of a user during electronic transaction processing; extract coupon data for the first digital coupon from the online content; store storing the coupon data in associating with the digital wallet; receive, a transaction request for an item for a merchant, wherein the transaction request comprises a digital token for the digital wallet; identify the coupon data for the first digital coupon and any additional coupon data available via the digital wallet based on the item and the merchant; determine, based at least on the user preferences and the identifying, the first digital coupon to recommend for the transaction request during a checkout of the item; generate a digital application notification based on the first digital coupon; sending, the digital application notification to the POS device of the merchant during the checkout of the item; automatically apply the first digital coupon to the checkout at the POS for the item; updating a price of the item based on the first digital coupon applied to the checkout independent of the user or the merchant inputting the coupon data for the checkout; and removing the coupon data from availability via the digital wallet based on the first digital coupon being used to process the checkout for the item, which is grouped within the Methods Of Organizing Human Activity and is similar to the concept of (commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors business relations) grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 54 (January 7, 2019)).
The Claim limitations are listed under Methods Of Organizing Human Activity, and Mental Processes and grouped as following:
determine, from online content, a first digital coupon corresponding to user preferences for coupons usable by a digital wallet of a user during electronic transaction processing; which is similar to the concept of (advertising, marketing or sales activities or behaviors business relations),
extract coupon data for the first digital coupon from the online content; store storing the coupon data in associating with the digital wallet; receive, a transaction request for an item for a merchant, wherein the transaction request comprises a digital token for the digital wallet; identify the coupon data for the first digital coupon and any additional coupon data available via the digital wallet based on the item and the merchant; which is similar to the concept of (advertising, marketing or sales activities or behaviors business relations),
determine, based at least on the user preferences and the identifying, the first digital coupon to recommend for the transaction request during a checkout of the item; generate a digital application notification based on the first digital coupon; which is similar to the concept of (advertising, marketing or sales activities or behaviors business relations),
sending, the digital application notification to the POS device of the merchant during the checkout of the item; automatically apply the first digital coupon to the checkout at the POS for the item; which is similar to the concept of (advertising, marketing or sales activities or behaviors business relations),
updating a price of the item based on the first digital coupon applied to the checkout independent of the user or the merchant inputting the coupon data for the checkout; and removing the coupon data from availability via the digital wallet based on the first digital coupon being used to process the checkout for the item; which is similar to the concept of (advertising, marketing or sales activities or behaviors business relations).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 54-55 (January 7, 2019)), the additional element(s) of the claim(s) such as system, non-transitory memory; hardware processors, non-transitory memory, network, point of sale (POS) device merely use(s) a computer as a tool to perform an abstract idea and/or generally link(s) the use of a judicial exception to a particular technological environment. Specifically, the system, non-transitory memory; hardware processors, non-transitory memory, network, point of sale (POS) device perform(s) the steps or functions of determine, from online content, a first digital coupon corresponding to user preferences for coupons usable by a digital wallet of a user during electronic transaction processing; extract coupon data for the first digital coupon from the online content; store storing the coupon data in associating with the digital wallet; receive, a transaction request for an item for a merchant, wherein the transaction request comprises a digital token for the digital wallet; identify the coupon data for the first digital coupon and any additional coupon data available via the digital wallet based on the item and the merchant; determine, based at least on the user preferences and the identifying, the first digital coupon to recommend for the transaction request during a checkout of the item; generate a digital application notification based on the first digital coupon; sending, the digital application notification to the POS device of the merchant during the checkout of the item; automatically apply the first digital coupon to the checkout at the POS for the item; updating a price of the item based on the first digital coupon applied to the checkout independent of the user or the merchant inputting the coupon data for the checkout; and removing the coupon data from availability via the digital wallet based on the first digital coupon being used to process the checkout for the item. The use of a processor/computer as a tool to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 56 (January 7, 2019)), the additional element(s) of using a system, non-transitory memory; hardware processors, non-transitory memory, network, point of sale (POS) device to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of providing coupons to a digital wallet during transaction with a point of sale of the merchant based on item being purchased and preferences of the user. As discussed above, taking the claim elements separately, the system, non-transitory memory; hardware processors, non-transitory memory, network, point of sale (POS) device perform(s) the steps or functions of determine, from online content, a first digital coupon corresponding to user preferences for coupons usable by a digital wallet of a user during electronic transaction processing; extract coupon data for the first digital coupon from the online content; store storing the coupon data in associating with the digital wallet; receive, a transaction request for an item for a merchant, wherein the transaction request comprises a digital token for the digital wallet; identify the coupon data for the first digital coupon and any additional coupon data available via the digital wallet based on the item and the merchant; determine, based at least on the user preferences and the identifying, the first digital coupon to recommend for the transaction request during a checkout of the item; generate a digital application notification based on the first digital coupon; sending, the digital application notification to the POS device of the merchant during the checkout of the item; automatically apply the first digital coupon to the checkout at the POS for the item; updating a price of the item based on the first digital coupon applied to the checkout independent of the user or the merchant inputting the coupon data for the checkout; and removing the coupon data from availability via the digital wallet based on the first digital coupon being used to process the checkout for the item. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of providing coupons to a digital wallet during transaction with a point of sale of the merchant based on item being purchased and preferences of the user. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
As for dependent claims 3-9, and 11-17, and 19-21 further describe the abstract idea of providing coupons to a digital wallet during transaction with a point of sale of the merchant based on item being purchased and preferences of the user. Claim(s) 3-9, and 11-17, and 19-21 does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 56 (January 7, 2019)), the additional element(s) of using a system, network, mobile device, POS device, digital communication platform to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of providing coupons to a digital wallet during transaction with a point of sale of the merchant based on item being purchased and preferences of the user. As discussed above, taking the claim elements separately, the system, network, mobile device, POS device, digital communication platform perform(s) the steps or functions of wherein the first digital coupon comprises a rebate for the item, and wherein executing the instructions further cause to the operations further comprise: determine, upon a completion of the checkout, that the user qualifies for receiving the rebate for the item; and process the rebate using the digital wallet, wherein the processing the rebate includes providing a reimbursement corresponding to at least a portion of an amount of the transaction request for the rebate to the digital wallet; wherein the rebate is provided by a third-party provider, and wherein processing the rebate comprises obtaining the reimbursement from the third-party provider; wherein the transaction request is received the user and corresponds to a payment request to be made to an entity associated with the POS device for the item; receive a scan of a physical coupon associated with the online content; determine the online content based on the scan; and associate the online content with the user preferences; process the transaction request for the item using the digital wallet and the coupon data; receive a request to share a digital version of the first digital coupon of a different user; and transmit, the digital version to the other device based on the request; wherein the first digital coupon is determined based on providing a largest saving for the item, and the operations further comprise validating the first digital coupon, based on one or more publications available over a network for the coupons. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of providing coupons to a digital wallet during transaction with a point of sale of the merchant based on item being purchased and preferences of the user. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Subject Matter Overcoming the Cited Prior Art
3. As detailed in the Office Action the Examiner has not applied a prior art rejection to Claim(s) 2-21 when viewed in combination with the corresponding independent claims, however the claim(s) has/have been rejected other grounds as detailed in the Office Action.
The Office is unaware of any references that teach the combination of limitations found in the claims.
In reference to independent claims 2, 10, and 18, the Office is unaware of any references that teach, individually or without an unreasonable combination of references, the combination of limitations steps found in the claims, the most relevant prior art identified by the Examiner is/are 20120203610. It teaches coupon by a mobile device may be based on a pre-determined algorithm that takes into account various parameters including the place of purchase… the mobile device may identify the place of purchase and the type of purchase made by the user and the mobile wallet application, when executed by the processor of the mobile device, typically presents the user with a graphical user interface (GUI) that allows the user to select a payment vehicle to use for a transaction from a plurality of payment vehicles stored in the mobile device. In one embodiment of the invention, the mobile wallet application presents a GUI that displays electronic coupons to the user that the user has downloaded onto the mobile device from a coupon server. The GUI displays these electronic coupons to the user as coupons. However, when a user desires to use one of these coupons during a transaction, the mobile device communicates these electronic coupons to the payment terminal using a gift card data format (i.e., an existing electronic gift card transmission protocol in which the payment terminal is already configured to communicate and receive or extract the coupon from a coupon server in a coupon data format and converts the coupon into a gift card data format for communication to the payment terminal, but it does not explicitly teaches determine, from online content, a first digital coupon corresponding to user preferences, extract coupon data for the first digital coupon from the online content and store the coupon data in associating with the digital wallet and identify the coupon data for the first digital coupon and any additional coupon data available via the digital wallet based on the item and the merchant and updating a price of the item at the POS device based on the first digital coupon applied to the checkout independent of the user or the merchant inputting the coupon data for the checkout; and removing the coupon data from availability via the digital wallet based on the first digital coupon being used to process the checkout for the item. Therefore, it lacks the combination of claimed elements as claimed by the independent claims.
The second most relevant prior art found by the Examiner is 11748748. It teaches a user of a mobile device may scan a coupon from a website. The coupon is associated with a transactional token managed by token processing system 402. The user then applies the token to a transaction at the merchant location associated with the coupon offer (e.g., 30% off at the merchant). The merchant can scan the coupon/token in at the point of sale. Token processing system 402 then changes the state of the token from a coupon into what was described above as a trophy. The trophy data stores when and where the user executed the coupon, but it does not explicitly teaches receive, over a network, a transaction request for an item at a point of sale (POS) device for a merchant, wherein the transaction request comprises a digital token for the digital wallet and updating a price of the item at the POS device based on the first digital coupon applied to the checkout independent of the user or the merchant inputting the coupon data for the checkout; and removing the coupon data from availability via the digital wallet based on the first digital coupon being used to process the checkout for the item. Therefore, it lacks the combination of claimed elements as claimed by the independent claims.
The third most relevant prior art found by the Examiner is 20050131761. It teaches providing a reward-based digital mobile coupon environment, where the digital coupons may be shared among peers, and once the coupon has been authenticated, the ECT sends information about the corresponding discount to the cash register terminal in block 312), but it does not explicitly teaches sending, via the network, the digital application notification to the POS device of the merchant during the checkout of the item; and automatically apply the coupon to the checkout at the POS for the item and updating a price of the item at the POS device based on the first digital coupon applied to the checkout independent of the user or the merchant inputting the coupon data for the checkout; and removing the coupon data from availability via the digital wallet based on the first digital coupon being used to process the checkout for the item. Therefore, it lacks the combination of claimed elements as claimed by the independent claims.
Additional relevant prior art found by the Examiner are 20040049427, 20110251892, 20110225044, 2011015403, 20040049427, and 20030184430 are similar but do not teach any of the limitations of claim 2.
Examiner note: none of the references or combined references teach the combination of limitations of claim 2, 10, and 18 or no reference found that would teaches the combination of limitations of claim 2, 10, and 18, especially claim limitations: sending, via the network, the digital application notification to the POS device of the merchant during the checkout of the item; and automatically apply the coupon to the checkout at the POS for the item; updating a price of the item at the POS device based on the first digital coupon applied to the checkout independent of the user or the merchant inputting the coupon data for the checkout; and removing the coupon data from availability via the digital wallet based on the first digital coupon being used to process the checkout for the item, and which is an idea of methods and systems are provided for electronically managing coupons. The user no longer has to clip and organize coupons. The need for hand processing of coupons is substantially reduced. Rebates or payments for coupons can be substantially hastened and can be deposited directly into a user’s bank, credit card, or payment provider account. Merchants and manufactures no longer have to be concerned with receiving bad (e.g., invalid, expired, or counterfeit) coupons. Thus, the electronic coupon management system benefits the users, merchants, and manufactures.
When taken as a whole, the claims are not rendered obvious as the available prior art does not suggest or otherwise render obvious the noted features nor does the available prior art suggest or otherwise render obvious further modification of the evidence at hand. Such modifications would require substantial reconstruction relying solely on improper hindsight bias, and thus would not be obvious. Therefore, the prior art rejection has been withdrawn.
NPL Reference
4. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The NPL “Google Introduces Google Wallet, Works At Over 300,000 MasterCard PayPass Merchant Locations” describes “Google wants to put tickets, credit cards, receipts, coupons, and even your driver's license in your Google Wallet. A trial begins this summer in New York, Portland, and San Francisco this summer, with other cities to follow. It all works over contact-less NFC technology that's currently available in the Google Nexus S 4G (from Sprint), and coming to other smartphones in the near future. To pay for a meal at a fast food restaurant, all you'll need to do is wave your phone in front of an NFC-chip reader. It sounds proprietary, but Google hopes to piggyback off MasterCard's PayPass system that's already in effect.”.
Pertinent Art
5. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Reference#20050021664 teaches similar invention which describes FIG. 1 illustrates an overview of the process according to the first embodiment of the invention. In step 1000, the first user requests a phone conversation with a second user. As will be described in detail with reference to FIGS. 2 through 9, this request can be made from either a data network node (e.g., a network connected computer) or from a telephone network node (e.g., a standard telephone). In step 1010, an intermediary coupon server (described in detail with reference to FIGS. 2 through 7) receives the first user's request and attempts to establish the telephone call. In step 1020, the success of this attempt is checked, and if successful, the process terminates in step 1070. If not, then the coupon server asks the first user whether they would like to send the second user a communications capability coupon in step 1030. If not, the process terminates in step 1070. If they do, then, in step 1040, the coupon server creates a coupon and sends it to the second user. As will be described in detail with reference to FIGS. 4 through 7, this coupon may be modified between the time it is created and the second user responds to it. These modifications include, but are not limited to: 1) the coupon server temporarily deactivating the coupon for periods when the first user is unavailable; and 2) the coupon server deleting the coupon in response to a request from the first user. In step 1050, the coupon server waits for the second user to respond to the coupon and, in step 1055 the coupon server checks this response. If the second user denies the request, then, in step 1065, the coupon server deletes the coupon, following which the process terminates in step 1070. If the second user accepts the coupon's request, then the coupon server establishes a telephone call between the first and second user at step 1060. Following this, control continues at step 1065 where the coupon server deletes the coupon, after which the process ends in step 1070.
Response to Arguments
6. Applicant's arguments filed 11/25/2025 have been fully considered but they are not persuasive.
A. Applicant argues that the claims are not directed to a judicial exception under Step 2A Prong Two. Examiner respectfully disagrees. As for Step 2A Prong Two, the claim limitations do not include additional elements in the claim that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, and the claim is not more than a drafting effort designed to monopolize the judicial exception and the claim limitation simply describe the abstract idea. The limitation directed to providing coupons to a digital wallet during transaction with a point of sale of the merchant based on item being purchased and preferences of the user does not add technical improvement to the abstract idea. The recitations to “system, non-transitory memory; hardware processors, non-transitory memory, network, point of sale (POS) device” perform(s) the steps or functions of determine, from online content, a first digital coupon corresponding to user preferences for coupons usable by a digital wallet of a user during electronic transaction processing; extract coupon data for the first digital coupon from the online content; store storing the coupon data in associating with the digital wallet; receive, a transaction request for an item for a merchant, wherein the transaction request comprises a digital token for the digital wallet; identify the coupon data for the first digital coupon and any additional coupon data available via the digital wallet based on the item and the merchant; determine, based at least on the user preferences and the identifying, the first digital coupon to recommend for the transaction request during a checkout of the item; generate a digital application notification based on the first digital coupon; sending, the digital application notification to the POS device of the merchant during the checkout of the item; automatically apply the first digital coupon to the checkout at the POS for the item; updating a price of the item based on the first digital coupon applied to the checkout independent of the user or the merchant inputting the coupon data for the checkout; and removing the coupon data from availability via the digital wallet based on the first digital coupon being used to process the checkout for the item. The use of a processor/computer as a tool to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
As for Step 2A Prong One, of the Abstract idea is directed towards the abstract idea of providing coupons to a digital wallet during transaction with a point of sale of the merchant based on item being purchased and preferences of the user which is grouped within the Methods Of Organizing Human Activity and is similar to the concept of (commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors business relations) and Mental Processes and is similar to the concept of (concepts performed in the human mind (including an observation, evaluation, judgement, opinion) grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 54 (January 7, 2019)). Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53-54 (January 7, 2019)), (MPEP § 2106.04).
As for Step 2B, The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 56 (January 7, 2019)), the limitation directed to providing coupons to a digital wallet during transaction with a point of sale of the merchant based on item being purchased and preferences of the user does not add significantly more to the abstract idea. Furthermore, using well-known computer functions to execute an abstract idea does not constitute significantly more. The recitations to “system, non-transitory memory; hardware processors, non-transitory memory, network, point of sale (POS) device” are generically recited computer structure. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of providing coupons to a digital wallet during transaction with a point of sale of the merchant based on item being purchased and preferences of the user. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
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 W1`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 extension fee 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 date of this final action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAREK ELCHANTI whose telephone number is (571) 272-9638. The examiner can normally be reached on Flex Mon - Thur 7-7:00 and Fri 7-4:00.
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/TAREK ELCHANTI/Primary Examiner, Art Unit 3621B