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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on November 12, 2025 has been entered.
Response to Amendment
In light of Applicant's submission November 12, 2025, the Examiner has maintained and updated the 35 USC § 101 rejection. The Examiner has also updated/maintained the 35 USC § 103 rejection. The Examiner has withdrawn the 112(b) rejection.
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 1, 2, 4, 5, 7-12, 14, and 15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. The claim(s) recite(s) the following limitations that are considered to be abstract ideas:Claims 1 and 11
selecting, based on a prior purchasing behavior for a consumer, a payload, wherein the payload comprises at least one of a coupon, a discount, or an advertisement for a retail product, wherein selecting a payload to the consumer comprises selecting a product and a value added to the payload based on a consumer purchase of the product via a channel for the consumer to redeem the payload
selecting a channel for the consumer to validate the payload, wherein the channel for the consumer to validate the payload comprises one of an onsite validation of the payload or an online validation in a shopping basket, wherein selecting a channel for the consumer comprises a evaluating a technographical data for the consumer, the technographical data comprises a hardware and software setting of a client device used by the consumer to download the payload, client device used by the consumer to download the digital payload, wherein selecting the channel, measure distances between semantic concepts and textual descriptions including: consumer attributes, product attributes, product attributes, purchasing probabilities and confidence levels.
providing the payload used by the consumer; and
indicating, the channel for the consumer to redeem the payload, wherein the payload comprises an option to save the digital payload for later use.
The limitations of independent claim 1 and 11 as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely “advertising, marketing or sales activities or behaviors” because the claims disclose performing advertising, marketing or sales activities or behaviors comprising selecting based on prior purchasing behavior a digital payload, selecting a channel to validate the digital payload, providing the digital payload to the consumer and indicating the channel to redeem the digital payload(e.g. advertising). Accordingly, the claims recite an abstract idea This judicial exception is not integrated into a practical application. In particular the claims recite the additional elements of using digital, display, client device, neural network, processor, memory. The aforementioned additional generic computing elements perform the steps of the claims at a high level of generality (i.e. As a generic medium performing generic computer function of selecting, providing, and indicating such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements 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 a using digital, display, client device, neural network, processor, memory to selecting, providing, and indicating amounts to no more than mere instruction 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. The claim is not patent eligible. 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.
Thus, taken individually and in combination, the additional elements do not amount to
significantly more than the above-identified judicial exception (the abstract idea).
The dependent claims 2, 4, 5, 7-10, 12, 14, and 15 appear to merely further limit the abstract and as such, the analysis of dependent claims 2, 4, 5, 7-10, 12, 14, and 15 results in the claims “reciting” an abstract idea. For example, claims 2-5, 7 and 11, 12, 14, 15 merely further limit the abstract by providing behavioral data. Also claims 8-10 merely further limit the abstract idea by sales activities. The claims do not recite additional elements that integrate the exception into a practical application the additional elements do not amount to an inventive concept (significantly more) other than the above-identified judicial exception (the abstract idea). Thus, based on the detailed analysis above, claims 1, 2, 4, 5, 7-12, 14, and 15 are not patent eligible.
CLAIM INTERPRETATION
The examiner is using the following interpretation for the identified claims language: environmental factor – the applicant’s specification at [0018, 0032, 0064, 0065] states, “includes evaluating an environmental factor biasing the consumer to either one of the online redemption or the in-store redemption of the targeted offer.” Thus, the term is undefined and for the purposes of examination, the Examiner interprets the term “environmental factor” to be equivalent to the location of the user.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 2, 4, 5, 12, 14, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carlson et al. (US 2013/0073859) in view Carlson et al. (2018/0189801) hereinafter referred to as Carlson2 and further in view of Wegner et al. (US 2014/0222530), in further view of Jung et al. (US 2015/0120550) and further in view of Official Notice.
Claims 1,11: Carlson discloses a computer-implemented method, comprising:
selecting, based on a prior purchasing behavior for a consumer, a digital payload, wherein the digital payload comprises at least one of a coupon, a discount, or an advertisement for a retail product, wherein selecting a digital payload to the consumer comprises selecting a product and a value added to the digital payload based on a likelihood of a consumer purchase of the product via a channel for the consumer to redeem the digital payload;(see for example [0125], mobile advertisements, such as offers and coupons, are generated and disseminated based on aspects of prior purchases, such as timing, location, and nature of the purchases, etc. In one embodiment, the size of the benefit of the offer or coupon is based on purchase volume or spending amount of the prior purchase and/or the subsequent purchase that may qualify for the redemption of the offer)
selecting a channel for the consumer to validate the digital payload, wherein the channel for the consumer to validate the digital payload comprises one of an onsite validation of the digital payload or an online validation in a shopping basket,; (see for example [0156], is to provide the benefit of the offer (186) to the user (101) via statement credit or some other settlement value, for example points in a registered loyalty program, or credit at the point of sale using a digital coupon delivered to the purchaser via mobile phone.) but does not explicitly disclose providing the digital payload for display in a client device used by the consumer; and indicating, in the display, the channel for the consumer to redeem the digital payload. However Carlson2 discloses disclose providing the digital payload for display in a client device used by the consumer; and indicating, in the display, the channel for the consumer to redeem the digital payload ([0028, 0058-0061])
Both Carlson and Carlson2 teach the use of mobile coupons. It would have been obvious to a person of ordinary skill to use the display method of Calson2 before the effective filing date of the claimed invention as the method to be used in Carlson, the rational for doing so is that applying the known technique of displaying coupons on a mobile device as Carlson2 to the known method of using mobile coupons as described by Carlson yields an improved mobile coupon system and having the predictable result of a more efficient system.
While Carlson and Carlson2 do not explicitly teach wherein selecting a digital payload to the consumer comprises selecting a product and a value added to the digital payload based on a likelihood of a consumer purchase of the product via a channel for the consumer to redeem the digital payload; However Wegner discloses wherein selecting a digital payload to the consumer comprises selecting a product and a value added to the digital payload based on a likelihood of a consumer purchase of the product via a channel for the consumer to redeem the digital payload; (see for example[0028, 0040, 0081] promotions are sent to the consumer's mobile device or web portal through text or email, for example. The consumer may redeem the promotions at the point of sale by printing them or through the mobile device, i.e. scanning a bar code on the mobile device. At the point of sale, the business is integrated to the system 10 through an integration and connection terminal so that the promotion may be redeemed by the system 10 recognizing the consumer or the business as a member of the system 10. For example, the business may log onto the system 10 through the terminal and the customer may log on through a password, account number, bar code on their mobile device, or by any other appropriate manner. The promotion is then redeemed at the terminal and the redemption is delivered to the system 10 and tracked. In one embodiment, the system 10 allows ad hoc, real time retrieval of a specific Consumer's Value Score at the point of sale to help the vendor determine whether and to what degree to offer a special promotion at that time.) wherein selecting a channel for the consumer comprises evaluating a technographical data for the consumer, the technographical data comprising a hardware and software setting of a client device used by the consumer to download the digital payload;( see for example [0082], the promotions may be sent through a mobile application that is downloadable to a mobile device. The mobile application allows the consumer to receive promotions, as well as, access the system 10 to edit a consumer profile, wherein the consumer profile may include bibliographic data related to the consumer and/or data related to desired promotions and/or an interest in a particular purchase ) wherein the digital payload comprises an option to save the digital payload for later use Both Carlson and Wegner teach the use of promotional offers. It would have been obvious to a person of ordinary skill to use the display method of Wegner before the effective filing date of the claimed invention as the method to be used in Carlson, the rational for doing so is that applying the known technique of using data to select offers as Wegner to the known method of using data as described by Carlson yields an improved selection of promotional offers and having the predictable result of a more efficient system.
Both Carlson and Wegner teach the use of promotional offers. It would have been obvious to a person of ordinary skill to use the display method of Wegner before the effective filing date of the claimed invention as the method to be used in Carlson, the rational for doing so is that applying the known technique of using data to select offers as Wegner to the known method of using data as described by Carlson yields an improved selection of promotional offers and having the predictable result of a more efficient system.
While Carlson, Carlson2, and Wegner wherein selecting the channel comprises implementing a neural network to the measure distances between semantic concepts and textual descriptions including: consumer attributes, product attributes, product attributes, purchasing probabilities and confidence levels.
Jung discloses wherein selecting the channel comprises implementing a neural network to the measure distances between semantic concepts and textual descriptions including: consumer attributes, product attributes, product attributes, purchasing probabilities and confidence levels. ([0128], may compare (e.g., determine differences, ascertain similarities, find one or more semantic correlations, apply a machine learning mechanism, identify correspondences or synonymous terms or concepts, detect equivalent or overlapping categories or subject-matters, determine a differential appurtenant to, ascertain a level of temporal proximity, ascertain a level of spatial proximity, or a combination thereof, etc.) one or more transaction characteristics )
Both Carlson and Jung teach the use of promotional offers. It would have been obvious to a person of ordinary skill to use the neural network of Jung before the effective filing date of the claimed invention as the neural network to be used in Carlson, the rational for doing so is that applying the known technique of using data to select offers as Wegner to the known method of using data as described by Carlson yields an improved selection of promotional offers and having the predictable result of a more efficient system.
While Carlson, Carlson2, Wegner and Jung do not explicitly disclose wherein the digital payload comprises an option to save the digital payload for later use. However giving the option to save for later use is well known to those of ordinary skill and Official Notice is hereby taken. For example users are often given the option to save or download files/data that can be used later. For example, it has been a common internet practice to download applications to install later, download coupons, etc for later use to be used online or printed to use in a retail store. It would have been obvious to one of ordinary skill in the art at the time the invention to have modified the method and system of Carlson, Carlson2, Wegner and Jung to have wherein the digital payload comprises an option to save the digital payload for later use.in order to allow users to access the offer when needed. Claim 2, 12: Carlson discloses the computer-implemented method of claim 1, wherein selecting a channel for the consumer comprises evaluating an environmental factor biasing the consumer to either one of the online validation or the onsite validation of the digital payload. ([0103, 0112, 0125, 0126, 0135])
Claim 4,14: Carlson discloses the computer-implemented method of claim l wherein selecting a channel for the consumer comprises evaluating a psychographic data for the consumer, the psychographic data obtained from an online survey answered by the consumer. [0101]
Claim 5, 15: Carlson discloses the computer-implemented method of claim l, wherein selecting a channel for the consumer comprises evaluating a sentiment analysis about the consumer from a social network interaction of the consumer. [0082]
Claim 7: Carlson discloses the computer-implemented method of claim l, wherein selecting the channel to redeem the digital payload comprises determining a likelihood that the consumer will activate the digital payload via the onsite validation or the online validation. [0114 and 0135]
Claim(s)8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carlson et al. (US 2013/0073859) in view Carlson et al. (2018/0189801) hereinafter referred to as Carlson, and Jung et al. (US 2015/0120550) further in view of Wegner et al. (US 2014/0222530), in view of Official Notice, in view of Satou (US 2009/0302106)
Claim 8: Carlson discloses the computer-implemented method of claim l, but does not explicitly disclose wherein providing the digital payload for display in the client device used by the consumer comprises providing a button in the display for the consumer to automatically apply the digital payload to the shopping basket when the channel for the consumer to redeem the digital payload is an online redemption channel. However Satou discloses wherein providing the digital payload for display in the client device used by the consumer comprises providing a button in the display for the consumer to automatically apply the digital payload to the shopping basket when the channel for the consumer to redeem the digital payload is an online redemption channel. [0139 and 0141]
Both Carlson and Satou teach the use of mobile coupons. It would have been obvious to a person of ordinary skill to providing a button in the display for the consumer to automatically apply the digital payload to the shopping basket when the channel for the consumer to redeem the digital payload is an online redemption channel method of Satou before the effective filing date of the claimed invention as the method to be used in Carlson, the rational for doing so is that applying the known technique of using an online interface to apply the digital payload as disclosed by Satou to the known method of using mobile applications as described by Carlson yields an improved mobile coupon system and having the predictable result of a more efficient system.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carlson et al. (US 2013/0073859) in view Carlson et al. (2018/0189801) hereinafter referred to as Carlson2, further in view of Jung et al. (US 2015/0120550) , further in view of Wegner et al. (US 2014/0222530), further in view of Official Notice, and in view of Gauli et al. (US 2018/0276651)
Claim 9: Carlson discloses the computer-implemented method of claim l, but does not explicitly disclose wherein indicating the channel for the consumer to redeem the digital payload comprises providing a digital code in the display for the consumer to scan the digital code at a point of sale of a retailer store.
However Gauli discloses wherein indicating the channel for the consumer to redeem the digital payload comprises providing a digital code in the display for the consumer to scan the digital code at a point of sale of a retailer store. [0017]
Both Carlson and Gauli teach the use of mobile coupons. It would have been obvious to a person of ordinary skill to indicating the channel for the consumer to redeem the digital payload comprises providing a digital code in the display for the consumer to scan the digital code at a point of sale of a retailer store method of Gauli before the effective filing date of the claimed invention as the method to be used in Carlson, the rational for doing so is that applying the known technique of using an scanning method to receive the digital payload as disclosed by Gauli to the known method of using mobile applications as described by Carlson yields an improved mobile coupon system and having the predictable result of a more efficient system.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carlson et al. (US 2013/0073859) in view Carlson et al. (2018/0189801) hereinafter referred to as Carlson2, further in view of Jung et al. (US 2015/0120550), further in view of Wegner et al. (US 2014/0222530) and in view of Boal et al. (US 2004/0030598)
Claim 10: Carlson discloses the computer-implemented method of claim l, but does not explicitly disclose further comprising directing the client device to communicate with a printer at a retailer store to print the digital payload when the channel for the consumer to redeem the digital payload is an in-store channel. However Boal discloses further comprising directing the client device to communicate with a printer at a retailer store to print the digital payload when the channel for the consumer to redeem the digital payload is an in-store channel. ([0059, 0061, 0064])
Both Carlson and Boal teach the use of mobile coupons. It would have been obvious to a person of ordinary skill to include directing the client device to communicate with a printer at a retailer store to print the digital payload when the channel for the consumer to redeem the digital payload is an in-store channel. method of Boal before the effective filing date of the claimed invention as the method to be used in Carlson, the rational for doing so is that applying the known technique of using an printing method to output the digital payload as disclosed by Boal to the known method of using mobile applications as described by Carlson yields an improved mobile coupon system and having the predictable result of a more efficient system.
Response to Arguments
Applicant's arguments filed November 12, 2025 have been fully considered but they are not persuasive. The applicant argues in regards to the 101 rejection, that the addition neural network adds an additional element that amounts to significantly more than the judicial exception. The Examiner respectfully disagrees on September 26, 2025, the United States Patent and Trademark Office (USPTO) issued an Appeals Review Panel decision in Ex Parte Desjardins, Appeal No. 2024-000567 (PTAB September 26, 2025, Appeals Review Panel Decision) vacating the Board’s new ground of rejection under 35 U.S.C. § 101. The decision was designated precedential on November 4, 2025. (SEE USPTO memorandum dated December 5, 2025) Specifically, Ex Parte Desjardins explained the following:
Enfish ranks among the Federal Circuit's leading cases on the eligibility of technological improvements. In particular, Enfish recognized that “[m]uch of the advancement made in computer technology consists of improvements to software that, by their very nature, may not be defined by particular physical features but rather by logical structures and processes.” 822 F.3d at 1339. Moreover, because “[s]oftware can make non-abstract improvements to computer technology, just as hardware improvements can,” the Federal Circuit held that the eligibility determinations should turn on whether “the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.” Id. at 1336. (Desjardins, page 8). Thus, based on the above and also in accordance with MPEP 2106.05(a) the applicant’s paragraph [0025] in the applicant's specification does not appear to identify a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art. The applicant's claims do not appear to provide an improvement to the functioning of the computer, or an improvement to technology or a technical field. Nor has the applicant stated as such. The claims must include components or steps of the invention that provide the improvement described in the specification. (which the applicant has not provided) The claim itself does not need to explicitly recite the improvement described in the specification, however the claims must reflect the improvement identified in the specification
Limitations that are indicative of integration into a practical application:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
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
The applicant’s claims do not appear to have any limitations that are indicative of integration into a practical application. Thus the 35 U.S.C 101 rejection is maintained. Applicant’s arguments with respect to claim(s) 1-2,4-5,7-12 and 14-15 have been considered but are moot in view of the updated rejection above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARNELL A POUNCIL whose telephone number is (571)270-3509. The examiner can normally be reached Monday - Friday 10:00 - 6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached at (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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/D.A.P/Examiner, Art Unit 3622
/ILANA L SPAR/Supervisory Patent Examiner, Art Unit 3622