DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
In light of Applicant's submission filed December 14, 2025, the Examiner has maintained and updated the 35 USC § 101 and 103 rejections.
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 - 19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. The claim(s) recite(s) the following limitations that are considered to be abstract ideas:
Claims 1, 9 and 15
receiving a purchase message from a credit card network (CCNET) when an affinity credit card holder makes a purchase using a first registered credit card, determining the affinity credit card holder and a merchant identifier (ID) from the message, with the merchant ID including information indicative of the identity of a given merchant,
calculating a discount amount from the discount to be automatically applied to the first registered credit card when a first transaction is completed, where the discount amount is calculated based upon discount information provided by the given merchant, and where the given merchant is identified using the merchant ID, and
creating an entry for the discount amount from a merchant with the merchant ID to the affinity credit card holder in an application processing database.The limitations of independent claim 1, 9 and 15 as detailed above, as drafted, falls within the “Certain Methods of Organizing Human activity because the claims have concepts of commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). The applicant’s claims (in summary) receive…, determine…, calculate..., create… and for the purposes of a discount. Accordingly, the claims recite an abstract idea This judicial exception is not integrated into a practical application. In particular the claims recite the additional elements of using a processor, non-transitory machine readable storage device, database server. The aforementioned additional generic computing elements perform the steps of the claims at a high level of generality (i.e. As a generic medium performing generic computer function of receiving, determining, calculating and creating ) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements processor, database server amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
Thus, taken individually and in combination, the additional elements do not amount to
significantly more than the above-identified judicial exception (the abstract idea).
The dependent claims 2-8, 10-14, 16-19 appear to merely further limit the abstract and as such, the analysis of dependent claims 2-8, 10-14, 16-19 results in the claims “reciting” an abstract idea The claims the claims do not recite additional elements that integrate the exception into a practical application the additional elements do not amount to an inventive concept (significantly more) other than the above-identified judicial exception (the abstract idea). Thus, based on the detailed analysis above, claims 1 - 19 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, 3, 4, 9, 11, 12 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wolf et al. (US 2010/0312629).
Claim 1, 9, 15: Wolf discloses a system for applying a discount to an account of an affinity credit card holder, comprising: receiving a purchase message from a credit card network (CCNET) when an affinity credit card holder makes a purchase using a first registered credit card, determining the affinity credit card holder and a merchant identifier (ID) from the message, with the merchant ID including information indicative of the identity of a given merchant, (see for example [0009], an enrolled merchant database having identification information of merchants enrolled in the loyalty incentive program; a merchant offer database having identification information of discount offers provided by the merchants enrolled in the loyalty incentive program; and a registered card processor. The registered card processor receives a record of charge(e.g. purchase message) for a purchase made with an enrolled merchant by an enrolled card member customer.[0042] A merchant account number may be, for example, any number or alpha-numeric characters that identifies a particular merchant for purposes of card acceptance, account reconciliation,
calculating a discount amount from the discount to be automatically applied to the first registered credit card when a first transaction is completed, where the discount amount is calculated based upon discount information provided by the given merchant, and where the given merchant is identified using the merchant ID,([0009, 0011] and Where the transactions comply the criteria governing the rules of the rewards program, a reward (e.g. a credit of monetary value to the transaction account, a merchant prepaid account, a discount, a credit of loyalty points) is provided to a beneficiary of the prepaid transaction account.[0049] fulfill a merchant's discount offer applicable to card member customer's purchase by providing a rebate credit in accordance with the discount offer on the card member customer's transaction account statement. If a return is made on a purchase for which a rebate credit was previously provided, registered card platform 130 also allows the TAP to debit the card member customer the amount of the rebate credit and credit the same back to the merchant.)
creating an entry for the discount amount from a merchant with the merchant ID to the affinity credit card holder in an application processing database.([0008, 0009] an amount of a discount in accordance with the offer is calculated; and the amount of the discount is provided to a transaction account provider so that an account of the enrolled card member customer is credited in the amount of the discount. Also see [0047 and 0053])
Claim 3,11: Wolf discloses the system of claim 1, method of claim 9 wherein a card holder funds transfer transfers the discount amount for the entry in the application processing database from the bank account of the affinity company to a bank account of the affinity credit card holder. [0011, 0013 and 0051]
Claim 4,12: Wolf the system of claim 1, method of claim 9 wherein a card holder funds transfer transfers the discount amount for the entry in the application processing database from the bank account of the affinity company to a credit card account of the affinity credit card holder. [0011, 0013 and 0051]
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2, 5, 6, 10, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wolf et al. (US 2010/0312629) in view of Silverstein (US 2009/0070230)
Claim 2, 10: Wolf discloses the system of claim 1, method of claim 9 but does not explicitly disclose wherein the merchant funds transfer and the card holder funds transfer are automated clearing house (ACH) network transfers. However, Silverstein discloses wherein the merchant funds transfer and the card holder funds transfer are automated clearing house (ACH) network transfers. [0240]
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention was made to modify, Silverstein to include wherein the merchant funds transfer and the card holder funds transfer are automated clearing house (ACH) network transfers, in order to provide payment options and additional security. ([0240], Silverstein)
Claim 6: Wolf discloses the system of claim 1, method of claim 9 but does not explicitly disclose further comprising a short message service (SMS) server. However, Silverstein discloses further comprising a short message service (SMS) server [0075]
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention was made to modify, Silverstein to include comprising a short message service (SMS) server, in order to provide a messaging option. ([0075], Silverstein)
Claim(s) 5, 7, 8, 13, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wolf et al. (US 2010/0312629) in view of Mitchell (US 2020/0387923)
Claim 5, 13, 16: Wolf discloses the system of claim 1, method of claim 9 but does not explicitly disclose further comprising validating by a membership validator server a membership status of the affinity credit card holder in an affinity group. However, Mitchell discloses validating by a membership validator server a membership status of the affinity credit card holder in an affinity group. [0070]
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention was made to modify, Wolf to include validating by a membership validator server a membership status of the affinity credit card holder in an affinity group, in order to insure the member qualifies for the digital incentives. ([0070] Mitchell)
Claim 7, 14: Wolf discloses the system of claim 6, method of claim 9 wherein an application processing server sends the discount to the SMS server and the SMS server sends the discount as a text to a smartphone of the affinity credit card holder.
However, Mitchell discloses wherein the affinity company server sends the discount to the SMS server and the SMS server sends the discount as a text to a smartphone of the affinity credit card holder. [0281]
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention was made to modify, Wolf to include wherein the affinity company server sends the discount to the SMS server and the SMS server sends the discount as a text to a smartphone of the affinity credit card holder, in order to provide information to the customer’s device. ([0281] Mitchell)
Claim 8: Wolf discloses the system of claim 6, wherein, but does not explicitly disclose when the application processing server further determines the discount includes a promotion, the application processing server sends the promotion to the SMS server, and the SMS server sends the promotion as a text to a smartphone of the affinity credit card holder. [0281]
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention was made to modify, Wolf to include when the affinity company server further determines the discount includes a promotion, the affinity company server sends the promotion to the SMS server, and the SMS server sends the promotion as a text to a smartphone of the affinity credit card holder, in order to provide information to the customer’s device. ([0281] Mitchell)
Claim(s) 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wolf et al. (US 2010/0312629) in view of Nuzzi et al. (US 2013/0006816)
Wolf discloses the computer program product system and method of claim 15, 1, and 9 but does not explicitly disclose receiving, from a first satellite data of a first global positioning system (GPS), with the first satellite data including a first set of geographic coordinates defining a first map region, with the first set of geographic coordinates being associated with a first set of merchant data. However Nuzzi discloses receiving, from a first satellite data of a first global positioning system (GPS), with the first satellite data including a first set of geographic coordinates defining a first map region, with the first set of geographic coordinates being associated with a first set of merchant data.[0101]
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention was made to modify, Wolf to include receiving, from a first satellite data of a first global positioning system (GPS), with the first satellite data including a first set of geographic coordinates defining a first map region, with the first set of geographic coordinates being associated with a first set of merchant data, so that the merchant is able to target particular user devices. ([0101] Nuzzi)
Response to Arguments
Applicant's arguments filed December 14, 2025 have been fully considered but they are not persuasive.
The applicant argues the 101 rejection by stating that the CCNET is not a generic component but a specialized computing environment and integrates into a practical application, the Examiner respectfully disagrees the CCNET in the applicant’s claims is merely used as a tool to perform abstract steps of receiving, calculating and creating. The applicant further argues the 101 rejection the claims improve computing technology because CCNET’s are highly specialized distributed systems requiring security and large scale batch processing and that the claims can not be performed on a generic computer and thereby integrate the judicial exception into a practical application. The Examiner respectfully disagrees the claims do not recite any improvement to the functioning of the computer or to any other technology or technical field. The claims merely use CCNET to send data and the courts have routinely found that the sending of data is a well understood, routine and conventional generic computer function. See MPEP 2106.05(d) - i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added)); The applicant’s arguments of security and volume are descriptions of CCNET but not claim limitations that improve CCNET operation. The claims do not recite a specific improvement to CCNET technology. The claims merely use CCNET in its conventional capacity and apply business rules. Which is considered a field of use limitations and does not integrated the abstract idea into a practical application. See MPEP 2105.05(h) –
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
Furthermore MPEP 2106.05(a) states, “If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art. For example, in McRO, the court relied on the specification’s explanation of how the particular rules recited in the claim enabled the automation of specific animation tasks that previously could only be performed subjectively by humans, when determining that the claims were directed to improvements in computer animation instead of an abstract idea. McRO, 837 F.3d at 1313-14, 120 USPQ2d at 1100-01. In contrast, the court in Affinity Labs of Tex. v. DirecTV, LLC relied on the specification’s failure to provide details regarding the manner in which the invention accomplished the alleged improvement when holding the claimed methods of delivering broadcast content to cellphones ineligible. 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016). The applicant has not provided any citation of the specification that teaches or suggest a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art.
Limitations that are indicative of integration into a practical application:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
The applicant’s claims do not appear to have limitations that are indicative of integration into a practical application. Thus the 35 USC 101 rejection is maintained.
Applicant’s arguments with respect to claim(s) 1-19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Connor, JR (US 2010/0017279) - An improved universal affinity system and method is uniquely configured to be implemented and operated with a reduced impact on existing merchant point of sale and affinity systems. The improved system and method also enables merchants to provide highly targeted incentives and advertising to users of the universal affinity system.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARNELL A POUNCIL whose telephone number is (571)270-3509. The examiner can normally be reached Monday - Friday 10:00 - 6:00.
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/D.A.P/Examiner, Art Unit 3622
/ILANA L SPAR/Supervisory Patent Examiner, Art Unit 3622