DETAILED ACTION
Claims 1-20 are pending with Claims 1-15 and 19-20 being withdrawn. Claims 16-18 are considered in this Office 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 .
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 12/27/2023 has been acknowledged.
The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. The initialed and dated copy of Applicant’s IDS form 1449 is attached to the instant Office action.
Election/Restrictions
Claims 1-15 and 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Claims 1-15 and 19-20 have been withdrawn by Applicant.
Applicant's election without traverse of the non-elected Claims in the reply filed on 7/29/2025 is acknowledged.
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.
Claims 16-18 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor.
Regarding Claim 16, the phrases "such as" and “i.e. …” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). The dependent Claims inherit the deficiencies of the independent Claims they rely on and thus are similarly rejected.
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.
Alice – Claims 16-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 16 is directed at limitations for (i) giving consumers exposure to direct digital financial incentives for a merchant, such as discounts or coupons delivered to customers' mobile phones (Transmitting Information, an observation and judgment, a Mental Process; Organizing and Tracking Information for a Commercial Interaction, i.e. incentivizing purchases; a Certain Method of Organizing Human Activity) (ii) directly measuring the actual conversion at the merchant - i.e. directly measuring the actual purchases linked to specific incentives (Analyzing the Information, an evaluation, a Mental Process; Organizing and Tracking Information for a Commercial Interaction, i.e. incentivizing purchases; a Certain Method of Organizing Human Activity) (iii) modifying the direct digital financial incentives (e.g. targeting more consumers, targeting different consumers, using different incentives, using more valuable incentives) until the merchant's requirements (e.g. new customer acquisition, increased sales) have been satisfied (e.g. a threshold number has been reached for: new customers, or increased sales) (Analyzing and Transmitting the Analyzed Information, an evaluation and judgment, a Mental Process; Organizing and Tracking Information for a Commercial Interaction, i.e. incentivizing purchases; a Certain Method of Organizing Human Activity), which under their broadest reasonable interpretation, covers performance of the limitation in the mind for the purposes of organizing and tracking information for incentivizing purchases, a Commercial Interaction, but for the recitation of generic computer components. That is, other than reciting a data analytics system and mobile phones, nothing in the claim element precludes the step from practically being performed or read into the mind for the purposes of Organizing and Tracking information for a Commercial Interaction, i.e. incentivizing purchases. For example, directly measuring the actual conversion at the merchant encompasses a person, manager, floor manager, supervisor, etc. who tracks the purchases of items based on coupon use, an observation, evaluation, and judgment. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas, an observation, evaluation, and judgment. Further, as described above, the claims recite limitations for organizing and tracking information for a Commercial Interaction, a “Certain Method of Organizing Human Activity”. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim recites the above stated additional elements to perform the abstract limitations as above. The data analytics system and mobile phones are recited at a high-level of generality (i.e., as a generic software/module performing a generic computer function of storing, retrieving, sending, and processing data) such that they amount to no more than mere instructions to apply the exception using generic computer components. Even if taken as an additional element, the transmitting steps above are insignificant extra-solution activity as these are receiving, storing, and transmitting data as per the MPEP 2106.05(d). 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. 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, when considered both individually and as an ordered combination. As discussed above with respect to integration of the abstract idea into a practical application, the additional element being used to perform the abstract limitations stated above amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. The claim is not patent eligible. Applicant’s Specification is silent to any details of either the phones or the system, other than the process by which they are used, which means basically any type of processor, such as any personal computer, laptop, mobile phone, tablet, etc., may be used to perform the abstract limitations, and from this interpretation, one would reasonably deduce the aforementioned steps are all functions that can be done on generic components, and thus application of an abstract idea on a generic computer, as per the Alice decision and not requiring further analysis under Berkheimer, but for edification the Applicant’s specification has been used as above satisfying any such requirement. This is “Applying It” by utilizing current technologies. For the receiving and storing steps that were considered extra-solution activity in Step 2A above, if they were to be considered additional elements, they have been re-evaluated in Step 2B and determined to be well-understood, routine, conventional, activity in the field. The background does not provide any indication that the additional elements, such as the system, phones, etc., nor the transmitting steps as above, are anything other than a generic, and the MPEP Section 2106.05(d) indicates that mere collection or receipt, storing, or transmission of data is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). For these reasons, there is no inventive concept. The claim is not patent eligible.
Claims 17-18 contain the identified abstract ideas, further narrowing them, with no additional elements to be considered as part of a practical application or under prong 2 of the 2019 PEG, thus not integrated into a practical application, nor are they significantly more for the same reasons and rationale as above.
After considering all claim elements, both individually and in combination, Examiner has determined that the claims are directed to the above abstract ideas and do not amount to significantly more. Therefore, the claims and dependent claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank International, No. 13–298.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tietzen (U.S. Publication No. 2021/010,3948).
Regarding Claim 16, Tietzen, a method for populating member profiles, teaches:
(i) giving consumers exposure to direct digital financial incentives for a merchant, such as discounts or coupons delivered to customers' mobile phones ([0082-86] incentives are sent by merchants and the system [0445] which sends information to a persons mobile phone)
(ii) directly measuring the actual conversion at the merchant - i.e. directly measuring the actual purchases linked to specific incentives ([0079] the system measures many different KPIs such as [0145] conversion of users through their purchases);
(iii) modifying the direct digital financial incentives (e.g. targeting more consumers, targeting different consumers, using different incentives, using more valuable incentives) until the merchant's requirements (e.g. new customer acquisition, increased sales) have been satisfied (e.g. a threshold number has been reached for: new customers, or increased sales) ([0086] incentives are modified by the merchant based on the performance indicators which is a requirement that has been satisfied.
Regarding Claim 17, Tietzen teaches configured to capture: (i) the specific identities of potential consumer that are targeted with one or more financial incentives to purchase goods or services; (ii) the actual value of the financial incentives ([0122] cost of incentives is actual value) (iii) whether the financial incentives were successful in triggering an actual purchase ([0230] successful rewards are tracked through the purchases) (iv) the amount of that purchase ([0127] amount of transaction); and (v) how varying the financial incentives alters actual purchasing behaviour ([0086-89] incentives are changed based on how the customer changes or what they do).
Regarding Claim 18, Tietzen teaches implemented by a credit or debit card company, or a digital payment company, or an online retailer, or a physical retailer or an online advertising company ([0609] advertising provider uses this along with debit and credit cards [0005] and stores [0390]).
Conclusion
The prior art made of record is considered pertinent to applicant's disclosure.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH M WAESCO whose telephone number is (571)272-9913. The examiner can normally be reached on 8 AM - 5 PM M-F.
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/JOSEPH M WAESCO/Primary Examiner, Art Unit 3683 8/21/2025