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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 2, 2025 has been entered.
Response to Amendment
The amendment filed on November 3, 2025 cancelled no claims. Claims 1-3, 7-8, 11-13, 17-18, and 20 were amended and new claim 21 was added. Thus, the currently pending claims addressed below are claims 1-9, 11-18, and 20-21.
Priority
The proposed amendment has failed to overcome the priority issue. The applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 112(a) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 18/077,916, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Applicant states that this application is a continuation or divisional application of the prior-filed application. A continuation or divisional application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:
Originally filed claims 1, 11, and 20 of the instant application recited the following terms and/or phrases which are broader than any related terms found in the disclosure in Application No. 18/077,916: “resource management system”, “resource”, “amount of resource accrued during a period”, “outstanding resource amount”, and/or “resource record”. While the disclosure of Application No. 18/077,916 supports a species of these terms (see Claim Interpretation section below), there is support for the genus that encompasses said species in Application No. 18/077,916. For example, the Oxford English Dictionary defines a resource as “a stock or supply of money, materials, staff, and other assets that can be drawn on by a person or organization in order to function effectively”. Thus, a resource management system, resource, amount of resource accrued during a period, outstanding resource amount, and/or resource record are all broad enough to encompass an invention that performs the claimed step using any type of resources such as money, materials, staff, and or other assets that can be drawn on by a person or organization. The disclosure of Application No. 18/077,916 merely supports performing the claimed steps using a resource that is loyalty points but does not support performing the claimed step using any other type of resource.
Please note that neither cancelling claims 1, 11, and/or 20, nor amending claims 1, 11, and/or 20 can correct this issue. The instant application must be changed to a continuation-in-part. As per MPEP 211.05(I)(B):
“The disclosure of a continuation application must be the same as the disclosure of the prior-filed application; i.e., the continuation must not include anything which would constitute new matter if inserted in the original application. See MPEP § 201.07.”
“The disclosure of a continuation or divisional application cannot include anything which would constitute new matter if inserted in the prior-filed application.”
and, as per MPEP 2163:
“The claims as filed in the original specification are part of the disclosure and, therefore, if an application as originally filed contains a claim disclosing material not found in the remainder of the specification, the applicant may amend the specification to include the claimed subject matter. In re Benno, 768 F.2d 1340, 226 USPQ 683 (Fed. Cir. 1985).”
Thus, if Priority as a Continuation were to be granted by merely cancelling the claims as originally filed to overcome the lack of support issue, then the applicant could later amend the specification to include the cancelled subject matter as per MPEP 2163(I)(B) because the subject matter was found in the claims as originally filed. This would result in the application maintaining the status as a Continuation and given the priority date of the original application, yet still require the entry of New Matter. As such, merely cancelling the claimed subject matter is not sufficient.
As the instant application cannot be a Continuation of Application No. 18/077,916 and is currently not a Continuation-in-part of Application No. 18/077,916, the priority date for the instant application is it filing date of March 1, 2024.
Claim Objections
Claims 7, 9, and 17 are objected to because of the following informalities:
Claim 7 has been amended to recite: “generating the account statement for the account comprising a current account amount corresponding to the account and the identified current resource amount of the resource account;”
Claim 9 has a status identifier of (Original) and was not amended. Thus, claim 9 recites: “storing the resource record in the account”;
Claim 17 has been amended to recite: “generating the resource record for the account comprising a current points balance corresponding to the account and the identified current points balance of the resource account;”
The examiner believes these a merely typographical errors because the remainder of the applicant’s claims have been amended to remove the terms “resource amount”, “resource record”; and “resource account”, in an effort to overcome the 35 USC 112(a) rejection of the claims detailed in the Office Action dated September 2, 2025. As such, the examiner believes the applicant intended the term “the identified current resource amount” to recite “the identified current point balance”; the term “the resource account” to recite “the loyalty account”; and the term “the resource record” to recite “the account statement”. For the same reason identified above, the examiner believes the applicant intended claim 9 to have the status identifier of (Currently Amended).
. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The amendment filed November 3, 2025 has, assuming that the Claim Objections identified above were typographical errors, overcome the 35 USC 112(a) rejections of claims 1-9, 11-18, and 20 detailed in the Office Action dated September 2, 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 1-9, 11-18, 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.
The broadest reasonable interpretation of claim 1 is a computer-implemented system comprising a processor and a memory storing instructions which, when executed by the processor, cause the processor to execute actions performed by a loyalty management system. The examiner has been unable to find support in the applicant’s disclosure for a processor on one computer that executes actions on a different computer. As such, the claimed “a computer-implemented system” must, therefore, be interpreted as “a loyalty management system comprising a processor and a memory storing instructions which, when executed by the processor, cause the processor to automatically perform operations comprising”. Any other interpretation fails to comply with the written description requirement.
The broadest reasonable interpretation of claim 11 is a non-transitory, computer-readable medium storing computer-readable instructions executable by a computer to execute actions performed by a loyalty management system. The examiner has been unable to find support in the applicant’s disclosure for a processor on one computer that executes actions on a different computer. As such, the claimed “a non-transitory, computer-readable medium storing computer-readable instructions executable by a computer” must, therefore, be interpreted as “a non-transitory, computer-readable medium storing computer-readable instructions executable by a loyalty management system computer and configured to perform operations comprising:”. Any other interpretation fails to comply with the written description requirement.
The broadest reasonable interpretation of claim 20 is a computerized method performed by a processor, the method comprising: executing actions performed by a loyalty management system. The examiner has been unable to find support in the applicant’s disclosure for a processor on one computer that executes actions on a different computer. As such, the claimed “a computerized method performed by a processor” must, therefore, be interpreted as “a computerized method performed by a processor of a loyalty management system computer, the method comprising:”. Any other interpretation fails to comply with the written description requirement.
As such, independent claim 1, 11, and 20, all require that the applicant’s disclosure must have support for a loyalty management system (i.e., loyalty management system computer) that performs each of the claim steps. However, the examiner has been unable to find support, in the applicant’s disclosure, for a loyalty management system performing each of the claimed steps. The only mention of a “loyalty management system” in the applicant’s disclosure is found in paragraphs 46-54 and figure 2a-2d. According to the disclosure, in at least paragraph 46, financial system 202, loyalty management system 204, offer management system 206, and customer device 208 are all separate systems. According to the disclosure, in paragraphs 47-54, loyalty management system 204 can maintain a loyalty account for a customer, transmit balance information, and receive loyalty point debit and credit request from the systems, and apply loyalty point debits and credits based on the requests. As such, the applicant’s disclosure does not have support for a loyalty management system at least generating the claimed account statement, the claimed detecting of the points deficit balance being non-zero, the claimed automatically updating the account statement, the claimed performing an automated statement generation process, nor the loyalty management having a statement processor.
The only support in the applicant’s specification for a single computer having a statement processor and being capable of performing each of the claimed steps is found in paragraphs 39 and 46, as well as, figure 1, where a financial management system computer is being disclosed as being capable of performing each of functions financial system 202, loyalty management system 204, offer management system 206, and customer device 208 disclosed in the specification. As such, it is clear that independent claims 1, 11 and 20 have been amended to include subject matter not found in the applicant’s disclosure.
Dependent claims 2-9, 12-18, and 21 fail to cure the deficiencies of the claims from which they depend and, as such, are rejected by virtue of dependency.
For the purpose of prosecuting the claims, the examiner is going to consider the phrase “loyalty management system” as if it recited “financial management system”.
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 7-9, 17-18, and 21 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.
Each of independent claims 1, 11 and 20 recite generating an account statement; automatically updating the account statement; and wherein the automatic updating includes performing an automated statement generation process for the first customer based on interrupting the automatic statement generation process. One of ordinary skill in the art would not be able to determine the intended metes and bounds of these limitations. Based on the claims as currently written, the “generating” step must occur after the decrementing step because the account statement includes “the points deficit balance” which was decremented in the “decrementing” step. The claimed “generating” step results in a generated “an account statement”. Additionally, the automatically updating step is required to be performed after the “decrementing” step and after the “generating” step because it is “the generated account statement” that is being updated. Thus far, the claim is clear. However, it appears that updating the already generated “account statement” includes “performing an automated statement generation process”. It appears that this must be a new statement generation process that the “generating” step because it must occur as part of the updating of the generated account statement. However, “updating the account statement” usually means modifying or altering “the account statement”. It appears, however, that the applicant intends “updating the account statement” to mean generating an entirely new account statement because the claimed updating is performed not by modifying “the account statement” but instead by executing an entirely new “statement generation process”. However, a new account statement obtained by executing a new statement process would not have antecedent basis to “the account statement” generated in the generating step and, as such, could not be considered “updating the account statement”. As such, it is impossible for one of ordinary skill in the art to determine the intended metes and bounds of the claim limitations.
Additionally, the claims require “performing an automated statement generation process...based on interrupting…the automatic statement generation process to insert a value of the updated points deficit balance into the generated statement”. First one of ordinary skill in the art would not how to perform an automated statement generation process based on interrupting said process. While it is certainly possible for a process to include an interrupting step, one or ordinary skill in the art could not figure out how the applicant’s invention performs a process “based on” interrupting said process. Does the applicant intend the limitation to mean performing an automated statement generation process, wherein performing the process includes a step of interrupting the process? Second, the claims never recite “updating” the “points deficit value”. According to the “configuring” step of the claims decrementing the current points balance of the loyalty account”, reduces “a point deficit balance”. This could be considered an update to the “point deficit balance”. However, as indicated above, the claimed “an account statement” which is generated in the generating step occurs after any said reduction. As such, the account statement would already appear to include any such updated point deficit balance. Does the applicant really intend to update the generated account statement to include information already in said account statement balance? Perhaps the applicant intends to generate a first account statement balance, then generate a second account statement balance with the exact same information as the first account balance, wherein the generation of the second statement account balance is paused at some point so the points deficit balance can be inserted? Is the different intended to be that while both generated statements include the same information for the same account, the first generating step does not pause while inserting the point deficit value, while the second generating step is interrupted in order to add this information to the account statement? Is there really intended to be two different generating steps or does the applicant, perhaps intend there only be a single generating step? Is the “automated statement generation process” supposed to include the original generating step as part of said process? If so, that is not what the claim is currently doing. If this is the intended scope, it would appear the automated statement generation process would comprise: generating an account statement including the current points balance; pausing the process if is determine that the point deficit balance is non-zero; and in response to determining that the point deficit balance is non-zero, modifying the account statement to include the points deficit balance. Finally, unless the applicant intends that only one account statement actually be generated, the claimed “the generated statement” could have antecedent basis to the account statement generated in the generating step or a new statement generated by the “automated statement generation process”. As such, the term is indefinite.
Dependent claims 2-9, 12-18, and 21 fail to cure the deficiencies of the claims from which they depend and, as such, are rejected by virtue of dependency.
Given that the examiner has been unable to find support for generating two different statements, both with the exact same information for the same account, the examiner is going to interpret the limitations as if just one account statement is being generated. Thus, the automated generation process comprises: starting to generate an account statement including the current points balance; pausing the process if is determine that the point deficit balance is non-zero; in response to determining that the point deficit balance is non-zero, modifying the account statement to include the points deficit balance; and finishing the process.
Claims 7-9, 17-18, and 21 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.
Each of claims 7-9, 17-18, and 21 include the term “the account”. However, independent claims 1 and 11, from which they depend recite both “a loyalty account” and “a first customer account”. As such, the term “the account” in each of these claims lacks proper antecedent basis. It is impossible for one of ordinary skill in the art to determine which of the two accounts the applicant intends “the account” to have antecedent basis; whether the applicant intends to the term to have an antecedent basis to different accounts based on the claim within which it is recited; and/or intends the claim to recite “an account”, thereby limiting the claims to include three or more accounts. For example, it is likely that the term “the account” in claim 7 is intended to have antecedent basis to “the first customer account” since claim 1 generates the account statement for the customer account. However, it is just as likely that the applicant intends the invention of claim 7 to perform a new generating step that generates a second account statement for the “loyalty account” because claim 1 already generates an account statement for the customer account. If the applicant intended the generating of claim 7 to further limit the generating step of claim 1, one of ordinary skill in the art would expect claim 7 to recite “wherein the generating of the account statement further comprises …”. Likewise, claim 8 recites determining a modification to the outstanding points balance of the account. However, claim 1 never recites “an outstanding points balance”. Based on claim 1, the loyalty account has a points balance, and the first customer account has a points deficit balance. Thus, depending on the applicant’s intention regarding the term “outstanding”, he might be referring to modifying the points deficit balance of the first customer account, or alternatively modifying the points balance of loyalty account based on newly earned or spent loyalty points. Claims 9, 17-18, and 21 each have similar interpretation issues with regard to the term “the account”, that make it impossible for one of ordinary skill in the art to the determine the applicant’s intended metes and bound of the claim. Given, that each interpretation results in a claim with a different scope, the claims are indefinite for failing to particularly point out and distinctly claim the applicant’s invention.
For the purpose of prosecuting the claims, the examiner will consider prior art that discloses either a loyalty account or first customer account to satisfy the requirements of the claimed “the account”
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 1-9, 11-18, 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 1-9, 11-18, 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;
generating, for the first customer account, an account statement including (1) the current points balance of the loyalty account and (2) the point deficit balance associated with the first customer account;
in response to detecting that the point deficit balance associated with the first customer account subsequent to the decrementing is non-zero, automatically updating the account statement with the current points balance, wherein the automatically updating includes performing an automated statement generation process for the first customer account based on interrupting, the automatic statement generation process to insert a value of the updated points deficit balance into the generated statement.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely advertising, marketing, or sales related activities or behaviors. Accordingly, the claim recites an abstract idea (i.e., “PEG” Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application because the claim only recites the additional elements of:
a loyalty management system comprising at least one hardware processor (i.e., a statement processor) which is interoperably coupled with at least one memory storing instructions (e.g., a general-purpose computer with generic computer components); and
an API communication channel for internal or external communications (e.g., a generic computer component).
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 loyalty management system comprising at least one hardware processor (i.e., a statement processor) which is interoperably coupled with at least one memory storing instructions (e.g., a general-purpose computer with generic computer components); and an API communication channel for internal or external communications (a generic computer component) 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 API 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 2-9, 12-18, and 20 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 additional steps of obtaining additional information and transmitting the resource record to an account device outside the scope of the claim, as well as, further limiting the generating of the account statement which are all considered part of the abstract idea (Claims 7 and 17); adding the additional step of determining a modification to the outstanding 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 resource record 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 1-9, 11-18, and 20-21 are not patent eligible.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-9, 11-18, and 20-21 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Bloy et al. (PGPUB: 2020/0118156).
Claims 1, 11, and 20: Bloy discloses a computer-implemented system, A non-transitory, computer-readable medium, and a computerized method comprising:
at least one memory storing instructions; and at least one hardware processor interoperably coupled with the at least one memory, wherein the instructions, when executed by the at least one hardware processor, cause the computer-implemented system to automatically perform operations (Claim 1) comprising:
causing a loyalty management system 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 (Claim 4);
configuring the loyalty management system to decrement the current points balance of the loyalty account to reduce a points deficit balance of the first customer account (Claim 4);
generating, for the first customer account, an account statement comprising a statement including (1) the current points balance of the loyalty account and (2) the points deficit balance associated with the first customer account (Claim 6);
in response to detecting that the points deficit balance associated with the first customer account subsequent to the decrementing is non-zero, automatically updating the account statement with the current points balance, wherein the automatically updating includes performing an automated statement generation process for the first customer account based on interrupting, by a statement processor, the automatic statement generation process to insert a value of the updated points deficit balance into the generated statement. (Claim 6)
Claims 2 and 12: Bloy discloses the computer-implemented system of claim 1 and the computer-readable medium of claim 11, wherein the resource record is generated in response to an automatically generated request or during a batch process performed for a plurality of accounts at an end of the period or close of the account period. (Claim 7)
Claims 3 and 13: Bloy discloses the computer-implemented system of claim 1 and the computer-readable medium of claim 11, wherein the points deficit balance associated with the first customer account is adjusted by an execution of a resource assignment and allocation process. (Paragraph 20 and 35)
Claims 4-5 and 14-15: Bloy discloses the computer-implemented system of claim 1 and the computer-readable medium of claim 11, further comprising a communication channel that connects the at least one hardware processor to an external system; wherein the communication channel comprises an internal communication channel or an external communication channel. (Paragraph 23)
Claims 6 and 16: Bloy discloses the computer-implemented system of claim 4 and the computer-readable medium of claim 14, wherein the communication channel comprises an application programming interface. (Paragraph 23)
Claims 7 and 17: Bloy discloses the computer-implemented system of claim 4 and the computer-readable medium of claim 14, wherein the operations further comprise:
obtaining information identifying at least the current points balance of the loyalty account and whether the outstanding points balance is non-zero (Claim 6)
obtaining information from the loyalty program associated with the loyalty account identifying the current points balance (Claim 6);
generating the account statement for the account comprising a current account amount corresponding to the account and the identified current points balance of the loyalty account (Claim 6); and
transmitting, via the communication channel, the account statement to an account device associated with the account. (Claim 6)
Claims 8 and 18: Bloy discloses the computer-implemented system of claim 1 and the computer-readable medium of claim 11, wherein the operations further comprise: determining a modification to the outstanding points balance of the account; and generating a modified account statement reflecting the modification to the outstanding points balance of the account. (Claim 1 or Claim 4)
Claim 9: Bloy discloses the computer-implemented system of claim 1,
further comprising storing the account statement in the account. (Claim 1)
Claim 21: Bloy discloses the method of claim 1, wherein the loyalty management system 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. (Paragraphs 15 and 31)
Possible Allowable Subject Matter
Claims 1-9, 11-18, and 20-21 would be allowable if the applicant were to be able to overcome the Priority issues, the Claim Objections, the 35 USC 112(a) rejections, the 35 USC 112(b) rejections, the 35 USC 101 rejections, and the 35 USC 102 rejections identified above. The examiner notes that when the applicant changes the instant application to a Continuation-in-Part both the Priority issues and the 35 USC 102 rejections will be overcome as long as the pending claims only recite claim terms and their functions as specifically disclosed in the specification of Application 16/156,858 (Issued Patent Number: 11,605,106). The applicant will never be able to overcome the Priority issues and the 35 USC 102 rejections without changing the instant application to a Continuation-in-Part.
The following is a statement of reasons for the indication of allowable subject matter: Aside from the Bloy et al. (2020/0118156) reference cited in the 35 USC 102 rejection above, which is valid art until the applicant corrects the Priority issue, 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, the claims would be allowable if the applicant were to be able to overcome the Priority issues, the Claim Objections, the 35 USC 112(a) rejections, the 35 USC 112(b) rejections, the 35 USC 101 rejections, and the 35 USC 102 rejections identified above.
Response to Arguments
Applicant's arguments filed November 3, 2025 have been fully considered but they are not persuasive.
The applicant’s arguments with regard to the Priority issue are not persuasive. The only way in which the applicant can overcome the Priority issue is by changing the instant application to a Continuation-in-Part. Once this has been done, the applicant will get the earlier priority date for those claims that do not include subject matter which was not supported in the earlier application.
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 represent an improvement to a computer implementing a loyalty offer management system by reciting the elements of “causing a loyalty management system 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; configuring the loyalty management system to decrement the current points balance of the loyalty account to reduce a points deficit balance of the first customer account; generating, for the first customer account, an account statement including (1) the current points balance of the loyalty account and (2) the points deficit balance associated with the first customer account; and in response to detecting that the points deficit balance associated with the first customer account subsequent to the decrementing is non-zero, automatically updating the account statement with the current points balance, wherein the automatically updating includes performing an automated statement generation process for the first customer account based on interrupting, by a statement processor, the automatic statement generation process to insert a value of the updated points deficit balance into the generated statement”. The examiner disagrees. First, the applicant appears to be misconstruing the terms “elements” of a claim and “additional elements” of a claim. Under Step 2a, Prong 2 and/or Step 2b, “additional elements” are defined as those elements outside the identified abstract idea itself. Thus, the only “additional element” found in the list of claim limitations argued by the applicant is a loyalty management system and a statement processor. Based on the applicant’s disclosure the statement process could merely be software, and if it is hardware, it must be the claimed hardware processor of the loyalty management system. Thus, the only “additional elements” in the claim are a general-purpose computer with generic computer components (i.e., the loyalty management system comprising the hardware processor and a memory storing instructions; and an API communication channel). Every other limitation in the claim has been identified as part of the abstract idea itself and as such cannot be considered an “additional element” capable of transforming an abstract idea into a practical application under Step 2a, Prong 2 and/or capable of being considered “significantly more” under Step 2b. Any purported improvement obtained by practicing the claimed invention is an improvement solely rooted in the abstract idea which is merely being applied using a general—purpose computer with generic computer components. Improvements of this nature, irrespective of whether they are considered by the applicant to be technical improvements, improvement to a technology, or improvements to a technological field, are improvements to an abstract idea which is an improvement in ineligible subject matter (see SAP v. Investpic: 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.). A general-purpose computer with generic computer components executing software to merely apply an abstract idea is not an improvement to the computer. The applicant’s claims do not change the computer itself. The processor and memory of the computer still works in the same manner that they normally would in that they execute software to perform operation. As such, the claims do not improve the computer itself. Instead, the applicant’s claims merely require a general-purpose computer with generic computer components executing software to merely apply an abstract idea which is insufficient to transform an abstract idea into a practical application under Step 2a, Prong 2. Thus, the rejection has been maintained.
The applicant asserts that the claims overcome the 35 USC 101 rejection under Step 2b because the combination of steps recited in the claim are not routine or conventional activity in the relevant filed and not insignificant extra-solution activity and therefore are significantly more than the abstract idea. The examiner disagrees. In order to overcome a 35 USC 101 rejection under Step 2b, it is the “additional elements”, alone or in combination, that must be not well-understood routine and conventional. Additional elements are defined as those elements outside the identified abstract idea. The only additional element in claimed invention are a general—purpose computer with generic computer components which is insufficient to be considered “significantly more” under Step 2b. There is no requirement that limitations of the claim which part of the abstract idea need to be routine or conventional in the field. Quite the opposite in fact. The Sap v. Investpic decision specifically states that even limitations of an abstract idea that are groundbreaking, innovative or even brilliant are ineligible because they are improvements to an abstract idea which are improvements in ineligible subject matter.
The applicant’s arguments with regards to the 35 USC 102 rejection are not convincing. The Bloy et al. (2020/0118156) will remain a valid 102(a) reference until the instant application corrects the Priority Issue. The only way in which the Priority Issue can be overcome is by changing the instant application to a Continuation-in-Part of application 18/077,915. Once this is done, if the pending claim do not recite any limitations not supported by the disclosure of application 18/077,915, the instant application will get the prior date of October 10, 2018. Thereby, invalidating the Bloy reference as prior art.
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.
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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