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 April 2, 2026, the Examiner has maintained and updated the 35 USC § 101 rejections. The Examiner has withdrawn the 35 U.S.C. 112 first paragraph rejection.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1, 9, and 14 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3, 10, 17 of U.S. Patent No. 10776809. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent and the instant application comprise an itemized digital receipt that apply points for the purchase of one or more items.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 – 6, 8-21 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 14
receiving, by a payment service, an electronic message comprising a request to transfer funds of a specified amount from a first account of a first user to a second account of a second user;
generating, based at least in part on the first electronic message and causing, by the computing system operated by the payment service, a second electronic message that includes an itemized interactive digital receipt presented on a user interface of a computing system of the first user, wherein the itemized interactive digital receipt includes a number of points associated with the first account, a listing of a plurality of items available for sale from the second user and selected for purchase by the first user, a point value corresponding to individual items in the listing of the plurality of items, and a plurality of user interface controls, wherein an individual user interface control corresponds to a respective point value corresponding to an individual item of the plurality of items and when selected comprises a request to pay for the individual item using the respective point value corresponding to the individual item
receiving, operated by the payment service, from the computing system of the first user, an indication of selection of one or more selected user plurality of interface controls of the user interface controls, within the predetermined timeout period; and
based on receiving the indication of the selection within the predetermined timeout period, causing, by the payment service, the funds of the specified amount to be electronically transferred to the second account, wherein an amount of points corresponding to a total of the points values of the selected items are used to satisfy at least a portion of the funds of the specified amount.
The limitations of independent claim 1, 9, and 14 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 transaction information, presentation of an itemized receipt, applying points to associated items, receiving a selection to use the points and using the points to satisfy at least a portion of the funds needed. 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 computing system, processor, non-transitory computer readable media, display. 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, causing, and transferring ) 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 of computing system, processor, non-transitory computer readable media, display 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 2-6, 8, 10-13, 15-21 appear to merely further limit the abstract and as such, the analysis of dependent claims 2-6, 8, 10-13, 15-21 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 – 6, 8-21 are not patent eligible.
Potentially Allowable Subject Matter
Claims 1-6 and 8-21 would be allowable if the applicant were to be able to overcome the 35 U.S.C 101 rejections above.
The following is a statement of reasons for the indication of allowable subject matter: In regards to claims 1 – 6, 8-21, the closest prior art found by the examiner is the prior art of Postrel (US 2010/0280896)) which discloses, [0159] FIG. 21 is a screen shot of a web page 2100 that provides the user with slider controls 2102 for modifying his redemption solution. As previously explained, the exchange computer 102 has analyzed the user's available reward points and rules and determined that an optimal reward scenario is to use 20,000 of his American Airlines points and 10,000 of his AT&T points to pay for the selected item. However, the user may now modify this exchange scenario as desired. For example, the user may want to use none of his American Airlines points, and thus will use the mouse to slide the slider 2102 all the way to the left side to zero (see the resulting web page 2200 of FIG. 22). He may then opt to use some or all of his 138,000 Bloomingdale's reward points by grabbing the slider 2202 and sliding to the right until the desired dollar amount equivalent is displayed (in this case $200 as in FIG. 22). This equates to 25,000 Bloomingdales points as shown. He can then modify his redemption scenario in the same manner with any other available reward programs as shown in FIGS. 21 and 22. The section 2204 labeled Your Redemption Solution at the right side of the web page 2200 page will show the elected redemption options”. However, the Examiner was unable to find prior art for the limitations of claims 1, 9, and 14 that states, “ generating, based at least in part on the first electronic message and causing, by the computing system operated by the payment service, a second electronic message that includes an itemized interactive digital receipt presented on a user interface of a computing system of the first user, wherein the itemized interactive digital receipt includes a number of points associated with the first account, a listing of a plurality of items available for sale from the second user and selected for purchase by the first user, a point value corresponding to individual items in the listing of the plurality of items, and a plurality of user interface controls, wherein an individual user interface control corresponds to a respective point value corresponding to an individual item of the plurality of items and when selected comprises a request to pay for the individual item using the respective point value corresponding to the individual item.” Thus claims 1 – 6, 8-20 would be allowable over the prior art.
Response to Arguments
Applicant's arguments filed April 2, 2026 have been fully considered but they are not persuasive.
The applicant argues the 101 rejection, that the claims do not recite an abstract idea, because of the focus of the claim is on a specific asserted improvement in computing capabilities, rather than a process where the computers are invoked as a tool, the Examiner respectfully disagrees rather if the claim discloses an improvement or not does not dictate if the claim is directed to an abstract idea. Step 2A Prong 1 ask the question if the claim recites an abstract idea. Claim 1 is directed to a commercial transaction using reward points that includes presenting items available for purchase, receiving a user’s selection to apply points toward the selected items and transferring funds to the seller. The applicant’s specification confirms this interpretation at [0002], which states, “The present invention pertains to machine-implemented techniques for facilitating and making payments, and more particularly, to a technique for applying rewards points associated with a payment card to a payment transaction.” Thus, is considered Certain Methods of Organizing Human Activity, specifically commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). Which is considered an abstract idea.
Step 2A Prong 2 asks the question, does the claim recite additional elements that integrate the judicial exception into a practical application. The applicant argues that the features of the claim represent a clear improvement to the functioning of user interfaces. The applicant cites [0046] of the applicant’s specification, the Examiner respectfully disagrees [0046] does not disclose an improvement to the interface, nor the additional elements, nor does it identify a technical problem, nor explain the technological improvement by the claimed timeout. A conclusory assertion of the mere use of computing technology is insufficient. 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 cited paragraph does not disclose an unconventional solution to a technical problem. Applicant’s paragraph 0046 does not disclose an improved interface. The interface merely operates in its intended purpose of receiving a preference from a user to apply reward points to a transaction.” The cited paragraph does not explain the details of how the timeout period improves the functioning of the computer, any other technology or technical field. Furthermore the applicant is arguing the interface controls being temporarily configured but this limitation was deleted in the amendment. Thus this argument is moot. The applicant refers to the UPSTO memo in regard to if it is a close call. However, the Examiner believes that this is not a close call and is definitely more than 50% an abstract idea. The Examiner finds that is it more likely than not the claims recite an abstract idea. As stated above the claims recite a commercial transaction using reward points that includes presenting items available for purchase, receiving a user’s selection to apply points toward the selected items and transferring funds to the seller. The limitations of the claim recite a commercial interaction itself.
The applicant’s additional elements of a computing system operated by a payment services, display of a computing system, itemized digital receipt, user interface controls, electronic transfer of funds between accounts, are all generic computer components performing their ordinary function. The claim does not improve the functioning of the computer itself, use a specific technical solution to a technical problem, effect any transformation beyond conventional electronic data/funds movement. The applicant further argues the 101 rejection via Ex Parte Desjardins/Enfish but this merely seems be a copy of a memo and the applicant has not provided any arguments as to why/how is claims are similar to via Ex Parte Desjardins/Enfish. Thus, this argument is moot. Furthermore, the applicant’s claims are not equivalent to the aforementioned court decisions. The applicant’s claims do not have limitations that improve the functioning of the computer, any other technology or technical field. For example, Desjardins involved claims directed to adjusting parameters of probabilistic model itself. The applicant’s claims are directed to business logic of commercial interactions The claims do not recite modification of the probabilistic model, retraining the model, updated model parameters, nor does it improve the operation of the model itself. Thus the applicant’s claims are not analogous to Ex Parte Desjardins. For example, in regard to Enfish, in Enfish, the court evaluated the patent eligibility of claims related to a self-referential database. Id. The court concluded the claims were not directed to an abstract idea, but rather an improvement to computer functionality. Id. It was the specification’s discussion of the prior art and how the invention improved the way the computer stores and retrieves data in memory in combination with the specific data structure recited in the claims that demonstrated eligibility. 822 F.3d at 1339, 118 USPQ2d at 1691. The claim was not simply the addition of general purpose computers added post-hoc to an abstract idea, but a specific implementation of a solution to a problem in the software arts. 822 F.3d at 1339, 118 USPQ2d at 1691. Here the applicant’s claims do not improve the way a computer stores and retrieves data in memory in combination with the specific data structure recited in the claim. The applicant’s claims merely uses a computer as a tool to perform business logic (e.g. commercial interactions) The applicant further argues the 101 rejection that even if the additional elements are well understood, routine and conventional activity when considered individually the combination of additional elements may amount to an inventive concept. The Examiner respectfully disagrees the ordered combination has been considered, however the combination merely automates known commercial practices using generic technology and thus is not an inventive concept. The claims merely implement business logic using generic computing components does not amount to significantly more than the abstract idea, which is insufficient to provide an inventive concept. MPEP 2106.05(a) has given examples of types of interfaces that may show an improvement in computer functionality.
x. An improved user interface for electronic devices that displays an application summary of unlaunched applications, where the particular data in the summary is selectable by a user to launch the respective application. Core Wireless Licensing S.A.R.L., v. LG Electronics, Inc., 880 F.3d 1356, 1362-63, 125 USPQ2d 1436, 1440-41 (Fed. Cir. 2018)
xi. Specific interface and implementation for navigating complex three-dimensional spreadsheets using techniques unique to computers; Data Engine Techs., LLC v. Google LLC, 906 F.3d 999, 1009, 128 USPQ2d 1381, 1387 (Fed. Cir. 2018)
The applicant’s claims do not have any similar features to the cited court cases above. The applicant’s interface does not detect a current state (e.g. unlaunched applications) and then use that data to provide information to the user and then allow that user to launch the applications. Nor does the applicant’s user interface use techniques that are unique to computers. However, the applicant’s claims are similar to the decided court case that have been indicated to not be sufficient to show an improvement in computer functionality. The applicant’s claims are similar to viii. Arranging transactional information on a graphical user interface in a manner that assists traders in processing information more quickly, Trading Technologies v. IBG LLC, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019) The applicant’s claims merely use a user interface to display transactional information, by allowing users to interact to apply an amount of points corresponding to a total of the points values of the selected items are used to satisfy at least a portion of the funds of the specified amount.
The applicant further argues that, “It is unconventional to " "caus[e] presentation of an itemized interactive digital receipt on a display of a computing system of the first user, wherein the itemized interactive digital receipt includes a number of points associated with the first account, a listing of a plurality of items, a point value corresponding to individual items in the
listing of the plurality of items, and a plurality of user interface controls, wherein an
individual user interface control corresponds to a respective point value corresponding to
an individual item of the plurality of items and when selected comprises a request to pay
for the individual item using the respective point value corresponding to the individual
item, and wherein the plurality of user interface controls are temporarily configured for
selection during a predetermined timeout period.” The Examiner respectfully disagrees foremost the applicant is arguing unclaimed features. The interface is not temporarily configured, due to the amendment deleting the limitation. Thus, this argument is also moot. Furthermore, MPEP 2106.05(d) states that courts have found to be well understood, routine and conventional, i. Recording a customer’s order, Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1244, 120 USPQ2d 1844, 1856 (Fed. Cir. 2016); iv. Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; ii. Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims."); iii. Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log); Furthermore the applicant’s limitations each recited feature operates in its expected and conventional manner such as a computer device displaying transaction information, allowing user interaction via generic controls, enforces a timeout, and processes a payment using reward points. The ordered combination merely automates known commercial practice using a generic computing environment which does not amount do significantly more than the abstract idea. See MPEP 2106.05(f). Therefore simply labeling something as unconventional does not make them so and the applicant has not provided any persuasive evidence that the claimed elements or their arrangement represent a non-conventional technological improvement.
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
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 any limitations that indication a practical application. Thus the 35 U.S.C 101 rejection is maintained.
Conclusion
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.
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/D.A.P/Examiner, Art Unit 3622
/ILANA L SPAR/Supervisory Patent Examiner, Art Unit 3622
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