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 March 2, 2026 cancelled no claims. Claims 41, 43, 51, 53, and 60 were amended and no new claims were added. Thus, the currently pending claims addressed below are claims 41-60.
Claim Interpretation
The following terms are not included in the applicant’s specification and, as such, have required the examiner to interpret the terms in light of the applicant’s specification:
an electronic application: an application (i.e., software) executing on the user mobile device (based on paragraphs 31, 40, and 56 of the applicant’s specification);
a first entity: a vendor/dealer of a product which provides offers for sale of a product (Applicant’s specification in at least paragraphs 2, 5, and 15 of the applicant’s specification)
a second entity: marketing system 120 that provides the incentives and vendor offers to a customer (Applicant’s specification in at least paragraphs 24, 26-27 and 29 of the applicant’s specification).
Claim Rejections - 35 USC § 112
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.
Claims 41-60 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.
Independent claim 41 has been amended to recite “generating at least one selectable notification element that is operable to launch a website page or access a portion of an electronic application configured to initiate an execution of the at least one incentive, and that includes information associated with the at least one offer and the at least one incentive magnitude;” and “in response to the selection, one or more of launching the website page or accessing the portion of the electronic application configured to initiate the execution of the at least one incentive ”. Independent claims 51 and 60 have been amended to recite substantially similar limitations.
The examiner can find no support for these limitation in the applicant’s disclosure. The applicant asserts that paragraph 39 supports the limitations of the claim as amended. The examiner disagrees. Paragraph 39 neither discloses a selectable notification element nor an electronic application, much less a selectable notification element that is operable to access a portion of an electronic application configure to initiate an execution of the at least one incentive. According to paragraph 39, the marketing system inserts advertisements into a stream based on the first data and/or second data, wherein the stream is associated with an index or search utility that is accessible via the mobile device. From paragraph 31 we know that the "stream" of offers generated by the marketing system generally encompasses a series of messages, e.g., posts, notifications, or the like that may be accessible via the mobile device, e.g., via an electronic application, website page, or the like; the messages in the stream may be selectable via the mobile device; and selecting a particular message may cause the mobile device to access the URL or other data associated with the offer that enables the mobile device to, for example, execute the offer . Thus, at best paragraph 39, when read in light of paragraph 31, supports generating at least one selectable offer that is operable to launch a website page to initiate an execution of the at least one incentive. It clearly does not support generating at least one selectable notification element that is operable to access a portion of an electronic application configured to initiate an execution of the at least one incentive. According to paragraphs 31 and 39, the offer is selectable to access the URL or other data associated with the offer. There is no indication in the disclosure that the selectable offer accesses a portion of the electronic application configured to initiate an execution of the at least one incentive”. The closes support appears to be in paragraphs 56-57 of the applicant’s specification where it discloses that a “notification” that is output “in conjunction with an electronic application” that is “selectable by the user” and causes the “electronic application” to “display one or more of the offer, information associated with the offer, a website page corresponding to the offer generated by the marketing system 120, a website page corresponding to the offer that is associated with the vendor system 110, a portion of the stream including the offer, or the like”. Thus, at best, the applicant’s disclosure supports generating a selectable notification element that is operable to display a website page in an electronic application to initiate an execution of the incentive, and that includes information associated with the at least one offer and the at least one incentive magnitude. However, the applicant’s specification makes no mention of a portion of an electronic application, accessing a portion of an electronic application”, or a selectable notification element, enabling the user to initiate execution of the incentive by accessing a portion of the electronic application”. As such it is clear that the applicant’s disclosure does not support “generating at least one selectable notification element that is operable to launch a website page or access a portion of an electronic application configured to initiate an execution of the at least one incentive, and that includes information associated with the at least one offer and the at least one incentive magnitude;”.
Furthermore, the examiner cannot find support in the applicant’s disclosure for “in response to the selection, one or more of launching the website page or accessing the portion of the electronic application configured to initiate the execution of the at least one incentive ”.”. The closest support in the applicant’s disclosure appears to be paragraphs 56-57 of the applicant’s specification as cited above. As such, at best, the applicant’s disclosure supports “in response to the selection of the selectable notification element, enabling the user to initiate execution of the incentive by displaying the website page in the electronic application”. As such, it is clear that the applicant’s disclosure does not support “in response to the selection, one or more of launching the website page or accessing the portion of the electronic application configured to initiate the execution of the at least one incentive”.
Dependent claims 42-50 and 52-59 inherit the deficiencies of the claims from which they depend and, as such, are rejected by virtue of dependency.
For the purpose of prosecuting the claims the examiner is going to interpret the claims as if the limitations regarding accessing the portion of the electronic application have been removed. As such, the limitations of claim 41 with be interpreted as “generating at least one selectable notification element that is operable to launch a website page configured to initiate an execution of the at least one incentive, and that includes information associated with the at least one offer and the at least one incentive magnitude;” and “in response to the selection, launching the website page configured to initiate the execution of the at least one incentive”, wherein launching is interpreted as displaying.
Claims 41-60 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.
Independent claim 41 has been amended to recite: “determining positional assignments for the at least one selectable notification elements within a predefined interface layout based on the likelihoods of engagement of the at least one offer with the at least one incentive applied, wherein higher likelihoods correspond to positions associated with increased user visibility”; “transmitting a notification that includes the at least one selectable notification element and the positional assignments to an electronic application associated with the server system and operating on a user device associated with the user”; and via the electronic application operating on the user device: “on a graphical user interface, arranging the at least one selectable notification element based on the positional assignments”. Independent claims 51 and 60 have been amended to recite substantially similar limitations.
First, the examiner can find no support for “determining positional assignments for the at least one selectable notification elements within a predefined interface layout based on the likelihoods of engagement of the at least one offer with the at least one incentive applied, wherein higher likelihoods correspond to positions associated with increased user visibility” in the applicant’s disclosure. The applicant asserts that paragraph 39 supports the limitations of the claim as amended. The examiner disagrees. Neither paragraph 39, nor any other portion of the applicant disclosure mention an “layout”, much less an “interface layout” or “predefined interface layout”. Neither paragraph 39, nor any portion of the applicant’s disclosure mention “visibility”, much less “user visibility”, “increased user visibility”, or “positions associated with increased user visibility”. Neither paragraph 39, nor any other portion of the applicant disclosure mention an “layout”, much less an “interface layout” or “predefined interface layout”. Neither paragraph 39, nor any portion of the applicant’s disclosure mention determining “positional assignments”, much less “positional assignments within a predefined interface layout based on the likelihoods of engagement of the at least one offer”, or “positional assignments for the at least one selectable notification elements within a predefined interface layout based on the likelihoods of engagement of the at least one offer with the at least one incentive applied, wherein higher likelihoods correspond to positions associated with increased user visibility”. According to paragraph 39, the marketing system can insert offers into a stream chronologically in the order in which they are received, or arrange at least one offer in the stream based on the first data (i.e., one or more offers for sale of a product) or the second data (i.e., historical user data), such as by placing an offer with a high likelihood of engagement by the user before another offer with a lower likelihood of engagement. As such, based on paragraph 39, the marketing system might be said inherently support determining a positional assignment in the stream based on the offer having a higher likelihood of engagement than another offer and then immediately inserting offer at the determined position. However, the determined positional assignment claimed is transmitted to the electronic application, and the electronic application arranges the offer based on the positional assignment. Thus, paragraph 39 does not support determining “positional assignments” in the manner claimed. Additionally, based on paragraph 39, any positional assignment inherently determined by the marketing system, so that the marketing system can insert an offer based on the offer having a higher likelihood of engagement is much different “wherein the higher likelihoods correspond to positions associated with increased user visibility the offer”. In paragraph 39, the offer has a higher likelihood of engagement before it is inserted and, as such, the higher likelihood does not correspond to the position in which the marketing system inserts the offer. Therefore, it is clear that the applicant’s disclosure does not support “determining positional assignments for the at least one selectable notification elements within a predefined interface layout based on the likelihoods of engagement of the at least one offer with the at least one incentive applied, wherein higher likelihoods correspond to positions associated with increased user visibility”, and claims 41, 51 and 60, as currently amended, fail to comply with the written description requirement.
Second, the examiner can find no support for “transmitting a notification that includes the at least one selectable notification element and the positional assignments to an electronic application associated with the server system and operating on a user device associated with the user” in the applicant’s disclosure. Neither paragraph 39, nor any other portion of the applicant’s disclosure mention transmitting positional assignments. Paragraph 39, might arguably be said to inherently require a determination of a positional assignment so that the marketing system can perform the disclosed insertion of the offer into the stream. However, since the offer is inserted in the stream by the marketing system, any inherent determination of the position of insertion of said offer in the stream is not transmitted anywhere, much less to an electronic application operating on the user device. Therefore, it is clear that the applicant’s disclosure does not support “transmitting a notification that includes the at least one selectable notification element and the positional assignments to an electronic application associated with the server system and operating on a user device associated with the user”, and claims 41, 51 and 60, as currently amended, fail to comply with the written description requirement.
Finally, the examiner has been unable to find support in the applicant’s disclosure “on a graphical user interface, arranging the at least one selectable notification element based on the positional assignments”. Neither paragraph 39, nor any other portion of the applicant’s disclosure supports via the electronic application on the user device: arranging, on a graphical user interface, the at least one selectable notification element based on the positional assignments. According to paragraph 39, the marketing system inserts advertisements into a stream based on the first data and/or second data. Given the disclosure in paragraph 39, any application that receives this data would not need to arrange, on a graphical user interface, the data because the marketing system has already inserted it into the proper position with the stream. Instead, the graphical user interface would merely display the stream that is received from the marketing system. As such, it is clear that paragraph 39, cannot be said to support via the electronic application operating on the user device: “on a graphical user interface, arranging the at least one selectable notification element based on the positional assignments”. The examiner can find no portion of the applicant’s disclosure that could be said to support via the electronic application operating on the user device: “on a graphical user interface, arranging the at least one selectable notification element based on the positional assignments”. Perhaps, if the applicant assumes that since paragraph 31 mentions that the stream could be a series of messages on a website page, that the webpage inherently must include HTML code that describes the positional assignment of contents within the page, including the location of any hyperlinks therein, and when a browser application displays such a webpage it inherently must arrange, on a graphical user interface, the at least one selectable notification element based on the positional assignments. However, this is not the case. A webpage does not inherently need to include HTML code defining the positional assignment of hyperlink data that has been placed within a stream. Take for example, a web page such as YouTube which displays a stream of video content within a video player on the webpage. The video stream may have hyperlinks pre-embed within specific positions of the video stream, much like the stream of data in paragraph 39 has pre-embedded data therein. The browser application need not perform any arrangement of data based on the HTML code of the YouTube webpage to display the embedded hyperlink in the video being played in the video player. When the video reaches the prescribed point, the hyperlink is displayed as part of the video. In such, cases the execution of the html code by the browser cannot be said to arrange the at least one selectable notification element based on the positional assignments of the HTML code. As such, the limitation cannot be considered inherently supported by the applicants disclose. As such, it is clear that the applicant’s disclosure does not support “on a graphical user interface, arranging the at least one selectable notification element based on the positional assignments”, and claims 41, 51 and 60, as currently amended, fail to comply with the written description requirement.
Dependent claims 42-50 and 52-59 inherit the deficiencies of the claims from which they depend and, as such, are rejected by virtue of dependency.
As such, the examiner is going to interpret these limitations in the only manner consistent with the applicant’s disclosure. The limitation “determining positional assignments for the at least one selectable notification elements within a predefined interface layout based on the likelihoods of engagement of the at least one offer with the at least one incentive applied, wherein higher likelihoods correspond to positions associated with increased user visibility” will be interpreted as “inserting, by the server, an offer with a hyperlink, into a location on a notification webpage”. The limitation “transmitting a notification that includes the at least one selectable notification element and the positional assignments to an electronic application associated with the server system and operating on a user device associated with the user” will be interpreted as “transmitting, by the server, the notification webpage to the electronic application operating on the user device associated with the user. Finally, the limitation via the electronic application operating on the user device: “on a graphical user interface, arranging the at least one selectable notification element based on the positional assignments” with be interpreted as “displaying, on a graphical user interface by the electronic application operating on the user device, the notification webpage, wherein the notification webpage includes the offer with the hyperlink in the location”.
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 41-60 are directed to methods 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 41-60 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claim(s) 41, 43-45, 51, 53-55, and 60 recite(s) the following abstract idea: (Note: the first entity and second entity have been included as part of the abstract idea because they are outside the scope of the invention and, as such, cannot be considered an “additional element” of the claimed invention)
obtaining, by a user, data including (i) information regarding a plurality of offers for different items, wherein the at least one offer is associated with a first entity and (ii) information regarding historical information associated with the user;
transmitting, by the user and to a remote first entity, the data including (i) information regarding a plurality of offers for different items, wherein the at least one offer is associated with a first entity and (ii) information regarding historical information associated with the user;
receiving thereby obtaining, by the first entity, the data including (i) information regarding a plurality of offers for different items, wherein the at least one offer is associated with the first entity and (ii) information regarding historical information associated with the user
identifying, by the first entity and using a predictive model and based on the obtained data, at least one offer from amongst the plurality of offers predicted to have a likelihood of engagement by the user above a first predetermined likelihood threshold;
determining, by the first entity and using a further predictive model and based on the obtained data, at least one incentive magnitude configured to raise the likelihood of engagement for the at least one offer to a second predetermined likelihood threshold that is higher than the first predetermined likelihood threshold;
generating, by the first entity, at least one incentive for the at least one offer based on the determined incentive magnitude;
generating, by the first entity, at least one clickable notification link that is operable to launch a website page to initiate an execution of the at least incentive, and that includes a visual indication of information associated with the at least one offer and the at least one incentive magnitude, wherein:
the incentive is associated with a second entity that is different from the first entity and is associated with the first entity; and
the website page is associated with the second entity;
determining positional assignments for the at least one clickable notification link within a predefined interface layout based on the likelihoods of engagement of the at least one offer with the at least one incentive applied, wherein higher likelihoods correspond to positions associated with increased user visibility;
transmitting, by the first entity, a notification that includes the at least one clickable notification link and the positional assignments to a user;
receiving, by the user and from the first entity, the notification that includes the at least one clickable notification link, and the positional assignments;
arranging the at least one clickable notification element based on the positional assignments;
receiving a selection of one of the at least one clickable notification link by the user, thereby launching the website page configured to initiate the execution of the at least one incentive;
detecting, by the first entity, completion of the at least one offer with the first entity by receiving an electronic record indicative of the completion of the at least one offer; and
completing, by the first entity, the incentive only in response to the detecting.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely advertising, marketing, or sales related 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 server comprising at least one processor and a memory executing software (e.g., predictive machine-learning models) (i.e., general-purpose computer with generic computer components executing a generic machine learning model as per the Recentive Analytics decision);
a user device with a graphical user interface that executes software (e.g., an electronic application), wherein the graphical user interface displays information and accepts user input (e.g., a general-purpose computer with a generic computer element as per the Intellectual Ventures I v. Capital One decision); and
a selectable notification element (generic computer element as per the Intellectual Ventures I v. Capital One decision);
Considered individually, the additional elements amount to: a first general-purpose computer with generic computer components executing software, wherein the software includes generic machine learning software (i.e. a server with generic computer components) which is merely being used as a tool to apply the abstract idea; a second general-purpose computer executing software, wherein the software includes a generic user interface and a generic electronic application such as a browser (i.e., a user device with generic computer components) which is merely being used as a tool to apply a portion of the abstract idea; and a generic interface element (i.e., a selectable notification element) which is merely used as a tool in performing a portion of the abstract idea.
Considered in combination, the additional elements amount to: a first general-purpose computer (i.e. a server), executing software including generic machine learning model software (i.e., a predictive machine-learning model which performs every significant step of the abstract idea including the generation of the generic computer element (i.e., a selectable notification element); and a second general-purpose computer (i.e., a user device), executing software including a generic browser application to display a generic interactive interface (i.e., webpage), which performs the insignificant extra-solution activities of obtaining data, transmitting the obtained data, receiving a webpage which includes a selectable notification element and html code describing positional elements of the contents in the webpage (i.e., notification that includes at least one selectable notification element and the positional assignments), displaying a webpage in the manner required by the html code of the webpage, receiving user input, transmitting a request for a webpage, receiving the requested webpage, and displaying the requested webpage. Thus, the arrangement of devices results in a first general-purpose computer (i.e., a server) with generic computer components (i.e., at least one processor and a memory) and generic computer elements (i.e., a predictive machine-learning model and a selectable notification element) upon which the abstract idea is merely being applied, and a second general-purpose computer (i.e., a user device) executing software such as a browser application (i.e., an electronic application) to display a webpage (i.e., graphical user interface) with a hyperlink (i.e., selectable notification element ) which performs insignificant extra-solution activities which are insufficient to transform an abstract idea into a practical application. Neither the electronic application, the graphical user interface, the selectable notification element performs a significant function, instead the browser merely receive data representing a webpage that includes a hyperlink and html code describing the arrangement of hyperlink on the webpage, displays the received webpage in the manner required by the HTML code, wherein the browser receive user input indicating a selection of the hyperlink, transmits a request to display a new webpage associated with the hyperlink, receives the new webpage, and displays the new webpage. Thus, second general-purpose computer (i.e., a user device), executing software (e.g., a generic browser application and generic HTML code for display a webpage (generic interactive interface) is only required to perform insignificant extra-solution activities. In combination this amounts to no more than a first general-purpose computer which performs every significant step of the abstract idea and a second general-purpose computer which performs insignificant extra-solution activity of the abstract idea, wherein the first general-purpose computer and second general-purpose computer are merely being used as a tool to apply the abstract idea.
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, via an electronic application operating on a user device, data including (i) information regarding a plurality of offers for different items, wherein the at least one offer is associated with a first entity and (ii) information regarding historical information associated with a user associated with the user device (e.g., receiving data);
transmitting the obtained data including (i) information regarding a plurality of offers for different items, wherein the at least one offer is associated with a first entity and (ii) information regarding historical information associated with a user associated with the user device to the server system remote from the electronic application (e.g., transmitting data);
receiving thereby obtaining, by the server system, the obtained data including (i) information regarding a plurality of offers for different items, wherein the at least one offer is associated with a first entity and (ii) information regarding historical information associated with a user associated with the user device (e.g., receiving data);
transmitting, by the server system, a notification (e.g., a webpage) that includes the at least one selectable notification element (e.g., hyperlink) and the positional assignments (e.g., HTML code describing how the webpage is to be displayed) and to an electronic application (e.g., a browser applications) associated with the server system and operating on a user device associated with the user (e.g., transmitting data);
receiving, from the server and by the electronic application (e.g., browser application) operating on the user device, the notification (e.g., webpage) that includes the at least one selectable notification element (e.g., hyperlink) and the positional assignments (e.g., HTML code describing how the webpage is to be displayed) (e.g., receiving data);
arranging, on a graphical user interface (browser interface which displays the webpage), at least one selectable notification element (e.g., hyperlink) based on the positional assignments (e.g., HTLM code describing how the webpage is to be displayed) (e.g., displaying a webpage in a browser)
receiving, by the electronic application operating on the user device associated with the user, a selection of the selectable notification element by the user (e.g., receiving data);
launching, in response to the selection, a website page configured to initiate the execution of the at least one incentive (e.g., transmitting a request for a website page identified in a hyperlink, receiving the requested website page, and displaying the requested website page); and
detecting, by the server system, completion of the at least one offer with the first entity by receiving an electronic record indicative of the completion of the at least one offer (e.g., receiving data).
The additional technical elements above are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of processing, communicating (e.g., transmitting and receiving), and displaying) such that it amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and/or one or more 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 a computer, or merely uses a computer 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 server comprising at least one processor and a memory executing software such as generic predictive machine-learning models (i.e., general-purpose computer with generic computer components executing a generic machine learning model as per the Recentive Analytics decision); a user device executing software such as a browser (e.g., a generic electronic application with a generic graphical user interface), wherein the generic graphical user interface merely displays information and accepts user input; and a selectable notification element (e.g., hyperlink) to perform the claimed functions amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and/or one or more generic computer components.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on a computer, 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 computers and/or one or more generic computer components (as evidenced from Figure 3 and paragraphs 16, 70-71 and 74 of the applicant’s specification which discloses that the at least one processor with memory executing software and the user device executing software are a general-purpose computers; paragraphs 37 of the applicant’s specification which discloses that the machine learning model is a known machine learning model; the Affinity v. Direct TV decision and Intellectual Ventures I v. Capital One which disclose that applications such as interactive interfaces that display data to a user and obtain user input are well-known generic computer elements; Greenfield (The Trailblazing, Candy-Colored History Of The Online Banner Ad, October 27, 2014, https://www.fastcompany.com/3037484/the-trailblazing-candy-colored-history-of-the-online-banner-ad, pages 1-19) which discloses that a selectable notification elements were well-known by at least 2014 on page 7 paragraph 3 and page 10; the Recentive Analytics decision which discloses that applying machine learning in a particular environment is an abstract idea; and Langley et al. (“Approaches to Machine Learning”, Journal of the American Society for Information Science, February 16, 1984, pgs. 1-28 which discloses that machine learning models are old and well-known on at least page 7, lines 23-29); 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, via an electronic application operating on a user device, data including (i) information regarding a plurality of offers for different items, wherein the at least one offer is associated with a first entity and (ii) information regarding historical information associated with a user associated with the user device (e.g., receiving data);
transmitting the obtained data including (i) information regarding a plurality of offers for different items, wherein the at least one offer is associated with a first entity and (ii) information regarding historical information associated with a user associated with the user device to the server system remote from the electronic application (e.g., transmitting data);
receiving thereby obtaining, by the server system, the obtained data including (i) information regarding a plurality of offers for different items, wherein the at least one offer is associated with a first entity and (ii) information regarding historical information associated with a user associated with the user device (e.g., receiving data);
transmitting, by the server system, a notification (e.g., a webpage) that includes the at least one selectable notification element (e.g., hyperlink) and the positional assignments (e.g., HTML code describing how the webpage is to be displayed) and to an electronic application (e.g., a browser applications) associated with the server system and operating on a user device associated with the user (e.g., transmitting data);
receiving, from the server and by the electronic application (e.g., browser application) operating on the user device, the notification (e.g., webpage) that includes the at least one selectable notification element (e.g., hyperlink) and the positional assignments (e.g., HTML code describing how the webpage is to be displayed) (e.g., receiving data);
arranging, on a graphical user interface (browser interface which displays the webpage), at least one selectable notification element (e.g., hyperlink) based on the positional assignments (e.g., HTLM code describing how the webpage is to be displayed) (e.g., displaying a webpage in a browser)
receiving, by the electronic application operating on the user device associated with the user, a selection of the selectable notification element by the user (e.g., receiving data);
launching, in response to the selection, a website page configured to initiate the execution of the at least one incentive (e.g., transmitting a request for a website page identified in a hyperlink, receiving the requested website page, and displaying the requested website page); and
detecting, by the server system, completion of the at least one offer with the first entity by receiving an electronic record indicative of the completion of the at least one offer (e.g., 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 42, 46-50, 52, and 56-59 and 60appear to merely further limit the abstract idea by adding the additional steps of determining that the likelihood of engagement of the user with the at least one offer is below the second predetermined threshold which is considered part of the abstract idea and further limiting the determining of the incentive magnitude, the generating, and the transmitting which are considered part of the abstract idea (Claims 42 and 52); further limiting the determining the incentive magnitude to require inputting the obtained information into a trained model that has been trained, based on historical offer information, historical user information, and historical engagement information, to determine associations therebetween such that the trained model is configured to predict the likelihood of engagement based on the obtained data which is considered part of the abstract idea and adding the additional element of a machine learning model which has been addressed above (Claims 46 and 56); further limiting the determining of the incentive magnitude which is considered part of the abstract idea (Claims 47, 50, 57, and 59); further limiting the incentive magnitude which is considered part of the abstract idea (Claims 48 and 58); and further limiting the website page which is considered part of the abstract idea (Claim 49), 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 41-60 are not patent eligible.
Possible Allowable Subject Matter
Claims 41-60 would be allowable if the applicant were to be able to overcome the 35 USC 112(a) rejections and the 35 USC 101 rejections above.
The following is a statement of reasons for the indication of allowable subject matter: The examiner has found prior art (see Zheleva et al.: 10,482,487 and Flake et al.: 2009/0271257 that discloses computer-implemented methods and a non-transitory computer-readable medium generating a user-specific notification comprising:
a server system comprising at least one processor executing a memory to perform operations) including:
obtaining, data including (i) information regarding a plurality of offers for different items and (ii) information regarding historical information associated with a user associated with the user device;
determining, using a predictive model and based on the obtained data, at least one incentive magnitude configured to raise a likelihood of engagement for the at least one offer to a predetermined likelihood threshold;
generating at least one incentive for the at least one offer based on the determined incentive magnitude,
generating at least one selectable notification element that is operable to launch a website page configured to initiate an execution of the at least one incentive, and that includes a visual indication of information associated with the at least one offer and the at least one incentive magnitude, wherein:
the at least one offer is associated with a first entity;
the incentive is associated with a second entity different from the first entity; and
the selectable notification element is operable to initiate the at least one offer with the first entity and the incentive with the second entity;
transmitting a notification that includes the selectable notification element to an electronic application associated with the server system and operating on a user device associated with the user
determining positional assignments for the at least one selectable notification element within a predefined interface layout based on the likelihoods of engagement of the at least one offer with the at least one incentive applied, wherein higher likelihoods correspond to positions associate with increased user visibility
on the electronic application operating on the user device associated with the user:
receiving, from the server system, the notification that includes the at least one selectable notification element and the positional assignments;
arranging, on a graphical user interface, the at least one selectable notification element based on the positional assignments;
receiving a selection of one of the at least one selectable notification element by the user;
in response to the selection of the selectable notification element, launching the website page configured to initiate the execution of the at least one incentive;
the server system further comprising:
detecting completion of the at least one offer with the first entity by receiving an electronic record indicative of the completion of the at least one offer; and
completing the incentive only in response to the detecting.
However, the examiner has been unable to find prior art, the would be obvious to combine with Zheleva and Flake, that discloses
identifying, using a predictive model and based on the obtained data, at least one offer from amongst the plurality of offers predicted to have a likelihood of engagement by the user above a first predetermined likelihood threshold; and
determining, using a further predictive model and based on the obtained data, at least one incentive magnitude configured to raise a likelihood of engagement for the at least one offer to a second predetermined likelihood threshold that is higher than the first predetermined likelihood threshold.
As such, claims 41-60 would be allowable if the applicant were to be able to overcome the 35 USC 112(a) rejections and the 35 USC 101 rejections above
Response to Arguments
Applicant's arguments filed March 2, 2026 have been fully considered but they are not persuasive.
The applicant appears to indicate in their remarks that some type of agreement was reach with regards to an amendment to the claims that would overcome the 112 rejections. The examiner disagrees. As indicated in the examiner interview summary dated February 17, 2026, the applicant provided no amendments to the claim for the purpose of the interview. All discussions, during the interview, of possible ways in which the claims might be amended were hypothetical in nature. As indicated in the examiner interview summary dated February 17, 2026, no formal agreements were reach with regards to either the 112 rejection or the 101 rejections. As indicated in the examiner interview summary dated February 17, 2026, the examiner suggested amending the claims to recite claim language identical to that used in the applicant’s specification. The instant claims have not been amended in this manner. Paragraph 31 of the applicant’s disclosure recites “selecting the particular message may cause the mobile device 105 to access an e-commerce application and/or website page of the marketing system 120 that enables the mobile device 105 to execute the offer with the marketing system 120.” Based on paragraph 31, selecting an offer can result in accessing an e-commerce application of the marketing system that enables the mobile device to execute the offer with the marketing system. There is neither indication in the applicant’s disclosure of the accessed e-commerce application of the marketing system being an application that executing on the user device, nor that a specific portion of such an e-commerce application is what is accessed. This is probably because mobile application are really just sandboxed web browsers that access specific webpages and display specific webpages. The mobile applications themselves contain little if any portions of the installed mobile application itself for which access could be said to occur. Thus, assuming, for the sake of argument, that the application executing on the client device is an e-commerce application of the marketing system, which is not currently required by the claim, then the applicant’s disclosure could be said to support, at best, “generating at least one selectable notification element that is operable to launch a website page or access a webpage of an electronic application configured to initiate an execution of the at least one incentive, and that includes a visual indication of information associated with the at least one offer and the at least one incentive magnitude”. Thus, it is clear that no agreement with regard to the instant amendment was made with regards to the 35 USC 112 rejection during the interview dated February 17, 2026. Instead, the applicant has merely amended the claim in a manner that they believed was consistent with the hypothetical amendments discussed during said interview.
In response to the 35 USC 101 rejection, the applicant argues that the claims, as amended overcome the 35 USC 101 rejection because the claims as amended recite an improvement in how electronic notification are generated and rendered on a graphical user interface. The examiner disagrees.
First, the applicant asserts that the claims recite generating “selectable notification elements” that are tied to executable functionality (launching a webpage or accessing a portion of an electronic application). However, the applicant has not invented generating hyperlinks (i.e., selectable notification elements) that launch webpages. In fact, the generating of such hyperlinks. In fact, the generation of such hyperlinks to launch webpages has been a formalized standard for HTML since at least November of 1995 when it was included as part of the Hypertext Markup Language in RFC 1866 and no specific technology is requires to generating a hyperlink, so that, when clicked it launches a webpage. As such, generating a hyperlink is merely part of the abstract idea itself and not some type of “additional element” of the claim. As part of the abstract idea itself, any improvement purported to be obtained by such generating is an improvement to an abstract idea which is an improvement 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.). In order for an improvement to overcome a 35 USC 101 rejection, the improvement must be rooted in the additional elements in a manner other than merely applying the abstract idea using additional elements as a tool. Thus, the applicant’s argument is not convincing and the rejections have been maintained..
Second, the applicant asserts the claims require determining “positional assignments within a predefined interface layout based on… likelihoods of engagement, such that higher-likelihood items are placed in position of increased visibility which is not merely displaying information but specific techniques for controlling the structure and behavior of a GUI in a manner that affects how a user interacts with the user device. The examiner disagrees. As indicated in the 35 USC 112(a) rejection above, the applicant’s disclosure does not have support for determining “positional assignments”, much less “positional assignments within a predefined interface layout”. The applicant’s disclosure, also does not have support for “higher-likelihood items” being “placed in position of increased visibility”. These limitations have been interpreted in a manner consistent with the applicant’s disclosure in the 35 USC 112(a) rejections above. As indicated in the rejections, the claims merely recite inserting an offer with a selectable hyperlink in a position within a notification webpage (e.g., stream); transmitting the notification webpage to a client device, and display the webpage within a browser application (i.e., electronic application) executing on the client device. Thus, the claims, as interpreted, merely recite generating tailored content that includes a hyperlink, transmitting the tailored content, and displaying the tailored content by the browser application executing on the client device. As such, the claims merely require a server to perform every significant step of the abstract idea itself including the generating of a webpage with a hyperlink and the transmitting of the webpage to a client device, wherein the client device performs the insignificant extra-solution activity of receiving the webpage and displaying the webpage. Thus, any purported improvement to the structure and behavior of a webpage and how it is displayed such that it affects how a user interacts with the webpage is obtained by practicing the claimed invention is not rooted in the “additional elements” of the claim, but instead any such improvement would be an improvement rooted 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 improvement in ineligible subject matter. Given, the interpretation of the limitations in the 35 USC 112 rejection above, the graphical user interface itself is not improved it merely displays data and receives user input which makes it a generic computer element as per the Intellectual Ventures I v. Capital One decision which discloses that if the disclosure does not assert that it invented the "interactive interface", a generic interactive interface that provides information to and accepts user input is a generic computer element. Likewise, a client device that executes software to display a GUI and allows the GUI to receive user input does not change nor effect the client device itself. The client device is merely a general-purpose computer that is being used as a tool apply the abstract idea. As such, the client device itself is not improved. Thus, executing the limitations of the claims, as interpreted in the 35 USC 112(a) rejection above, does not result in an arrangement of devices each performing at least one significant step of the abstract idea, that result in an improvement capable of overcome the 35 USC 101 rejection under Step 2a, Prong 2, and/or an improvement capable of being considered “significantly more” under Step 2b. Instead, any purported improvement obtained by practicing the claimed invention is rooted solely in the abstract idea itself which is merely applied using the “additional elements” as a tool. Improvements of this nature are improvements to an abstract idea which are improvements in ineligible subject matter. Thus, the applicant’s arguments are not convincing and the rejections have been maintained.
In response to the 35 USC 101 rejection, the applicant argues that the claims are similar to claim 1 of abstract idea example 37 and the claims of the Corewireless decision and, as such, should overcome the 35 USC 101 rejection. The examiner disagrees. While such an argument might have been convincing if the applicant’s disclosure had support for the limitations of determining, by the server, positional assignments for the at least one selectable notification objects within a predefined interface layout; transmitting, by the server and to an electronic application executing on the client device, the at least one selectable notification element and the positional assignments; and generating the application executing on the client device a graphical user interface using the received positional assignments and at least one selectable notification, the applicant’s specification does not have support for this being the case. Instead, as indicated in the 35 USC 112a rejections above, the claim limitations have been interpreted in a manner consistent with the applicants disclose. This has resulted in the application executing on the client device merely receiving a notification webpage with a hyperlink prepositioned therein, wherein said application merely displays the webpage in the GUI. Given, the claims as interpreted, the client application does nothing more than display a webpage in a GUI which means that neither the client application nor the GUI have any type of functionality which could be said to result in an improved graphical user interface. Thus, the claims, as interpreted in the 35 USC 112a rejection above because of lack of support for the claimed limitation in the applicant’s disclosure, bear no similarity to claim 1 of abstract idea example 37 or the claims in the Corewireless decision. In the instant clams, there is no improvement to the functionality of the GUI. It merely displays data and receives user input which means it is merely a generic computer element as per the Intellectual Ventures I v. Capital One. In contrast, claim 1 of abstract idea example 37 and the claims of the Corewireless decision, recited specific functions of the graphical user interface itself which was determined to be an improved graphical user interface which did not operate in the same manner as traditional graphical user interfaces. Thus, the applicant’s arguments are not convincing the rejections have been maintained.
The applicant argues that the claims recite a distributed architecture in which both the server system and the user device perform meaningful, non-generic operations and, as such, should overcome the 35 USC 101 rejection. The examiner disagrees. First, in order to overcome the 35 USC 101 rejection, the “additional elements” of the claim must result in an improvement to the traditional distributed architecture of the “additional elements”. The applicant has not argued that the distributed architecture of the “additional elements” of the claim results in an improvement of any kind, much less one that is capable of transforming the abstract idea into a practical application under Step 2a, Prong 2 and/or capable of being considered “significantly more” under Step 2b. Thus, the argument is not convincing. Second, the claims, as interpreted given the 35 USC 112a rejection above do not recite a distributed architecture in which both the server system and the user device perform meaningful, non-generic operations. While the claims still recite a distributed architecture, they do not require each device to perform at least one significant step of the abstract idea. Instead, they merely require the server to perform each and every significant step of the abstract idea, and the user device to merely perform the insignificant extra-soution activity of receiving a webpage, displaying the webpage, receiving user input, transmitting a request for a new webpage based on the user input, receiving the new webpage, and displaying the new webpage. Thus, each of the steps required to be performed by the user device are the insignificant extra-solution activities receiving data, displaying data, and transmitting data. A distributed architecture that requires a first general-purpose computer with generic computer elements execute software to perform every significant step of an abstract idea, and a second general-purpose computer with generic computer component execute software to merely received data, display data, and transmit data is a claim that merely applies an abstract idea using two general-purpose computers as a tool which is insufficient to transform an abstract idea into a practical application under Step 2a, Prong 2 and insufficient to be considered significantly more under Step 2b. Instead, any purported improvement obtained by practicing the claim invention would be an improvement to the abstract idea itself which is merely applied using the general-purpose computers as a tool. Improvements of this nature are improvements to an abstract idea which are improvement in ineligible subject matter. Thus, the applicants’ 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:
Bhatt et al. (PGPUB: 2013/0197984) which discloses a system for modifying the magnitude of an incentive based on parameters about the user and sharing behavior of the on-line user wherein the amount of discount increases with the volume of shares/re-shares.
Fomine (PGPUB: 2015/0339695) which discloses providing a shopping incentive to a primary user in exchange for sharing sharable information with one or more secondary users on a social networking platform, wherein the magnitude of shopping incentive provided to the primary user is proportionate to the number of applicable users the sharable information is shared with and the secondary user satisfying a predefined condition set by host system.
Chao et al. (PGPUB: 2015/0235252) which discloses computing and analyzing sensitivity to incentive changes on users by identifying attributes associated with the users, clustering the users into one or more clusters, providing incentives to users, monitoring user responses, and determining a user sensitivity to incentive changes based on the monitoring, and dynamically adjusting the incentive magnitude based on each user’s sensitivity.
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 on 571-270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/John Van Bramer/Primary Examiner, Art Unit 3622
