DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
Claims 5-7, 13-14, and 16-17 have been cancelled by Applicant; therefore, Claims 1-4, 8-12, and 15 are currently pending in application 18/603,540.
Claim Interpretation
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: loyalty engine in claims 1-3 and 8-12 .
Because this/these claim limitation(s) is/are being interpreted under pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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 11 and 12 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claims 11 and 12 are system claims and depends from a method claim, the combination of the two statutory classes of invention as is does not apprise a person of ordinary skill in the art of the scope of the claim. Ex parte Lyell, a Board of Patent Appeals and Interferences (Board) case, which held such claims invalid. IPXL Holdings, L.L.C.v. Amazon.com, Inc., Case Nos. 05-0119, -1487 (Fed. Cir. Nov. 21, 2005) (Clevenger, J.). MPEP 2173.05(p)(II)
Furthermore, Claims 12 recites “the NOG configuration data” which contains insufficient antecedent basis. Correction for proper antecedent basis is requested. The Examiner also requests that “NOG” be replaced with “Network of Giving (NOG)”.
Information Disclosure Statement
The listing of references in the specification (see below) is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered. The Applicant should amend the specification to remove the prior art examples if copies cannot be provided to the Examiner.
“[0007] The prior art discloses some attempts to fundraise in a way that benefits donors and others. For example, COMMUNITY SMART™ makes credit cards available, wherein specified donations are made to a charity of the customer's choice.
[0008] Other examples include KIDS FUTURES™ and UPROMISE™. These prior art solutions provide co-branded financial cards with a charity as a partner, which are issued to a customer who uses it and the charity shares in the applicable interchange fees.”
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-4 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US 11,210,711 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because all the inventions disclose equivalent elements for the creation and administration of an automated cause marketing system.
18/603,540
US 11,210,711 B2
Claims 1 and 9
A computer-implemented method (non-transient computer readable medium) for automated cause management performed by a loyalty engine executing on a server in communication with a network and a database, the method comprising:
receiving, by the loyalty engine via the network, electronic transaction data transmitted in real time from a merchant point-of-sale computing device associated with a registered partner merchant, wherein the transaction data includes at least:
(i) a member identifier generated from a registered financial transaction instrument of a registered member; and
(ii) a transaction amount;
identifying, by the loyalty engine querying the database, a merchant-defined donation rule stored in association with the registered partner merchant and the registered member;
automatically calculating, by the loyalty engine in real time, a donation amount to one or more linked charities according to the merchant-defined donation rule applied to the transaction amount;
crediting, by the loyalty engine, the calculated donation amount to a charity-specific ledger maintained in the database;
adjusting, by the loyalty engine where the financial transaction instrument is a stored-value card, a remaining value of the stored-value card based on the transaction data; and
transmitting, by the loyalty engine via the network, an electronic confirmation to the merchant point-of-sale computing device that includes the donation amount and updated transaction status.
Claims 1, 8, 9, 15, 16, and 20
A method (system, non-transitory computer-readable media storing software to perform on hardware) comprising:
receiving transaction information relating to a plurality of transactions conducted by a plurality of members and merchants,
wherein the transaction information for each said transaction is derived from: the date, the
time, and transaction amount for the transaction; member transaction data including a logical address and a Bank Identification Number (BIN) for a financial card that is registered to a member; a stored value card identifier associated with a stored value card involved in the
transaction; a currency amount of the
transaction; information for a merchant including a geographic address and a donation formula; a charity, having a geographic region, associated with the stored value card identifier; for each said transaction:
updating the currency amount for the stored value card corresponding to the stored value card identifier included in the transaction information using: the current value of the currency amount for the stored value card; and
the currency amount of the transaction; generating
a member identifier associated with the stored value identifier included in the transaction information; and
upon determining that:
the geographic address of the merchant is within the geographic region associated with the charity; and
the stored value card identifier is associated with the charity; then: updating the current value of the currency amount for the stored value card using a donation by the merchant to the charity calculated using: the currency amount of the transaction; the donation formula for the merchant; and the current value of the donation by the merchant to the charity;
sending a survey pertaining to the logical address of the member; receiving, in response to the survey, a survey response from the member; generating a promotional code using the Bank Identification (BIN) number; and
sending to the logical address of the member, in response to the receiving of the survey response, the promotional code for use by the member in a forthcoming transaction with the merchant.
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 1-4, 8-12, and 15 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter, specifically an abstract idea.
Claims 1-4, 8-12, and 15 are directed to a judicial exception (i.e., abstract idea), without providing a practical application, and without providing significantly more.
Under the 35 U.S.C. §101 subject matter eligibility two-part analysis, Step 1 addresses whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. See MPEP §2106.03. If the claim does fall within one of the statutory categories, it must then be determined in Step 2A [prong 1] whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). See MPEP §2106.04. If the claim is directed toward a judicial exception, it must then be determined in Step 2A [prong 2] whether the judicial exception is integrated into a practical application. See MPEP §2106.04(d). Finally, if the judicial exception is not integrated into a practical application, it must additionally be determined in Step 2B whether the claim recites "significantly more" than the abstract idea. See MPEP §2106.05.
Examiner note: The Office’s 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) is currently found in the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of Patent Examination Procedure (MPEP), specifically incorporated in MPEP §2106.03 through MPEP §2106.07(c).
Regarding Step 1,
Claims 1-4 are directed toward a process (method). Claims 9-12 are directed toward an apparatus (system). Claims 8 and 15 are directed toward a computer program product having computer-readable tangible storage media (article of manufacture). Thus, all claims fall within one of the four statutory categories as required by Step 1.
Regarding Step 2A [prong 1],
Claims 1-4, 8-12, and 15 are directed toward the judicial exception of an abstract idea. Independent claims 1, 8, 9, and 15 are directed specifically to the abstract idea of creation, administration, and tracking of (cause) marketing.
Regarding independent claims 1 and 8, the underlined limitations emphasized below correspond to the abstract ideas of the claimed invention:
A computer-implemented method for automated cause management performed by a loyalty engine executing on a server in communication with a network and a database, the method comprising:
receiving, by the loyalty engine via the network, electronic transaction data transmitted in real time from a merchant point-of-sale computing device associated with a registered partner merchant, wherein the transaction data includes at least: (i) a member identifier generated from a registered financial transaction instrument of a registered member; and (ii) a transaction amount; [Methods of organizing human activity (commercial exchange, tracking consumer purchases).]
identifying, by the loyalty engine querying the database, a merchant-defined donation rule stored in association with the registered partner merchant and the registered member; automatically calculating, by the loyalty engine in real time, a donation amount to one or more linked charities according to the merchant-defined donation rule applied to the transaction amount; [Mathematical concepts/calculations (applying a percentage rule to a transaction amount), Mental processes (Humans have long performed similar mental and manual accounting for promotions, rounding-up purchases for charity, or managing loyalty programs).]
crediting, by the loyalty engine, the calculated donation amount to a charity-specific ledger maintained in the database; adjusting, by the loyalty engine where the financial transaction instrument is a stored-value card, a remaining value of the stored-value card based on the transaction data; and transmitting, by the loyalty engine via the network, an electronic confirmation to the merchant point-of-sale computing device that includes the donation amount and updated transaction status. [Methods of organizing human activity / fundamental economic practices (bookkeeping, keeping a tab, or accounting).]
As the underlined claim limitations above demonstrate, independent claims 1 and 8 are directed to the abstract idea of Mathematical concepts (mathematical relationships, mathematical formulas or equations, mathematical calculations); Mental processes (concepts performed in the human mind (including an observation, evaluation, judgment, or opinion)); and Certain methods of organizing human activity (fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)).
Regarding independent claims 9 and 15, the underlined limitations emphasized below correspond to the abstract ideas of the claimed invention:
A system for automated cause management, comprising: a server comprising at least one processor and memory, the server operatively coupled to a communications network and to a database; the database storing (i) member registration records that associate registered financial transaction instruments with generated member identifiers, (ii) partner merchant pledge rules, and (iii) charity account ledgers; and
a loyalty engine and charity utility implemented as computer-executable instructions in the memory that, when executed by the processor: receive, via the network, transaction data from one or more partner merchant computing systems; [Methods of organizing human activity (commercial exchange, tracking consumer purchases).]
associate each transaction with a registered member by matching data from the registered financial transaction instrument to the member registration records; apply the partner merchant pledge rules stored in the database to calculate donation amounts to linked charities; [Mathematical concepts/calculations (applying a percentage rule to a transaction amount), Mental processes (Humans have long performed similar mental and manual accounting for promotions, rounding-up purchases for charity, or managing loyalty programs).]
update the charity account ledgers in the database with the calculated donation amounts in real time; and generate and serve, via web interfaces accessible over the network, dynamic reporting dashboards to the partner merchant computing systems, sponsor systems, and charity administrator systems, the reporting dashboards displaying transaction-level donation data, demographic analytics, and collateral-spending metrics derived from the database. [Methods of organizing human activity / fundamental economic practices (bookkeeping, keeping a tab, accounting, or reporting).]
As the underlined claim limitations above demonstrate, independent claims 1, 8, 9, and 15 are directed to the abstract idea of Mathematical concepts (mathematical relationships, mathematical formulas or equations, mathematical calculations); Mental processes (concepts performed in the human mind (including an observation, evaluation, judgment, or opinion)); and Certain methods of organizing human activity (fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)).
Dependent claims 2-4, 8, and 10-12 provide further details to the abstract idea of claims 1, 8, 9, and 15 regarding the received data, therefore, these claims include certain mathematical concepts, mental processes, and certain methods of organizing human activities for similar reasons provided above for claims 1, 8, 9, and 15.
After considering all claim elements, both individually and in combination and in ordered combination, it has been determined that the claims do not amount to significantly more than the abstract idea itself.
Regarding Step 2A [prong 2],
Claims 1-4, 8-12, and 15 fail to integrate the recited judicial exception into any practical application. The claims recite additional limitations which are hardware or software elements or particular technological environment, such as a “system”, a “computer “, “processor and memory”, a "loyalty engine executing on a server," "communication with a network," “electronic transaction data”, a "database", “web interfaces”, “dashboards”, and a “computing device”. However, these limitations are not enough to qualify as “practical application” being recited in the claims along with the abstract idea since these limitations are merely invoked as a tool to perform instruction of an abstract idea in a particular technological environment and/or are generally linking the use of the abstract idea to a particular technological environment or field of use, and merely applying and abstract idea in a particular technological environment and merely limiting use of an abstract idea to a particular field or a technological environment do not provide practical application for an abstract idea (MPEP 2106.05 (f) & (h)). The claims do not amount to "practical application" for the abstract idea because they neither (1) recite any improvements to another technology or technical field; (2) recite any improvements to the functioning of the computer itself (the claims describe a business/financial automation (matching purchases with donations) rather than a technical improvement to the function of the computer, network, or point-of-sale device itself); (3) apply the judicial exception with, or by use of, a particular machine; (4) effect a transformation or reduction of a particular article to a different state or thing; (5) provide other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.
The relevant question under Step 2A [prong 2] is not whether the claimed invention itself is a practical application, instead, the question is whether the claimed invention includes additional elements beyond the judicial exception that integrate the judicial exception into a practical application by imposing a meaningful limit on the judicial exception. This is not the case with Applicant’s claimed invention. Automating the recited claimed features as a combination of computer instructions implemented by computer hardware and/or software elements relying on generic, off-the-shelf technology limitations, as recited above, does not qualify an otherwise unpatentable abstract idea as patent eligible. Examples where the Courts have found selecting a particular data source or type of data to be manipulated to be insignificant extra-solution activity include selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016); Applicant’s limitations as recited above do nothing more than supplement the abstract idea using additional hardware/software computer components as a tool to perform the abstract idea and generally link the use of the abstract idea to a technological environment, which is not sufficient to integrate the judicial exception into a practical application since they do not impose any meaningful limits. Dependent claims 2-4, 8, and 10-12 merely incorporate the additional elements recited above, along with further embellishments of the abstract idea of independent claims respectively, but these features only serve to further limit the abstract idea of independent claims. Therefore, the additional elements recited in the claimed invention individually, and in combination fail to integrate the recited judicial exception into any practical application.
Regarding Step 2B,
Claims 1-4, 8-12, and 15 fail to amount to “significantly more” than an abstract idea. The claims recite additional limitations which are hardware or software elements or particular technological environment, such as a “system”, a “computer “, “processor and memory”, a "loyalty engine executing on a server," "communication with a network," “electronic transaction data”, a "database", “web interfaces”, “dashboards”, and a “computing device”. However, these limitations are not enough to qualify as “significantly more” being recited in the claims along with the abstract idea since these limitations are merely invoked as a tool to perform instruction of Abstract idea in a particular technological environment and/or are generally linking the use of the abstract idea to a particular technological environment or field of use, and merely applying and abstract idea in a particular technological environment and merely limiting use of an abstract idea to a particular field or a technological environment do not provide significantly more to an abstract idea (MPEP 2106.05(f) & (h)). The claims do not amount to "significantly more" than the abstract idea because they neither (1) recite any improvements to another technology or technical field; (2) recite any improvements to the functioning of the computer itself; (3) apply the judicial exception with, or by use of, a particular machine; (4) effect a transformation or reduction of a particular article to a different state or thing; (5) add a specific limitation other than what is well-understood, routine and conventional in the field; (6) add unconventional steps that confine the claim to a particular useful application; nor (7) provide other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.
Dependent claims 2-4, 8, and 10-12 merely recite further additional embellishments of the abstract idea of independent claims 1, 8, 9, and 15 respectively, but these features only serve to further limit the abstract idea of independent claims 1, 8, 9, and 15; however, none of the dependent claims recite an improvement to a technology or technical field or provide any meaningful limits. The addition of another abstract concept to the limitations of the claims does not render the claim other than abstract. Under the Interim Guidance on Patent Subject Matter Eligibility (PEG 2019), it specifically states that narrowing an abstract idea of claims do not resolve the claims of being "significantly more" than the abstract idea. Thus, the additional elements in the dependent claims only serve to further limit the abstract idea utilizing the computer components as a tool and/or generally link the use of the abstract idea to a particular technological environment.
Therefore, since there are no limitations in the claims 1-4, 8-12, and 15 that transform the exception into a patent eligible application such that the claims amount to significantly more than the exception itself, and looking at the limitations as a combination and as an ordered combination adds nothing that is not already present when looking at the elements taken individually, claims 1-4, 8-12, and 15 are rejected under 35 USC § 101 as being directed to non-statutory subject matter under 35 U.S.C. § 101.
Furthermore, Dependent Claims 11 and 12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Claims 11 and 12 are hybrid claims and are rejected under 35 U.S.C. 101 based on the theory that the claim is directed to neither a "process" nor a "machine," but rather embraces or overlaps two different statutory classes of invention set forth in 35 U.S.C. 101 which is drafted so as to set forth the statutory classes of invention in the alternative only.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claims 1, 2, 4, 8-10, 12, and 15 are rejected under 35 U.S.C. 102(e) as being anticipated by McNee et al. (US 2003/006572 A1).
As per independent Claims 1 and 8, McNee discloses a computer-implemented method for automated cause management performed by a loyalty engine executing on a server in communication with a network and a database, the method comprising (A non-transient computer readable medium comprising a software application executable by the loyalty engine executing on the server in communication with the network and the database) (See at least Fig.1, Para 0016-0017):
receiving, by the loyalty engine via the network, electronic transaction data transmitted in real time from a merchant point-of-sale computing device associated with a registered partner merchant, wherein the transaction data includes at least:(i) a member identifier generated from a registered financial transaction instrument of a registered member; and (ii) a transaction amount (See at least Fig.4, Para 0022);
identifying, by the loyalty engine querying the database, a merchant-defined donation rule stored in association with the registered partner merchant and the registered member (See at least Fig.4, Para 0022-0023);
automatically calculating, by the loyalty engine in real time, a donation amount to one or more linked charities according to the merchant-defined donation rule applied to the transaction amount (See at least Fig.4, Para 0024);
crediting, by the loyalty engine, the calculated donation amount to a charity-specific ledger maintained in the database; adjusting, by the loyalty engine where the financial transaction instrument is a stored-value card, a remaining value of the stored-value card based on the transaction data (See at least Figs.3-4, Para 0006, Para 0018-0019, Para 0025-0026); and
transmitting, by the loyalty engine via the network, an electronic confirmation to the merchant point-of-sale computing device that includes the donation amount and updated transaction status. (See at least Para 0024-0027).
As per Claim 2, McNee discloses wherein the merchant-defined donation rule applied by the loyalty engine comprises a rule that specifies different donation levels or benefits to the one or more linked charities based on a Bank Identification Number (BIN) range associated with the registered financial transaction instrument of the registered member (See at least Para 0022-0023).
As per Claim 4, McNee discloses wherein the one or more linked charities comprise a plurality of charities, and wherein automatically calculating the donation amount further comprises allocating the donation amount across the plurality of charities according to a predefined allocation formula or ratio stored in the database and associated with at least one of member preference data, transaction location, or regional administrator settings (See at least Para 0006-0007; Para 0021-0024).
As per independent Claims 9 and 15, McNee discloses a system for automated cause management (a non-transient computer readable medium comprising software executable by the Internet server hardware system for automated cause management), comprising: a server comprising at least one processor and memory, the server operatively coupled to a communications network and to a database (See at least Fig.1, Para 0016-0017); the database storing (i) member registration records that associate registered financial transaction instruments with generated member identifiers, (ii) partner merchant pledge rules, and (iii) charity account ledgers; and a loyalty engine and charity utility implemented as computer-executable instructions in the memory that, when executed by the processor:
receive, via the network, transaction data from one or more partner merchant computing systems (See at least Fig.4, Para 0022);
associate each transaction with a registered member by matching data from the registered financial transaction instrument to the member registration records (See at least Fig.4, Para 0022-0023);
apply the partner merchant pledge rules stored in the database to calculate donation amounts to linked charities (See at least Fig.4, Para 0022-0026);
update the charity account ledgers in the database with the calculated donation amounts in real time (See at least Fig.4, Para 0022-0026); and
generate and serve, via web interfaces accessible over the network, dynamic reporting dashboards to the partner merchant computing systems, sponsor systems, and charity administrator systems, the reporting dashboards displaying transaction-level donation data, demographic analytics, and collateral-spending metrics derived from the database (See at least Para 0008-0009, Para 0027-0028, and Para 0031).
As per Claim 10, McNee discloses wherein the partner merchant pledge rules stored in the database include rules that differentiate donation levels or benefits to linked charities based on Bank Identification Number (BIN) ranges of registered financial transaction instruments, and wherein the loyalty engine applies the appropriate rule by identifying the BIN range from the transaction data received from the partner merchant computing systems (See at least Para 0022-0023).
As per Claim 12, McNee discloses wherein the database further stores configuration data defining allocation ratios or formulas among a plurality of regional and national charities, and wherein the loyalty engine updates the charity account ledgers by apportioning the calculated donation amounts across the plurality of charities according to the NOG configuration data and at least one of member-selected charity preferences or transaction geographic data (See at least Para 0006-0007; Para 0020-0024).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 3 and 11 are rejected under 35 U.S.C. 103(a) as being unpatentable over McNee et al. (US 2003/006572 A1). in view of Tietzen et al. (US 2006/0111978 A1).
As per Claims 3 and 11, McNee fails to expressly disclose wherein the loyalty engine and charity utility, when executed by the processor, are further configured to: generate survey questions tied to specific transactions; and transmit the survey questions in real time to a communication device associated with the registered member after updating the charity account ledgers, the survey questions being selectable by the partner merchant via the web interfaces.
However, the analogous art of Tietzen (Loyalty engine) discloses wherein the loyalty engine and charity utility, when executed by the processor, are further configured to: generate survey questions tied to specific transactions; and transmit the survey questions in real time to a communication device associated with the registered member after updating the charity account ledgers, the survey questions being selectable by the partner merchant via the web interfaces (See at least Fig.12, and Para 0071-0080).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have included wherein the loyalty engine and charity utility, when executed by the processor, are further configured to: generate survey questions tied to specific transactions; and transmit the survey questions in real time to a communication device associated with the registered member after updating the charity account ledgers, the survey questions being selectable by the partner merchant via the web interfaces., as disclosed by Tietzen in the system disclosed by McNee, for the advantage of providing a method/ system of a consumer/ merchant loyalty program management system with the ability to increase method/ system effectiveness by incorporating a multitude of tools for gathering consumer data (See KSR [127 S Ct. at 1739] “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).
Response to Arguments
Applicant’s arguments filed on 4/22/2026, with respect to Claims 1-4, 8-12, and 15, have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
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.
The Applicant has made the argument that the claims are directed to patent eligible subject matter.8
However, while the Applicant's claims are directed to a Process, Machine, Manufacture or Composition of Matter (Step 1), the claims fail to recite limitations that are “significantly more” than an abstract idea (Step 2a-2b).
The claim limitations (under their broadest reasonable interpretation) recite Certain methods of organizing human activity, Mathematical concepts, and/or Mental processes as defined in the guidance set forth in the MPEP. This is so because the claimed limitations recite steps that involve a gathering data, correlating data, calculating data based on saved rules, transmitting data, and steps that a person can perform in his mind or with the aid of pen and paper. See In re BRCA1 & BCR A 2 — Based Hereditary Cancer Test Patent Litig., 11A F.3d 755, 763 (Fed. Cir. 2014) (concluding that comparing information and making determinations based on the comparisons is an “abstract mental process.”). Accordingly, the Examiner concludes that the claims recite a judicial exception of a Mental process, Mathematical concepts, and/or Certain methods of organizing human activity.
Furthermore, having determined that claims recite a judicial exception, analysis under the Memorandum turns now to determining whether there are “additional elements that integrate the judicial exception into a practical application.” See 2019 Memorandum (Step 2A, prong 2), see also MPEP § 2106.05(a)-(c), (e)-(h)). This judicial exception is not integrated into a practical application because the combination of additional elements fails to integrate the judicial exception into a practical application within the meaning defined in the Subject Matter Eligibility Guidelines, Examiner notes the following. While the computer technology does make the steps more easily performed, in principle, the steps can be performed without such computer and the notion of ‘practicality’ is not evidenced. ‘Practicality’ is based on whether the invention demonstrates:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
The claims are simply directed to an abstract idea (searching, correlating, and transmitting/ displaying data based on saved rules and characteristics) with additional generic computer elements, because the generically recited computer elements do not add a meaningful limitation to the abstract idea, and because they amount to simply implementing the abstract idea on a computer.
Finally, the examination proceeds to evaluating whether the claims add specific limitations beyond the judicial exception that are not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)) or simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Memorandum (Step 2B). The claims do not add specific limitations beyond what is well-understood, routine, and conventional. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The claim does not amount to significantly more than the abstract idea itself.
The Examiner therefore maintains the 35 USC 101 rejections.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure can be found in the PTO-892 Notice of References Cited. The Examiner suggests the applicant review all of these documents before submitting any amendments.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN P OUELLETTE whose telephone number is (571)272-6807. The examiner can normally be reached on M-F 8am-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lynda C Jasmin, can be reached at telephone number (571) 272-6782. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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June 2, 2026
/JONATHAN P OUELLETTE/Primary Examiner, Art Unit 3629
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