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 .
This office action is in response to communication filed on 11/10/2025.
Claims 1-19 are presented for examination.
The Terminal Disclaimers filed on 11/10/25 have been accepted to overcome the obviousness-type Double Patenting rejections over US Patent no. 11,989,751, 11,023,919, 10,332,114, 10,068,245.
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 an abstract idea without significantly more.
Step 1: Determining that a claim falls within one of the four enumerated categories of patentable subject matter recited in 35 U.S.C. 101 (i.e., process, machine, manufacture, or composition of matter). (MPEP 2106.03)
Claims 1-19 recite describe tangible system components, thus falling within one of the four statutory classes; i.e., machine. Claims 1, 18 recite a series of steps, thus falling within one of the four statutory classes; i.e., process. Claim 9 is a non-transitory computer readable-medium, thus falling within one of the four statutory classes; manufacture.
Step 2A, Prong One: Evaluating whether the claim(s) recite(s) a judicial exception, i.e. whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim. (MPEP 2106.04).
Representative claims 1, 18 recite:
Accessing customer data and rebate associated with one more utility companies; stories persistent utility rebate rules, wherein the persistent utility rebate rules constitute rebate eligibility parameters that apply to one of the one or more utility companies; storing runtime rebate rules that represent rebate eligibility parameters for a provider energy-saving products; applying, via a rules, the persistent utility rebate rules to the rebate data to generate profiles and then querying via the rules, for ones of rebate profiles corresponding to a customer identification and applying, via the rules, runtime rebate rules to the ones of the rebate profiles to identify one or more customer-specific rules and returning, via the rules, the one or more customer-specific rebates.
The limitations of applying rebate rules to rebate profiles to identify one or more customer customer-specific rebates that, under its broadest reasonable interpretation, covers advertising, marketing or sales activities but for the recitation of generic computer components then it falls within “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A, Prong Two: Identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and then evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. Prong Two distinguishes claims that are "directed to" the recited judicial exception from claims that are not "directed to" the recited judicial exception. (MPEP 2106.04).
This judicial exception is not integrated into a practical application. In particular, the claims 1 and 18 recite the additional elements of database. The specification as filed discloses generic recitation of a database for storing via an interface and engine for applying and querying a rebate profile.
These additional elements are considered as “apply it” as the claim invokes the computer as a tool to perform the abstract idea. See MPEP 2106.05(f)(2) (similar to Apple, Inc. v Ameranth and Intellectual Ventures I LLC v Capital One Bank (USA).
Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. (MPEP 2106.05(f) Mere Instructions To Apply An Exception).
Therefore, under Step 2A, Prong Two, the claims are directed to an abstract idea.
Step 2B: Identifying whether there are any additional elements (features/limitations/steps) recited in the claim beyond the judicial exception(s), and then evaluating those additional elements individually and in combination to determine whether they contribute an inventive concept (i.e., amount to significantly more than the judicial exception(s)). (MPEP 2106.05)
The claims do 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.
Therefore, there are no additional elements that amounts to significantly more than a judicial exception and cannot provide an inventive concept. (MPEP 2106.05(d) Well-Understood, Routine, Conventional Activity).
Alice Corp. also establishes that the same analysis should be used for all categories of claims. Therefore, independent readable medium claim 9 is rejected under the same rationale as method claims 1 and 18 rejected above, as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as above. In addition the claims further recite a processor, the specification as filed discloses on paragraph 00130 ” A general purpose processor may be a microprocessor, but in the alternative, the processor may be any conventional processor, controller, microcontroller, or state machine. A processor may also be implemented as a combination of computing devices, e.g., a combination of a DSP and a microprocessor, a plurality of microprocessors, one or more microprocessors in conjunction with a DSP core, or any other such configuration “
Dependent claims 2-7, 10-17 and 19 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend. There’re no additional elements that transform the recited abstract idea into a patent eligible invention because these claims merely recite further abstract limitations that provide no more than simply narrowing the recited abstract idea.
Allowable Subject Matter
Claims 1-20 are allowable over prior art of record.
The instant application pertains to providing “instant” rebates where both utility companies and providers of an energy-saving product being purchased (e.g., NEST selling smart thermostats) both provide rebate eligibility rules. In particular, the claims relate to a two-part eligibility process, wherein the first part involves eligibility for large swathes of customers being determined before a customer even expresses interest in a product, and this eligibility is based on criteria from two or more utility companies (e.g., the claimed rebate profiles). Then, during runtime (once a customer has indicated interest in purchasing a specific product), the engine applies a further set of runtime rules to the non-customer-specific rebate profiles to determine the customer-specific eligibility (e.g., the customer-specific rebate). This two-step process allows the runtime processing to be greatly reduced.
The prior art of record:
Serrano-Morales, teaches a single entity is providing both a product/service and the offer. In Serrano-Morales, a brute force filtering of offer eligibility rules is used to determine customer-specific offers. Serrano-Morales does not contemplate providing a first offer and then modifying that offer based on user information, both the original and modified offers are customer-specific and thus both require a full filtering of all rebates to arrive at the offer. The approach in Serrano-Morales would thus not provide instant rebate eligibility in complex scenarios of utility company rebated for energy-saving product in which rules have to synergized between multiple rule inputs. Therefore, Serrano-Morales does not suggest or disclose “utility rebate rules constitute rebate eligibility parameters that apply to one or more utility companies…. runtime rebate rules that represent rebate eligibility parameters…applying...rebate rules to the rebate data to generate rebate profiles and querying…for ones of the rebate profiles corresponding to the customer identification, applying…runtime rebate rules to the ones of the rebate profiles to identify one or more customer specific rebates”
Response to Arguments
The 101 rejections have been maintained. The claims pertain to: applying rebate rules to rebate profiles to identify one or more customer customer-specific rebates that, under its broadest reasonable interpretation, covers advertising, marketing or sales activities but for the recitation of generic computer components then it falls within “Certain Methods of Organizing Human Activity” grouping of abstract ideas. The additional elements of a generic recitation of a database for storing via an interface and engine for applying and querying a rebate profile are recited at a high level of generality such that they amount no more than mere instructions to apply the exception using generic computer components. They are no more than a tool to perform the “accessing”, “storing”, “applying” and “querying” steps. The claim invokes the computer as a tool to perform the abstract idea. See MPEP 2106.05(f)(2).
The claims in the instant application are not similar in scope to the claims in Electric Power Group, because the instant claims pertain to applying rebate rules to rebate profiles to identify one or more customer customer-specific rebates and the claims in Electric Power Group pertained to displaying the result data analysis, where the data analysis (detecting and analyzing events) merely compared measurements to limits (and/or sensitivities, and/or rates of change) and further to derived metrics. See Elec. Power Grp., 830 F.3d at 1353—54.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Point of contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAQUEL ALVAREZ whose telephone number is (571)272-6715. The examiner can normally be reached Mondays thru Thursdays 8:30-6:30.
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/RAQUEL ALVAREZ/Primary Examiner, Art Unit 3622