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 20, 2026 cancelled claims 7, 17. Claims 1-6, 8-9, 11, 18, and 20-21 were amended and no new claims were added. Thus, the currently pending claims addressed below are claims 1-6, 8-9, 11-16, 18, and 20-21.
Priority
The priority issue has been corrected by the applicant changing the application to a Continuation-in-Part. As such, the instant claims are granted the priority date of October 10, 2018.
Claim Objections
The amendment filed on March 20, 2026 has overcome the Claim Objections to claims 7, 9, and 17. Thus, the objections are hereby withdrawn.
Claim Rejections - 35 USC § 112
The amendment filed on March 20, 2026 has overcome the 35 U.S.C. 112(a) rejection of claims 1-6, 8-9, 11-16, 18, and 20-21 raised in the office action dated December 22, 2025. Thus, the rejections are hereby withdrawn.
The amendment filed on March 20, 2026 has overcome the 35 U.S.C. 112(b) rejection of claims 8-9, 18, and 21 raised in the office action dated December 22, 2025. Thus, the rejections are hereby withdrawn.
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 1-6, 8-9, 11-16, 18, and 20-21 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 claims 1, 11, and 20 require that “the loyalty management application” be configured to “increment a current points balance of a loyalty account associated with a first customer account by an amount of loyalty points earned by the end of a defined account period”, and to “decrement the current points balance of the loyalty account to reduce a points deficit balance of the first customer account”. The examiner has been unable to find support for this in the applicant’s disclosure. According to the applicant’s specification in at least paragraphs 32, 49-50, 52-53, “the loyalty management application” only increments and decrements the current point balance of the loyalty account when instructed to do so by the point balance processor 210. The point balance processor 210 is responsible for performing the process for crediting a loyalty account based on activity perform during the billing period that results in the rewarding of loyalty points; evaluating whether a customer account is associated with a point deficit; and performing a debit from the current point balance of the loyalty account to reduce the point deficit. As such, there is no support for the “loyalty management application” being “configured to increment the current point balance…by an amount of loyalty points earned by the end of a defined account period”. Instead, the applicant’s disclosure supports “loyalty management application” being “configured to increment the current point balance… when requested to do so by the point balance processor. The amount of loyalty points earned by the end of a defined account period, and the amount to in which the current point balance will be incremented is determined by the point balance processor. Likewise, there is no support for the “loyalty management application” being “configured to decrement the current point balance…to reduce a points deficit balance of the first customer account. Instead, the payment point processor determines the amount of the current point deficit balance to decrement to reduce a points deficit balance of the first customer account. Based on the cites paragraphs of the applicant’s specification above, the “loyalty management application” can merely decrement a current points balance in the amount requested by the payment points processor. Based on the applicant’s disclosure, the loyalty management application would not even be aware of the transactions that occur, the amount of loyalty points earned by the transaction, what the defined account period is, the amount of loyalty points earned in the defined account period, a points balance deficit, or how a current points balance can be used to reduce the points balance deficit. According to the cited paragraphs, the point balance processor and/or the offer management system determine the points associated with a point lending offer, create the point balance deficit, store the point balance deficit in the customer account (not the loyalty account) when a point lending offer is accepted, determine the amount of points to be credited to the loyalty account based on the acceptance of the point lending offer and then merely request that the loyalty account management system increment the current points balance by a specific amount. This is also true when the points balance processor performs the act of reducing a points balance deficit. The points balance processor sends a request to the loyalty management application to decrement the current loyalty points in a specific amount. The points balance processor then reduces the point balance deficit stored in the customer account by the same amount. As such, it is clear that the applicant’s disclosure does not have support for a “loyalty management application” configured to “increment a current points balance of a loyalty account associated with a first customer account by an amount of loyalty points earned by the end of a defined account period”, and to “decrement the current points balance of the loyalty account to reduce a points deficit balance of the first customer account”. Therefore, independent claims 1, 11, and 20 have been amended to include subject matter not supported by the applicant’s disclosure and fail to comply with the written description requirement.
Likewise, independent claims 1, 11, and 20 have been amended to recite “interrupting, by the statement processor, the automatic statement generation process to determine a value of the updated points deficit balance and to insert the value of the updated points deficit balance into the generated account statement”. The examiner has been unable to find support for this in the applicant’s disclosure. According to paragraph 71 of the applicant’s specification the statement processor identifies that there is a point deficit balance in the customer’s account, interrupts the statement generation process, determines the value of point deficit balance indicated in the customer’s account, and includes the value of the point deficit balance in the generated statement. There is no support in the applicant’s disclosure of the statement processor determining a value of an updated points deficit balance. It merely takes the value of the deficit point balance that is already stored in the customer account and adds it to the generated statement. Since this interrupting step is “in response to detecting that the points deficit balance associated with of the first customer account subsequent to the decrementing is non-zero”, the applicant’s invention only supports determining the value of the point deficit balance in the customer account and inserting the value of the point deficit balance in the account statement. The statement processor is not able to determine a new value of some new type of updated points deficit balance or to insert this newly determined value of this new type of updated points deficit balance into the account statement as currently claimed. Therefore, independent claims 1, 11, and 20 have been amended to include subject matter not supported by the applicant’s disclosure and fail to comply with the written description requirement.
Dependent claims 2-6, 8-9, 12-16, 18, and 21 fail to cure the deficiencies of the claims from which they depend and, as such, are rejected by virtue of dependency.
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 8-9, and 18 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 8 and 18 recite determining “a modification to the current points balance of the loyalty account”; and generating “a modified account statement reflecting the modification to the current points balance of the loyalty account”. One of ordinary skill in the art would not be able to determine the intended metes and bounds of these limitations.
First, independent claims 1 and 11 from which claims 8 and 18 depend appear to already appear to modify the current points balance of the loyalty account when they recite “increment a current points balance of a loyalty account associated with a first customer account by an amount of loyalty points earned by the end of a defined account period” and “decrement the current points balance of the loyalty account to reduce a points deficit balance of the first customer account”. The “modification” recited in claims 8 and 18 does not have antecedent basis to the incrementing and decrementing of the current points balance of the loyalty account in claims 1 and 11. As such, one of ordinary skill in the art would expect this to be a new type of modification. However, it appears from the applicant’s specification that they only type of modification that can be made to the points balance of the loyalty account is the incrementing or decrementing of the points balance recited in claims 1 and 11. Therefore, one of ordinary skill in the art would not be able to determine what type of modification is being claimed and/or how the applicant’s invention is expected to perform such a modification. Thus, it is clear that claims 8 and 18 are indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor, or a joint inventor, regards as the invention.
Second, if the modification claimed in claims 8 and 18 is expected to be a new modification (e.g., a new incrementing and/or decrementing of the current points balance of the loyalty account), one of ordinary skill in the art would not be able to determine when the applicant expects the new modification to occur. Does the applicant intend for the “modification” to occur before executing the automatic statement generation process, after the automatic statement generation process, or during the execution of the automatic statement generation process, such as during the interrupting of the automatic statement generation process? The answer to this question is not a breadth issue, because performing an additional modification before the account generation process or after the account generation process would raise 112(a) issues. Based on the claims as currently written, the incrementing of the current points balance only occurs at “the end of a defined account period” and before the execution of the automatic statement generation process. The decrementing can occur at any before the execution of the automatic statement generation process. Should an additional step of determining “a modification to the current points balance of the loyalty account”, occur before the execution of the automatic statement generation process then the current points balance “modified” in claims 8 and 18 would occur twice for the same loyalty points. For example, if a user earned 10 loyalty points in a transaction, the incrementing step of claims 1 and 11 would increment the current points balance by 10 loyalty points at the end of the defined account period, and the modification in claims 8 and 18 would also increment the current points balance by 10 loyalty points before the execution of the automatic statement generation process. This would result in the current points balance being incremented by 20 points even though the user only actually earned 10 loyalty points. The examiner has been unable to find support in the applicant’s specification for performing such a modification. Likewise, performing the modification after executing the account generation process would mean that the incrementing and decrementing of the current points balance for end of the defined account period has already been completed, and the statement for the period has been generated. Thus, the modifying the current point balance would inherently require that the loyalty points earned and/or spent occurred in a different defined account period, and the modified account statement would inherently require included loyalty points earned and/or spent in a different period on an account statement for the current defined account period. The examiner has been unable to find support in the applicant’s specification for included points earned or spent in a different period on an account statement for the current period. Finally, if the modification of claims 8 and 18 is expected to be performed during the interrupting portion of the automatic statement generation process, then the claim would need to have antecedent basis to the determining a value of the updated points deficit balance and/or the inserting of the value of the updated points deficit balance. Thus, it is clear that claims 8 and 18 are indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor, or a joint inventor, regards as the invention.
Finally, the generating of “a modified account statement reflecting the modification to the current points balance of the loyalty account” does not have antecedent basis to any of the actions performed by the automatic statement generation process. As such, the step would appear to require such a modified account statement to occur after the automatic statement generation process has been completed. However, the examiner has been unable to find support in the applicant’s specification for modifying an account statement generated by the automatic statement generation process has already been completed, much less doing so by using a current points balance that includes points earned and/or spend is a different period than the period for which the original account statement represent. Therefore, interpreting the limitation as being performed after the account statement generation process has already completed would result in a 112(a) issue. Hence, it would appear that the generating of the modified account statement would need to occur at some point during the automatic account generation process. However, given that the automatic account generation process of claim 1 and 11, is interrupted so that a determination of the updated points deficit balance and insertion of the value of the updated points deficit balance can be inserted, it would not appear that claims 8 and 18 would be generating a “modified account statement”. Instead, it would appear that the claim would determine a modification to the current points balance and then insert the modified current point balance into the automatic statement being generated during the automatic statement generation process. As such, it is impossible for one of ordinary skill in the art to determine the metes and bounds of the generating step in claims 8 and 18, which renders the claims indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor, or a joint inventor, regards as the invention.
Dependent claim 9 fails to cure the deficiencies of the claim from which it depends and, as such, are rejected by virtue of dependency.
Claim 21 is 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 21 recite “wherein the loyalty management application is caused to increment the current points balance of the loyalty account based on tracking, in real-time, account operations performed in connection with the first customer account during the account period”. However claim 1 from which it depends recites “cause a loyalty management system application to increment a current points balance of a loyalty account associated with a first customer account by an amount of loyalty points earned by the end of a defined account period”. The incrementing in claim 21 does not have antecedent basis to the incrementing in claim 1. As such, it would appear that the applicant intends the incrementing in claim 21 to be a new incrementing step. However, interpreting the incrementing step of claim 21 in this manner would result in a 112(a) issue because the examiner cannot find support for incrementing the current points balance twice for loyalty points earned during a single account period in the applicant’s specification. For example, based on claim 21 as currently written, if a user earned 10 loyalty points in a transaction, the incrementing step of claims 1 would increment the current points balance by 10 loyalty points at the end of the defined account period, and the incrementing step of claim 21 would also increment the current points balance by 10 loyalty points before the execution of the automatic statement generation process. This would result in the current points balance being incremented by 20 points even though the user only actually earned 10 loyalty points. The examiner has been unable to find support in the applicant’s disclosure for such a second incrementing of the current points balance in the applicant’s disclosure. However, if the limitation is expected to further limit the incrementing step of claim 1, then one of ordinary skill in the art would expect the incrementing in claim 21 to have antecedent basis to the incrementing recited in claim 1 by reciting something like “wherein the incrementing of the current points balance of the loyalty account is based on tracking, in real-time, account operations performed in connection with the first customer account during the account period” instead of reciting an entirely different incrementing step. Thus, it is clear that claim 21 is indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor, or a joint inventor, regards as the invention.
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 1-6, 8-9, 11-16, 18, and 20-21 are directed to a system, a computer program product and a method 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 1-6, 8-9, 11-16, 18, and 20-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Independent claim(s) 1, 11, and 20 recite(s) the following abstract idea:
incrementing a current point balance of a loyalty account associated with a first customer account by an amount of loyalty points earned by the end of a defined account period;
decrementing the current points balance of the loyalty account to reduce a point deficit balance of the first customer account;
executing, for the first customer account, an automatic statement generation process by generating an account statement including (1) the current points balance of the loyalty account and (2) a current account balance of the first customer account, wherein the generating includes:
in response to detecting that the point deficit balance of the first customer account subsequent to the decrementing is non-zero, interrupting the automatic statement generation process to determine a value of the updated points deficit balance and to insert the value of the updated points deficit balance into the account statement.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely commercial or legal interactions because they recite advertising, marketing and sales 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 computing system comprising a processor, and a memory executing software (i.e., a loyalty management application, a statement processor, and an application programming interface communication channel) which is merely a general-purpose computer with generic computer components.
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 computing system comprising a processor, and a memory executing software (i.e., a loyalty management application, a statement processor, and an application programming interface communication channel) which is merely a general-purpose computer with generic computer components 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 1 and paragraphs 23 and 27-28 of the applicant’s specification and Cho (PGPUB: 2010/0010738) which discloses, in at least paragraph 37, that application programming interface communication channels for internal and external communications were well-known by the effective filing date of the instant application); 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.
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 2-6, 8-9, 12-16, 18, and 21 appear to merely further limit the abstract idea by further limiting the generating of the account statement which is considered part of the abstract idea (Claims 2 and 12); further limiting the point deficit balance associated with the first customer account which is considered part of the abstract idea (Claims 3 and 13); adding the additional element of an API communication channel which have already been addressed in the rejection above, as well as, performing additional steps of connecting to an external system and/or an internal system which are considered part of the abstract idea (Claims 4-6 and 14-16); adding the additional step of determining a modification to the current points balance and generating a modified account statement which are both considered part of the abstract idea (Claims 8 and 18); adding the additional step of storing the account statement which is considered part of the abstract idea (claim 9); and adding an additional step of incrementing the current points balance which is considered part of the abstract idea (Claim 21), 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 1-6, 8-9, 11-16, 18, and 20-21 are not patent eligible.
Possible Allowable Subject Matter
Claims 1-6, 8-9, 11-16, 18, and 20-21 would be allowable over the prior art if the applicant were to be able to overcome the 35 USC 112(a) rejections, the 35 USC 112(b) rejections, and the 35 USC 101 rejections identified above.
The following is a statement of reasons for the indication of allowable subject matter: The examiner has found prior art that discloses performing each of the claimed steps in a single account (see Johnson et al. - 2008/0208689 and Cho - 2010/0010738).
However, the examiner has been unable to find prior art that discloses performing the claimed steps using a financial account that includes a point deficit balance and a loyalty account that contains a loyalty point balance, wherein adjustments to the two different accounts are performed in the manner claimed.
As such, claims 1-6, 8-9, 11-16, 18, and 20-21 would be allowable over the prior art if the applicant were to be able to overcome the 35 USC 112(a) rejections, the 35 USC 112(b) rejections, and the 35 USC 101 rejections identified above.
Response to Arguments
Applicant's arguments filed March 20, 2026 have been fully considered but they are not persuasive.
The applicant’s arguments with regard to the 35 USC 101 rejection are not convincing.
The applicant asserts that the claims overcome the 35 USC 101 rejection under Step 2a, Prong 2 because the claims recite at least three interrelated computer operations which is a concrete, machine-driven workflow for generating a synchronized electronic statement after account-period points reconciliation, not a mere conceptual statement that a certain balance should be adjusted. The examiner disagrees. “Additional elements” are defined as those elements of a claim that are not part of the abstract idea itself. The “additional elements” of the claim are merely a computer with a processor and memory executing software. The fact that different software modules (i.e., the loyalty management application and the statement processor) perform different functions does not make these software modules anything other than mere software. Software modules are not an arrangement of devices. Thus, the “additional elements” of the independent claims are a computing system with a processor and memory executing software (i.e., the loyalty management application and the statement processor) which is merely a general-purpose computer with generic computer components executing software. Based on the claim, the identified abstract idea is merely applied using these “additional elements” as a tool which is insufficient to transform an abstract idea into a practical application under Step 2a, Prong 2. The engagement of the automatic statement generation process, the interruption of the automatic statement generation process, the inserting of the value of the points deficit balance into the statement being generated, as well as, the timing of these actions are all part of the abstract idea itself which is merely applied using the general-purpose computer with generic computer components. As such, any purported improvement obtained by practicing the claimed invention is rooted in the abstract idea itself which is merely applied using the general-purpose computer with generic computer components. Improvements of this nature are improvements 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 transform an abstract idea into a practical application under Step 2a, Prong 2, the improvement must be rooted in the “additional elements” of the claim in a manner other than merely applying the abstract idea using a general-purpose computer with generic computer components. Contrary to the applicant’s assertion otherwise, the claims do not recite a “dual-system environment”. Instead, the claims recite a single system executing two software modules which is nothing more than merely applying the abstract idea using a general-purpose computer executing software. Thus, the applicant’s arguments are not convincing and the rejections have been maintained.
The applicant asserts that the claims overcome the 35 USC 101 rejection under Step 2b because the additional elements, considered individually and as an ordered combination, amount to “significantly more” than the alleged abstract idea. The examiner disagrees. “Additional elements” are defined as those elements of a claim that are not part of the abstract idea itself. The only “additional elements” in the independent claims are a computing system with a processor and memory executing software. The fact that different software modules (i.e., the loyalty management application and the statement processor) perform different functions does not make these software modules anything other than mere software. Thus, whether considered individually or as an ordered combination, the “additional elements” of the claims amount to a general-purpose computer with generic computer components which is merely used as a tool to apply the abstract idea which is insufficient for said “additional elements” to be considered “significantly more” than the abstract idea under Step 2b. The applicant’s arguments seem to misconstrue the meaning of “additional elements” as used in MPEP 2106. The specific sequence of incrementing the points balance…, decrement the points balance…, executing an automatic statement-generation process…, detecting whether the points deficit remains non-zero…, interrupting the automatic statement-generation process… are all part of the abstract idea itself. Thus, these steps are an order combination of the abstract idea, not an ordered combination of the “additional elements” of the claim. As the applicant correctly noted, in order to overcome the 101 rejections under Step 2b, the “additional elements”, considered individually and as an ordered combination, must amount to “significantly more” than the abstract idea. As indicated above, the “additional elements” of the claims, whether considered individually or as a whole are a general-purpose computer with generic computer components executing software which is insufficient to be considered “significantly more” than the abstract idea. Thus, the applicant’s arguments are not convincing and the rejections have been maintained.
The applicant also argues that the Berkheimer memo requirs proof than an element or combination of elements is well-understood, routine, and conventional under Step 2b. It appears from this argument that the applicant has also misconstrued the Berkheimer memo. The Berkheimer memo does not require proof than an element or combination of elements is well-understood, routine, and conventional under Step 2b. Instead, the Berkheimer memo require proof than the “additional element” or combination of “additional elements” are well-understood, routine, and conventional under Step 2b. The examiner has clearly provided proof, in the 101 rejection above, that the “additional elements” of the claims were well-understood, routine, and conventional before the effective filing date of the applicant’s invention. Furthermore, the applicant has not provided any evidence to refute the examiner’s position that the computing system with a processor an memory executing software is anything other than a general-purpose computer with generic computer components executing software. Likewise, there is no indication, in the applicant’s disclosure, that the applicant invented some new type of computing system, new type of processor, or new type of memory. The Berkheimer memo does not require proof that steps of the abstract idea itself are well-understood, routine, and conventional. As such, the requirements set forth in the Berkheimer memo have been met, and the rejections have been maintained.
The applicant argues that the statement-generation process is not merely insignificant post-solution activity. However, such an argument is moot because the statement-generation process is part of the abstract idea itself. As such, it doesn’t matter whether or not the step is insignificant post-solution activity. Under Step 2b, and Step 2a, Prong 2 for that matter, only “additional elements” of the claim are evaluated to determine whether not they recite insignificant extra-solution activity such as storing data, receiving data, transmitting data, and displaying data because when such “additional elements” are not insignificant extra-solution activity they could potentially recite an improvement that transforms the abstract idea into a practical application under Step 2a, Prong 2 and/or could potentially be “significantly more” under Step 2b. However, steps of the abstract idea itself can neither overcome a 101 rejection under Step 2a, Prong 2, nor overcome a 101 rejection under Step 2b. As such, the applicant’s arguments are not convincing and the rejections have been maintained.
The applicant’s argument with regards to the processor-driven interruption mechanism is not convincing. The claims do not recite a processor-driven interruption mechanism. The statement-processor is software not a physical processor, and as such cannot be properly called a processor-driven interruption mechanism. Yes, the processor executes this statement-processor software module to perform the interruption step of the abstract idea, but this is nothing more than a general-purpose computer being used as a tool to merely apply the interrupting step of the abstract idea. As such, the applicant’s arguments are not convincing and the rejections have been maintained.
The applicant argues that the loyalty management application module and the statement-processor software module perform different functions. This is true, but given the nature of all object oriented programming language, all such software modules perform different functions. As such, whether one portion of the abstract idea is performed by one module and another portion of the abstract idea is performed by a different model does not change the fact the claim is merely requiring that the abstract idea is applied using a general-purpose computer with generic computer component executing software which is insufficient to be considered “significantly more” under Step 2b. Thus, the applicant’s arguments are not convincing and the rejections have been maintained.
The applicant’s arguments with regards to the Berkheimer requirements have already been addressed above. While the examiner has, as indicated in the previously response to arguments, provided the required proof under Berkheimer that the “additional elements” of the claim were well-understood, routine and conventional, the applicant’s argument regarding the examiner pointing to an express admission in the specification, qualifying court decision, or publication proving said “additional elements” were well-understood, routine, and conventional is incorrect. The Berkheimer memo also allows for an examiner to use common knowledge. As clearly explained in MPEP 2144.03: “To adequately traverse a finding based on official notice, an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art. A mere request by the applicant that the examiner provide documentary evidence in support of an officially-noticed fact is not a proper traversal.” Thus, for an examiner to be required to provide proof that the “additional elements” were well-understood, routine, and conventional before the effective filing date, the applicant would need to put forth an argument stating why the noticed “additional elements” are not considered to be common knowledge or well-known in the art, as well as, request that the examiner provide documentary evidence. Thus, had the examiner not already provided the necessary proof, the applicant’s arguments would not have represented a proper traversal because no argument was presented stating exactly why the computer device with a processor and a memory executing software was not considered to be common knowledge or well-known in the art. Nonetheless, given that the examiner has provided the requisite proof that the “additional elements” of the claim were well-understood, routine, and conventional, the applicant’s argument is 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:
Johnson et al. (PGPUB: 2008/0208689) discloses incrementing a current resource amount of a first digital resource in an account by an amount of the first digital resource accrued during a defined time period; decrementing the current resource amount of an the account to reduce a deficit of the first digital resource; and generating, for the account, a resource record comprising a statement including (1) the current resource amount and (2) the deficit associated with the account; in response to detecting that the resource deficit associated with the account is non-zero, automatically updating the resource record with the current resource amount, wherein a detection of the outstanding resource amount of the account being non-zero occurs during an automatic generation of the resource record, and wherein automatically updating the resource record to insert a value of the outstanding resource amount into the resource record for the account comprises interrupting the automatic generation of the resource record to insert the value of the outstanding resource amount into the resource record.
Cho (PGPUB: 2010/0010738) which discloses communication channels that comprise an application programming interface.
Kern (PGPUB: 2002/0161630) which discloses using the points in a loyalty program to reduce the balance of a loan by tracking accumulated loyalty points and selectively applying the accumulated loyalty points for repayment of the loan.
Postrel (PGPUB: 2005/0021400) which discloses a loyalty program that allows users to borrow additional points from the system.
Matthews (WO2013003910A1) which discloses users entering into loan agreements for borrowed points and periodically or automatically decrementing the current point balance of a user to repay the outstanding loan point amount.
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.
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/John Van Bramer/Primary Examiner, Art Unit 3622
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