DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
In view of the Appeal Brief filed on February 06, 2026, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/CHRISTINE M Tran/Supervisory Patent Examiner, Art Unit 3695
This is the Non-Final Office Action in response to the Appeal Brief filed on February 06, 2026 for Application No. 18/529,259, filed on December 05, 2023, title: “Systems and Methods For Providing Merchant Rewards”.
Status of the Claims
Claims 1-30 were pending in this application. By the 03/27/2025 Amendment, claims 2-7, 9, 11-12, 14-19, 21-25, and 28-29 have been amended, claims 1, 8, 10, 13, 20, and 30 have been cancelled, and new claims 31-37 have been added. Accordingly, claim 2-7, 9, 11-12, 14-19, 21-29, and 31-37 are pending and have been examined.
Priority
This Application was filed on 12/05/2023 and is a CON of US Application No. 18/128,856 filed on 03/30/2023, which is a CON of US Application No. 17/351,414 filed on 06/18/2021 (Patented No. 11,829,963), which is a CON of US Application No. 14/721,414 filed on 05/26/2015 (Patented No. 11,068,865), which is a CON of US Application No. 14/243,071 filed 04/02/2014 (abandoned), which is a CON of US Application No. 12/709,810 filed 02/22/2010 (Patent No. 8,732,082), which is a CIP of 12/499,421 filed 07/08/2009 (Patent No. 8,732,080), which claims the benefit of US Provisional Application No. 61/157,097 filed 03/03/2009.
For the purpose of examination, the date 03/03/2009 is considered to be the effective filing date.
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 2-7, 9, 11-12, 14-19, 21-29, and 31-37 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 claims contain 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 31 recites a method of using an Electronic Funds Transfer Network (EFTN 130) to perform all the steps and limitations. However, Applicant’s Specification describes differently. Per paragraph 14 of the Publication No. 2024/0104528, Applicant’s Financial Transfer Network (FTN 100), that links the central system 110 to the Electronic Funds transfer Network 130 (EFTN 130), is the system that triggers the secondary and tertiary transactions from the EFTN to the Central system 110. Also, the central computer (Central system 110) and database is the system that manage the distribution of funds according to customizable business rules.
[0014] The following detailed description outlines possible embodiments of the proposed invention for exemplary purposes. The invention is in no way intended to be limited to any specific combinations of hardware and software. As will be described below, the inventive system and method triggers secondary and tertiary transactions by means of a series of payment instructions from an electronic funds transfer (“EFT”) network to a central computer and database. The central computer and database collectively manage the distribution of funds according to customizable business rules defined by cardholders and merchants.
Paragraph 15 describes the Central system 110 and EFTN 130 are separated systems and that the FTN 100 links the Central system 110 to the EFTN 130 in order to establish the FTN 100 system.
[0015] FIG. 1 illustrates a block diagram of the financial transaction network 100 in accordance with an exemplary embodiment of the present invention. Financial transaction network 100 is a system that links one or more EFT networks, users, merchants and financial institutions towards a common purpose of facilitating an optimal model of consumption, savings and investment. In essence, the inventive system and method establishes a symbiotic relationship among all entities by providing a methodology for habitual savings to the user while integrating merchant loyalty rewards. For avoidance of doubt, it is noted that the term “user” is used interchangeably with the term “cardholder” and/or “consumer” throughout this application.
Per paragraphs 18 of the Publication, the Central system 110 is configured to transmit and receive electronic digital data to and from the EFTN 130, and that the EFTN 130 is provided by the existing credit card providers to route the digital data from the banks or issuers. Thus, there is no changes to the EFTN 130 and this is confirmed during 11/12/2024 interview (see paragraphs 53 of the 06/10/2025 Final Action).
[0018] Central system 110 of FIG. 1 is configured to transmit and receive electronic digital data, via a transmission channel, switching service, modem or the like, to and from EFT network 130. EFT network 130 is provided by existing credit card providers to route digital data from banks, acquirers and/or issuers. FIG. 1 further illustrates merchant site 120, acquiring bank 122, acquirer processor 124, merchant bank 126, cardholder 140, card issuing bank 142, issuer processor 144, user-destination accounts 150, and EFT settlement bank 160.
Paragraph 23 further describes that the EFTN 130 automatically triggers the generation of a unique user ID for cardholder and establish a temporary user registration with the central system 110, but not the third payment request for a tertiary transaction and secondary transaction.
[0023] In an alternative embodiment, whenever a primary transaction is routed through an affiliated network, EFT network 130 will automatically trigger the generation of a unique user ID for cardholder 140 and establish a temporary user registration with central system 110. This step would apply for any user that has not yet registered with the system. As will be discussed below, once the temporary account is registered, the user will be contacted and prompted to confirm his or her participation in the inventive program.
Per paragraph 25, the central system 110 is the system that initiate at least one or more secondary transactions to debit the user’s source account and credit the specified destination account 150.
[0025] Based on the user's predefined business rules, one or more secondary transactions will be initiated by central system 110 to debit the user's source account and credit the specified destination account 150. More particularly, once central system 110 receives electronic digital information concerning details of a primary transaction executed at a remote point-of-sale (e.g., merchant site 120), central system 110 analyzes the electronic digital information to determine whether the customer is registered with the inventive system. This process can be performed by searching database 114 to identify whether the credit card number used in the primary transaction has been registered in database 114. If so, transaction processor 116 determines whether one or more secondary transactions are required based on the registered user's customized business rules. It should be appreciated that transaction processor 116 may comprise a business rules engine or the like to execute one or more of the customizable business rules in a runtime production environment. If specified by the customizable business rules, transaction processor 116 initiates execution of the secondary financial transaction. The actual processing of the secondary transaction will be described in more detail below.
Applicant appears to have claimed the steps and functions that are actually performed by the FTN 100 (or central system 130) to be performed by the EFTN 130. Per the Specification, the FTN 100 and the EFTN 130 are separate and distinct elements. Therefore, Applicant’s claim contains subject matter which is not described in the Specification in such a way as to reasonably convey to one skilled in the relevant art that the inventors had possession of the claimed invention.
Claim 32 recites an EFTN system with the same elements and limitations as discussed in the method claim 31 above. Therefore, claim 32 is also rejected under the same rationale provided in claim 31.
Dependent Claims 2-7, 9, 11-12, 14-19, 21-29, and 33-37 are also rejected because of their dependency on claims 31-32.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-7, 9, 11-12, 14-19, 21-29, and 31-37 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 31-32 recite an EFTN 130 to perform the steps and functions are not definite because Applicant’s Specification describes that the FTN 100 (or central system 130) is actually the system that performs the steps and functions. The metes and bounds of the claims cannot be understood because of the lack of definiteness in the claims.
Dependent claims 2-7, 9, 11-12, 14-19, 21-29, and 33-37 are also rejected because of their dependency on claims 31-32.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 2-7, 9, 11-12, 14-19, 21-29, and 31-37 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Under the 2019 Revised PEG, Step 1 analysis, the claims are reviewed to determine whether they fall within the four statutory categories of patentable subject matter (i.e., process, machine, manufacture, or combination of matter).
Claims 2-7, 9, 11-12, 14-19, 21-29, 31, and 33-37 recites a method of using an Electronic Funds Transfer Network (EFTN) to automatically transmit a second payment request for a secondary transaction derived from an electronic digital information of a primary transaction of the EFTN. Claim 32 recite an EFTN with the comparable elements and limitations for doing the same as recited in claim 31. Therefore, the claims are directed to a process and a machine which fall within the four statutory categories of invention (Step 1-Yes, the claims are statutory).
Step 2A Prong 1:
Under the 2019 Revised PEG, Step 2A, Prong 1 analysis, the claims are reviewed to determine whether they recite a judicial exception by identifying if the claim limitations fall in one of the enumerated abstract idea groupings (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability.
Claim 31, A method of using an Electronic Funds Transfer Network (EFTN) to automatically transmit a second payment request for a secondary transaction derived from an electronic digital information of a primary transaction of the EFTN, wherein the secondary transaction involves a second transfer of funds relating to a payment reward associated with a reward program, from a merchant/business to a consumer, where the merchant/business has a first account associated with a terminal of a point-of-sale, and the consumer has first and second accounts held at a financial institution, the method comprising the EFTN:
storing in at least one data store of the EFTN a merchant/business site ID of the merchant/business;
storing in the at least one data store an ID of the first account of the consumer;
associating in the at least one data store the merchant/business site ID with the reward program;
associating in the at least one data store the ID of the first account of the consumer with the reward program;
storing in the at least one data store at least one business rule of the reward program;
associating in the at least one data store the at least one business rule of the reward program with the merchant/business site ID and the ID of the first account of the consumer;
further to the consumer executing the primary transaction at the point-of-sale using the first account of the consumer as a source of funds for a purchase of products and/or services from the merchant/business, the primary transaction represented by a first payment request transmitted by the terminal of the point-of-sale, processed through the EFTN and consisting essentially of a first transfer of funds from the first account of the consumer that exactly matches a value of the purchase of the products and/or services at the terminal to the first account of the merchant/business, analyzing the electronic digital information of the primary transaction to determine (i) that the merchant/business site ID matches the merchant/business site ID stored in the at least one data store, (ii) that the ID of the first account of the consumer matches the ID of the first account of the consumer stored in the at least one data store, and (iii) the value of the purchase of the products and/or services;
subject to successful matching of each of (i) the merchant/business site ID in the electronic digital information of the primary transaction with the merchant/business site ID stored in the at least one data store, and (ii) the ID of the first account of the consumer in the electronic digital information of the primary transaction with the ID of the first account of the consumer stored in the at least one data store, applying the at least one business rule of the reward program to the electronic digital information of the primary transaction to at least partially determine eligibility of the first account of the consumer for the payment reward;
subject to the first account of the consumer being eligible for the payment reward, computing a secondary transaction value for the payment reward, based at least in part on the electronic digital information of the primary transaction and the at least one business rule; and
automatically initiating the secondary transaction from a second account of the merchant/business to the second account of the consumer for the secondary transaction value, by using a transaction processor to initiate the second payment request, containing an electronic digital information of the secondary transaction, and transmitting the second payment request via the EFTN to a financial institution of the second account of the merchant/business, thereby causing the second transfer of funds to be executed;
wherein the secondary transaction is accounted for in a separate transaction from the primary transaction on an account statement of the consumer.
The above limitations (underlined), as drafted, is a process that, under its broadest reasonable interpretation, covers a method of organizing human activity but for the recitation of generic computer components (e.g., an EFTN, processors, and data store). More specifically, the claim recites a method of computing a secondary transaction value and initiating a secondary transaction that include the payment from the merchant/business to the accounts of the consumer and third party by: storing a merchant/business site ID and an ID of the first account of the consumer, associating the merchant/business site ID and the ID of the first account of the consumer, storing the business rule of the reward program, associating the business rule with the merchant/business site ID and the ID of the first account of the consumer, associating the business rule of the reward program with the merchant/business site ID and the ID of the first account of the consumer, analyzing the electronic digital information of the primary transaction to determine (i) the merchant/business site ID matches the merchant/business site ID stored in the data store, (ii) the ID of the first account of the consumer matches the ID stored in the data store, and (iii) the value of the purchases, applying the business rule of the reward to partially determine eligibility for the payment reward, computing a secondary transaction value, automatically initiating the secondary transaction and transmitting the second payment request to a financial institution of the second account of the merchant/business causing the second transfer of funds to be executed wherein the secondary transaction is a separate transaction.
The recited process corresponds to the concepts of a certain method of organizing human activity, specially to a fundamental economic practice to mitigate risk before initiating a secondary transaction and a tertiary transaction (i.e., hedging, insurance, mitigating risk – see steps of “… (i) … matches the merchant/business site ID … (ii) … matches the ID of the first account of the consumer … and (iii) the value of the purchase of the products and/or services”) and commercial interaction (i.e., agreements in the form of contracts; legal obligation; advertising, marketing or sales activities or behaviors; business relations – see steps of “storing …, storing …, associating …, associating …, storing …, associating …”). See MPEP 2106.04(a)(2)III.C.2.
The claim process being performed on a “computing device” (a central system) via the EFTN limits the idea to a particular technical environment. The claim process, such as storing data, storing data, associating data, associating data, storing data, associating data, analyzing data, applying data, computing data, initiating data, transmitting data, and causing data based on the consumer is qualified for the reward, narrows the abstract idea to a particular type of relationship, but do not make the idea less abstract. The mere nominal recitation of computer components does not take the claim out of the methods of organizing human activity grouping.
The business rules are basically the “administrative criteria” for determining eligibility of the reward (see claim step “subject to the match … determine eligibility of the first account of the consumer for the reward), a secondary transaction value (see claim step “determining a secondary transaction value that indicates the rewards … in part on the primary transaction data and the at least one business rule), and controlling the process of the financial transactions and can be set or modified by a user, a merchant, or a government agency, and/or another third party entity (see Specification paragraphs 6-7). These business rules are customizable by individual, human rules, and are the administration rules or criteria and thus they are given very little patentable weight. Thus, while the business rules further narrow the scope of the process, they do not make the claim less abstract.
If the claim limitations, under their broadest reasonable interpretation, cover performance of a fundamental economic practice and commercial interaction, then they fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, claim 31 recites an abstract idea.
Moreover, although the preamble of the claim recites “A method of using an EFNT to …”, the steps of the body are devoid of any reference to any computer or machine. None of the method steps in the claim are clearly recited as being performed by a computer or device and per the claim scope can be performed by a person with paper and pencil. Thus, under the broadest reasonable interpretation, the claim can be performed within the human mind, which is a mental process (i.e., concepts performed in the human mind including an observation, evaluation, judgement, opinion). Therefore, the claim also recites the abstract idea of a Mental Process. Accordingly, the claim recites an abstract idea.
Claim 32 recites an EFTN and data store along with the comparable elements and limitations as discussed in claim 31. Mere nominal recitation of computer components does not take the claim out of the methods of organizing human activity grouping. Therefore, claim 32 also recites the abstract idea as discussed in claim 31 (Step 2A Prong 1-Yes, the claims recite an abstract idea).
Step 2A Prong 2:
Under the 2019 Revised PEG, Step 2A, Prong 2 analysis, the claims are reviewed to determine whether the judicial exception (i.e., abstract idea) is integrated into a practical application. In order to make this determination, the additional element(s), or combination of elements, are analyzed to determine if the claim as a whole integrates the recited judicial exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.
Claims 31-32 recite the additional elements, such as a central system, an EFTN, merchant/business IDs, consumer IDs, to perform the storing, storing, associating, associating, storing, associating, associating, analyzing, applying, computing, initiating, computing, and initiating steps. The recited additional elements in all steps are recited at a high level of generality and the limitations are done by the generically recited computer system, and this is substantiated by the Applicant’s Specification in paragraphs 16-38, 76-91 and Figures 1, 4-5 (see Publication No. 2024/0104528). Mere nominal recitation of computer components do not take the claim out of the methods of organizing human activity grouping.
In addition, the business rules are basically the “administrative criteria” for determining eligibility of the consumer for the reward (see claim step “subject to the matching … applying the business rule of the reward program to determine eligibility of … the consumer for the payment reward), a secondary transaction value (see claim step “determining a secondary transaction value that indicates the rewards … in part on the primary transaction data and the at least one business rule), and controlling the process of the financial transactions and can be set or modified by a user, a merchant, or a government agency, and/or another third party entity (see Specification, paragraphs 6-7). The business rules are no more than to control the electronic payments (secondary and tertiary transactions) to a customer and third party such as a government entity or non-government third party entity (see Specification, paragraph 6). These business rules are customizable by individual, human rules, and are the administration rules or criteria and thus are given very little patentable weight. Thus, while the business rules further narrow the scope of the process, they do not make the claim less abstract.
The judicial exception is not integrated into a practical application. In particular, the claims recites the additional elements of a computer and a database. The computer is recited at a high-level of generality (i.e., as a generic processor performing generic computer functions of receiving/transmitting communications, processing information, querying the database) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The business rules are basically the “administrative criteria” for initiating and controlling the electronic payments to customer(s) and third party. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, claims 31-32 are directed to an abstract idea (Step 2A Prong 2-No, the claims are not integrated into a practical application).
Step 2B:
Under the 2019 Revised PEG, Step 2B analysis, the claims are reviewed to determine whether the claims provide an inventive concept (i.e., whether the claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea).
Claims 31-32 do not include additional elements, considered both individually and as an ordered combination, that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer to perform the storing, storing, associating, associating, storing, associating, analyzing, applying, computing, initiating, transmitting, and causing functions as claimed amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Therefore, claims 31-32 are not patent eligible.
Claims 2-7, 9, 11-12, 14-19, 21-29, and 33-37 depend on claim 31 and include all the limitations of claim 31. Therefore, claims 2-7, 9, 11-12, 14-19, 21-29, and 33-37 recite the same abstract idea of claim 31.
Claim 2 recites additional limitations “further comprising the EFTN linking the electronic digital information of the primary transaction with data held in the point-of-sale”. (The limitations amount to well-understood, routine, and conventional functions, e.g., linking the primary transaction with data held in the POS (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 3 recites additional limitations “wherein the secondary transaction value is based at least in part on a value of at least one or more products or services purchased in the primary transaction.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the secondary transaction value (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 4 recites additional limitations “further comprising the EFTN generating a unique identifier to associate at least one or more products or services with the primary transaction.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the unique identifier (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 5 recites additional limitations “further comprising the EFTN associating the consumer with the reward program.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for associating the consumer with the reward program (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 6 recites additional limitations “further comprising the EFTN using a website portal to register the consumer with the reward program.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the website portal for registration (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 7 recites additional limitations “further comprising the EFTN requiring the consumer to undertakes an action with respect to the payment reward prior to taking advantage of the payment reward.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional detailed requirements for the consumer (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 9 recites additional limitations “further comprising the EFTN: determining whether the consumer is registered with a different second reward program associated with the merchant/business; and in response to determining that the consumer is registered, initiating execution of the secondary transaction.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional steps for determining whether the consumer is registered and initiating the secondary transaction (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 11 recites additional limitations “further comprising the ID of the first account of the consumer comprising a representation of at least one of an account number of a debit card, credit card, gift card, prepaid card, electronic payment mediation card, or a mobile phone account..” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the consumer account (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 12 recites additional limitations “further comprising the EFTN receiving the ID of the first account of the consumer from a portal configured to register the ID of the first account of the consumer with the reward program.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for receiving the consumer account ID (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 14 recites additional limitations “further comprising the EFTN receiving the merchant/business site ID from a portal configured to register the merchant/business site ID with the reward program.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for receiving the registered merchant/business site ID (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 15 recites additional limitations “further comprising the EFTN determining from the point-of-sale a value of at least one or more products or services purchased in the primary transaction.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for determining a value of the products or services (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 16 recites additional limitations “wherein the electronic digital information of the primary transaction comprises an identifier of at least one or more products or services purchased in the primary transaction, and further comprising the EFTN determining the secondary transaction value based at least in part on the identifier.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for determining the secondary transaction value based on the identifier (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 17 recites additional limitations “wherein: the electronic digital information of the primary transaction further includes a time and a date of the primary transaction at the terminal of the point-of-sale, and the secondary transaction value is based at least in part on at least one of a time and a date of the primary transaction at the point-of-sale.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the primary transaction data (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 18 recites additional limitations “wherein the secondary transaction value is based at least in part on the merchant/business site ID.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the secondary transaction value (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 19 recites additional limitations “further comprising the EFTN applying the at least one business rule to additionally derive the secondary transaction value from at least another primary transaction different from the primary transaction.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for applying the business rule to the secondary transaction value (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 21 recites additional limitations “further comprising the EFTN assigning a unique user identification code that links the ID of the first account of the consumer and an ID of a different second account of the consumer.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details about the unique user identification code (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 22 recites additional limitations “wherein the first account of the merchant/business is the same as the second account of the merchant/business.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the first/second accounts of the merchant/business (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 23 recites additional limitations “wherein the first account of the consumer is the same as the second account of the consumer.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details first/second consumer accounts (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 24 recites additional limitations “further comprising providing a spending history of the consumer to the merchant/business.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for providing a consumer spending history to the merchant/business (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 25 recites additional limitations “further comprising the merchant/business determining a first level of the payment reward based upon a spending criterion.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the determination of the reward (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 26 recites additional limitations “wherein the spending criterion comprises a percentage of a given product or service that is purchased from the merchant/business by the consumer.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details about the spending criterion is a percentage of the product or service (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 27 recites additional limitations “wherein the percentage is 100%.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the percentage (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 28 recites additional limitations “further comprising the EFTN providing the merchant/business with a complete consumer view, rather than a single card view.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for providing the merchant/business with a complete consumer view (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 29 recites additional limitations “further comprising the EFTN providing the merchant/business with a complete customer view, based on an identity of the consumer.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details that the complete consumer view is provided based on the consumer identity (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 33 recites additional limitations “wherein the account number comprises a primary account number of the debit or credit card.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the account number (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 34 recites additional limitations “further comprising storing in the at least one data store the second account of the merchant/business.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details about the data storing the second account of the merchant/business (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 35 recites additional limitations “wherein the electronic digital information of the secondary transaction includes details of the second account of the merchant/business and the second account of the consumer.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the secondary transaction (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 36 recites additional limitations “wherein the details of the second account of the merchant/business and the second account of the consumer include an ID of the second account of the merchant/business and an ID of the second account of the consumer.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details about the second account of the merchant/business and the second account of the consumer (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claim 37 recites additional limitations “wherein the EFTN is a separate entity from a card issuing bank.” (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details about the EFNT (see MPEP 2106.05(d)). This claim individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
The dependent claims do no more than providing additional detailed instructions and administrative requirements for the functional steps already recited in the independent claims. The dependent claims further describe the business relations of the certain method of organizing human activity (abstract idea) and do not include additional elements other than those of claim 31-32 to provide a practical application or significantly more than the judicial exception. Every recited combination between the recited computing hardware and the recited computing functions has been considered. No inventive concept is found in the claims. The claims do not add significantly more (i.e., an inventive concept) to the abstract idea. Therefore, claims 2-7, 9, 11-12, 14-19, 21-29, and 33-37 are not patent eligible.
The focus of the claims is on a method for initiating a secondary transaction based on a determination of the secondary transaction value (a merchant reward) based on the electronic digital information of the primary transaction of the EFTN (primary transaction data) and business rule (reward program). The claims are not directed to a new type of processor, a computer network, or a system memory, nor do they provide a method for processing data that improves existing technological processes. The focus of the claims is not on improving computer-related technology, but on an independent abstract idea that uses computers as tools. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Accordingly, when viewed as a whole, the claims do no more than generally linking the use of the judicial exception to a particular technological environment or field of use.
The Examiner notes that the present claims include more steps for consumer and merchant/business to register with the reward program (see steps such as storing ..., storing ..., associating ..., associating ..., storing ..., associating ...) and more steps for automatically generating and transmitting a secondary transaction (see steps such as subject ..., automatically initiating ...,). These additional steps and limitations further narrow the scope of the claims, but do not change the analysis because further narrowing the scope of the claims does not make it any less abstract. Automatically generating and transmitting secondary transaction further define the scope of the claims, but it does not make the abstract idea less abstract. The secondary transaction is depend on the primary transaction and business rule, it is initiated based on a determination of a secondary transaction value based on primary transaction data and business rule.
Therefore, claims 2-7, 9, 11-12, 14-19, 21-29, and 31-37 are not patent eligible under 35 USC § 101.
Terminal Disclaimer
The terminal disclaimers (TDs) filed on 02/27/2024 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Patents 8732080, 8732082, 11068865, 11829963, and 18/128856, have been reviewed and is accepted on 11/14/2024. The terminal disclaimers have been recorded.
Claim Rejections - 35 USC § 102/103
An updated prior art search did not identify any art(s), individually or in combination with others, that teach each and every element and limitation of the claims at this time.
Conclusion
Claims 2-7, 9, 11-12, 14-19, 21-29, and 31-37 are rejected.
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HAI TRAN
Primary Examiner
Art Unit 3695
/HAI TRAN/Primary Examiner, Art Unit 3695