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 October 17, 2025, the Examiner has maintained and updated the 35 USC § 101 and 103 rejections. The Examiner has withdrawn the 35 USC § 112 rejections.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 - 24 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 and 13
establishing, by a multi-user, a communications session with of a passenger, the communications session restricted to a first domain;
sending, to passenger via the communications session, one or more reward offers for presenting to the passenger, the one or more reward offers related to the communications session;
receive, from the user via the communications session, an indication of selection of a first reward offer, the first reward offer associated with providing an email address for use by a brand partner in distributing brand partner content, wherein the first reward offer corresponds to a duration of unrestricted access for the communications session;
receive, from the user and via the communications session, an indication of the email address;
sending, by the user, a validation message comprising a validation code;
validate, the email address based at least in part on sending the validation message; and
transmitting the email address to an associated with the brand partner based at least in part on validating the email address.
The limitations of independent claims 1 and 13 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) ) present offer…, collect email…, validate via code…, grant access…, transmit to partner 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 an processors, memory, local area network, communication delivery system, multi user access terminal, gateway system, a personal electronic device, email server, communications interface, apparatus. 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 establishing.., sending…, receiving…, validating…, and transmitting…, ) 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 an an processors, memory, local area network, communication delivery system, multi user access terminal, gateway system, a personal electronic device, email server, communications interface, apparatus 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 2-12, and 14-24 appear to merely further limit the abstract and as such, the analysis of dependent claims 2-12, and 14-24 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 - 24 are not patent eligible.
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 sWalsh 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) 1, 2, 4-15, 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Walsh et al. (US 2014/0053243) in view of Engstrom et al. (US 2017/0004582) in further view of O’Donnell et al. (US 2013/0107732)
Claim 1,13: Walsh discloses a method for communication at a communication delivery system, comprising:
establishing, by a multi-user access terminal on a transport vessel, a communications session with a personal electronic device of a passenger on the transport vessel, the communications session restricted to a first domain, the communications session routed via a local area network of the communication delivery system, wherein the multi-user access terminal communicates with a gateway system via a wireless communications link; ( [0006] functions to grant the user a temporary Internet session so they can download a prerequisite application from a selected Web site to only make use of the application to access a service resident on the Restricted LAN, such as In-Flight Entertainment Content on the aircraft. The term "In-Flight Entertainment Content" includes movies, music, WEB pages, catalogs, magazines, and any other data that the aircraft passengers may wish to view on their wireless personal communication devices while in flight on the aircraft.) [0011] In a Restricted Local Area Network environment, such as a captive portal, it is often necessary to access a resource from a special Web site on the Internet in order to activate or use a service that is offered in the Restricted Local Area Network. The captive portal environment exists where there is only a single available communication service that is available to the user. An example of a captive portal environment is on board an aircraft in flight, where the passengers have no access to any communication services, other than the aircraft resident wireless Local Area Network. [0015], Restricted Local Area Network 100 resident on the aircraft 110 communicates with a Ground Subsystem 102 which connects the communication traffic of the Air-To-Ground Link(s) 103 (and/or Satellite Link(s) 116 through satellite(s) 117) with traditional cellular-type communication network elements, including a Base Station)
wherein the first reward offer corresponds to a duration of unrestricted access for the communications session via the wireless communications link; ([0013] The temporary session could provide complete access to the Internet or could be limited to certain sites. In addition, the temporary session could be limited by controlling the allowed time or controlling the byte volume or control the throughput) but does not explicitly disclose sending, from the first domain to the personal electronic device via the communications session, one or more reward offers for presenting to the passenger, the one or more reward offers related to the communications session; receiving, from the personal electronic device and via the communications session, an indication of selection of a first reward offer, the first reward offer associated with providing an email address for use by a brand partner in distributing brand partner content; receiving, from the personal electronic device and via the communications session, an indication of the email address;
However O’Donnell discloses sending, from the first domain to the personal electronic device via the communications session, one or more reward offers for presenting to the passenger, the one or more reward offers related to the communications session; [0054] According to one embodiment, an organization interested in growing its registration database, may provide a WIFI access node 200 to a location. In exchange for free WIFI service, users of WIFI at the location are required to register before they can use the WIFI network. The mobile user device 108 information of registered users is sensed (as described above) and the provided registration information can be sent to and stored in the organizations registration database.
receiving, from the personal electronic device and via the communications session, an indication of selection of a first reward offer, the first reward offer associated with providing an email address for use by a brand partner in distributing brand partner content [0054]
receiving, from the personal electronic device and via the communications session, an indication of the email address; ([0105] the user provides login or registration information to the WIFI access node. The WIFI access node may require that a user wishing to connect to the wireless network enter credential information. For example, credential information may include the user's name, email address, phone number, social media contact information, or other credentials of the user.)
transmitting the email address to a server associated with the brand partner based at least in part on validating the email address. ([0054] and [0031], communication with the server)
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify, Walsh to include sending, from the first domain to the personal electronic device via the communications session, one or more reward offers for presenting to the passenger, the one or more reward offers related to the communications session; receiving, from the personal electronic device and via the communications session, an indication of selection of a first reward offer, the first reward offer associated with providing an email address for use by a brand partner in distributing brand partner content; receiving, from the personal electronic device and via the communications session, an indication of the email address; transmitting the email address to a server associated with the brand partner based at least in part on validating the email address, in order to provide an engagement system for identifying users based on their mobile devices'. ([0029], O’Donnell)
Walsh and O’Donnell does not explicitly disclose sending, by the first domain and to an email server, a validation message comprising a validation code; validating, by the communication delivery system, the email address based at least in part on sending the validation message and transmitting the email address to a server associated with the brand partner based at least in part on validating the email address.
However Engstrom discloses sending, by the first domain and to an email server, a validation message comprising a validation code; validating, by the communication delivery system, the email address based at least in part on sending the validation message; ;([0058], received by a user in order to confirm an asset under the control of the user. In particular, the confirmation email message 622 has been sent to the email address given by the asset information (bethad-mac@example.com). The email message includes a confirmation code)
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify, Walsh and O’Donnell to include sending, by the first domain and to an email server, a validation message comprising a validation code; validating, by the communication delivery system, the email address based at least in part on sending the validation message and transmitting the email address to a server associated with the brand partner based at least in part on validating the email address, in order to authenticate him/herself by inputting identifying information . ([0016], Engstrom)
Claim 2, 14: Walsh discloses the method of claim 1, but does not explicitly disclose wherein validating the email address comprises allowing access for the communications session to a second domain associated with the email address. However Engstrom wherein validating the email address comprises allowing access for the communications session to a second domain associated with the email address.[0021] Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify, Walsh and O’Donnell to include wherein validating the email address comprises allowing access for the communications session to a second domain associated with the email address in order to authenticate the user by inputting identifying information . ([0016], Engstrom)
Claim 4: Walsh discloses the method of claim 1, further comprising: but does not explicitly disclose receiving a message from the personal electronic device comprising the validation code; and unrestricting the communications session based at least in part on receiving the message. However Engstrom discloses receiving a message from the personal electronic device comprising the validation code;[0021] and unrestricting the communications session based at least in part on receiving the message. [0021]
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify, Walsh to include receiving a message from the personal electronic device comprising the validation code; and unrestricting the communications session based at least in part on receiving the message, in order to authenticate the user by inputting identifying information. ([0016], Engstrom) Claim 5,17: Walsh discloses the method of claim 1 but does not explicitly discloses wherein sending the validation message comprises sending the validation message to the brand partner. However O’Donnell discloses wherein sending the validation message comprises sending the validation message to the brand partner. [0054] Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify, Walsh to wherein sending the validation message comprises sending the validation message to the brand partner, in order to gather passive analytics . ([0055], O’Donnell)
Claim 6: Walsh discloses the method of claim 5, further comprising: but does not explicitly disclose receiving a message from the brand partner indicating successful validation of the email address; and unrestricting the communications session based at least in part on receiving the message.
However O’Donnell discloses receiving a message from the brand partner indicating successful validation of the email address; [0054]and unrestricting the communications session based at least in part on receiving the message. [0054] Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify, Walsh to include receiving a message from the brand partner indicating successful validation of the email address; and unrestricting the communications session based at least in part on receiving the message, in order to to provide free wifi service. ([0054], O’Donnell)
Claim 7, 19. Walsh discloses the method of claim 1, but does not explicitly disclose wherein sending the validation message comprises sending the validation message to the email address
However Engstrom discloses wherein sending the validation message comprises sending the validation message to the email address [0028 and 0033]
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify, Walsh and O’Donnell to include wherein sending the validation message comprises sending the validation message to the email address, in order to authenticate the user by inputting identifying information. ([0016], Engstrom)
Claim 8, 20: Walsh discloses the method of claim 1, further comprising:
establishing, by a local server, a plurality of communication sessions with a plurality of personal electronic devices of a plurality of passengers on the transport vessel, the plurality of personal electronic devices comprising the personal electronic device; ([0003, 0006, 001]) but does not explicitly disclose presenting, to the plurality of passengers, respective sets of reward offers related to the plurality of communication sessions; receiving, from the plurality of personal electronic devices, respective indications of selection of respective reward offers, the respective reward offers associated with providing respective email addresses for use by respective brand partners in distributing the brand partner content; validating the respective email addresses received from the plurality of personal electronic devices; and transmitting a plurality of messages to respective servers associated with a plurality of brand partners, each of the plurality of messages comprising one or more email addresses received from one or more of the plurality of personal electronic devices during a travel segment of the transport vessel.
However O’Donnell discloses presenting, to the plurality of passengers, respective sets of reward offers related to the plurality of communication sessions;[0054]
receiving, from the plurality of personal electronic devices, respective indications of selection of respective reward offers, the respective reward offers associated with providing respective email addresses for use by respective brand partners in distributing the brand partner content; [0054]
transmitting a plurality of messages to respective servers associated with a plurality of brand partners, each of the plurality of messages comprising one or more email addresses received from one or more of the plurality of personal electronic devices during a travel segment of the transport vessel.[0054]
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify, Walsh to include discloses presenting, to the plurality of passengers, respective sets of reward offers related to the plurality of communication sessions; receiving, from the plurality of personal electronic devices, respective indications of selection of respective reward offers, the respective reward offers associated with providing respective email addresses for use by respective brand partners in distributing the brand partner content; transmitting a plurality of messages to respective servers associated with a plurality of brand partners, each of the plurality of messages comprising one or more email addresses received from one or more of the plurality of personal electronic devices during a travel segment of the transport vessel, in order to provide an engagement system for identifying users based on their mobile devices. ([0029], O’Donnell)
Walsh and O’Donnell do not explicitly disclose validating the respective email addresses received from the plurality of personal electronic devices;
However Engstrom discloses validating the respective email addresses received from the plurality of personal electronic devices; [0021 and 0058]
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify, Walsh to include validating the respective email addresses received from the plurality of personal electronic devices, order to authenticate the user by inputting identifying information.
Claim 9, 21: Walsh discloses the method of claim 1, but does not explicitly disclose wherein validating the email address comprises receiving, from the email address, a response message comprising the validation code. However Engstrom discloses validating the email address comprises receiving, from the email address, a response message comprising the validation code.[0021 and 0058]
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify, Walsh to include validating the email address comprises receiving, from the email address, a response message comprising the validation code, order to authenticate the user by inputting identifying information.
Claim 10,22: Walsh discloses the method of claim 1 and 13, further comprising: but does not explicitly disclose presenting, to the passenger via the communications session, an indication that the email address will be shared with the brand partner. However Engstrom discloses presenting, to the passenger via the communications session, an indication that the email address will be shared with the brand partner. [0016] Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify, Walsh and O’Donnell to include presenting, to the passenger via the communications session, an indication that the email address will be shared with the brand partner, in order to share information.
Claim 15,18: Walsh discloses the apparatus of claim 14, further comprising: but does not explicitly disclose the communications interface further configured to receive a message from the personal electronic device comprising the validation code;[0058] and
the information controller further configured to unrestrict the communications session based at least in part on receiving the message. [0058]
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify, Walsh to include communications interface further configured to receive a message from the personal electronic device comprising the validation code; and the information controller further configured to unrestrict the communications session based at least in part on receiving the message, in order to provide an engagement system for identifying users based on their mobile devices'. ([0029], O’Donnell)
Walsh et al. (US2014/0053243) in view of Engstrom et al. (US 2017/0004582) in further view of O’Donnell et al. (US 2013/0107732) in view of Hall (WO 2016/040744)
Claim 11,23: Walsh discloses the method of claim 1, but does not explicitly disclose wherein the communications session with the personal electronic device is encrypted.
However Hall discloses wherein the communications session with the 2 personal electronic device is encrypted. [0034, 0043, 0071, 0099]
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify, Walsh and O’Donnell to include wherein the communications session with the personal electronic device is encrypted, in order to protects back-end system and/or authentication system from malicious code and/or cyber-attacks. ([0071], Hall)
Claim 12,24: Walsh discloses the method of claim 1, but does not explicitly disclose wherein transmitting the email address to the server associated with the brand partner is encrypted.
However Hall disclose wherein transmitting the email address to the server associated with the brand partner is encrypted [0043, 0071, 0099]
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify, Walsh and O’Donnell to include wherein transmitting the email address to the server associated with the brand partner is encrypted in order to protects back-end system and/or authentication system from malicious code and/or cyber-attacks. ([0071], Hall)
Claim(s) 3, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Walsh et al. (US2014/0053243) in view of Engstrom et al. (US 2017/0004582) in further view of O’Donnell et al. (US 2013/0107732) in view of Merlin et. (US 2016/0119953)
Claim 3, 16: Walsh discloses the method of claim 2, further comprising:
restricting access for the communications session from the second domain upon expiration of the timer based at least in part on failing to receive a message from the personal electronic device comprising the validation code.[0013] but does not explicitly disclose initiating a timer upon allowing access for the communications session to the second domain; However Merlin discloses initiating a timer upon allowing access for the communications session to the second domain; [0057 0098]
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify, Walsh and O’Donnell to include initiating a timer upon allowing access for the communications session to the second domain, in order to initiate access. ([0057], Merlin)
Response to Arguments
Applicant's arguments filed October 17, 2025 have been fully considered but they are not persuasive. The applicant argues in regards to the 101 rejection that the amended claims do not recite certain methods of organizing human activity, the Examiner respectfully disagrees the claims are directed to offering a reward to the user for said user providing an information (e.g. email address) . SEE MPEP 2106.04(a) - An example of a claim reciting advertising is found in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15, 112 USPQ2d 1750, 1753-54 (Fed. Cir. 2014). The patentee in Ultramercial claimed an eleven-step method for displaying an advertisement (ad) in exchange for access to copyrighted media, comprising steps of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad. 772 F.3d. at 715, 112 USPQ2d at 1754. The Federal Circuit determined that the "combination of steps recites an abstraction—an idea, having no particular concrete or tangible form" and thus was directed to an abstract idea, which the court described as "using advertising as an exchange or currency." Id. Thus, the applicant’s claims are considered abstract due to being equivalent to the aforementioned court case, due to the applicant’s claims providing a reward/incentive for user action. Also, in MPEP 2106.04(a) - An example of a claim reciting a commercial or legal interaction, where the interaction is an agreement in the form of contracts, is found in buySAFE, Inc. v. Google, Inc., 765 F.3d. 1350, 112 USPQ2d 1093 (Fed. Cir. 2014). The agreement at issue in buySAFE was a transaction performance guaranty, which is a contractual relationship. 765 F.3d at 1355, 112 USPQ2d at 1096. The patentee claimed a method in which a computer operated by the provider of a safe transaction service receives a request for a performance guarantee for an online commercial transaction, the computer processes the request by underwriting the requesting party in order to provide the transaction guarantee service, and the computer offers, via a computer network, a transaction guaranty that binds to the transaction upon the closing of the transaction. 765 F.3d at 1351-52, 112 USPQ2d at 1094. The Federal Circuit described the claims as directed to an abstract idea because they were "squarely about creating a contractual relationship--a ‘transaction performance guaranty’." 765 F.3d at 1355, 112 USPQ2d at 1096. Thus, the applicant’s claims are considered abstract due to being equivalent to the aforementioned court case(transaction with a guarantee (e.g. incentive) is an abstract business practice implemented on generic computers, due to the applicant’s claims having incentive mechanisms tired to the user participation. The applicant further argues in regards to the 101 rejection that the amended claims are improvements to the field of broadband access because the invention improves the user experience including seamless validation of an email address for enabling unrestricted access. The applicant cites paragraphs [0013 and 0050] as support for this assertion. The Examiner respectfully disagrees “improved user experience” is not a technological improvement. An improvement to user experience does not improve the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a) The cited paragraphs do not 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. [0013] merely discusses the user experience (addressed above) [0050] merely discloses the abstract idea and does not have additional elements that improve the functioning of a computer, or to any other technology or technical field. Also note Per MPEP 2106.05 (a) However, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology. The claims merely use computers as tools to implement the abstract idea. The recited additional elements of a local server, LAN gateway, wireless link, email server) are invoked as tools to carry out the abstract idea of (in summary) present offer…, collect email…, validate via code…, grant access…, transmit to partner. The asserted “seamless validation” is merely the desired result and not a technical solution. Merely stating a beneficial outcome is insufficient. The claims do not recite a specific technical improvement. Unlike Enfish the claims do not recite a specific improvement to computer functionality. MEPEP 2106.05(a) In computer-related technologies, the examiner should determine whether the claim purports to improve computer capabilities or, instead, invokes computers merely as a tool. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336, 118 USPQ2d 1684, 1689 (Fed. Cir. 2016). 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. Nor do the claims provide a technical solution to a technical problem. MPEP 2106.04(a) whether the claim "purport(s) to improve the functioning of the computer itself" or "any other technology or technical field." Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 225, 110 USPQ2d 1976, 1984 (2014). This consideration has also been referred to as the search for a technological solution to a technological problem. See e.g., DDR Holdings, LLC. v. Hotels.com, L.P., 773 F.3d 1245, 1257, 113 USPQ2d 1097, 1105 (Fed. Cir. 2014); Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300-01, 120 USPQ2d 1527, 1537 (Fed. Cir. 2016). The applicant’s assertion of “improved user experience” and “seamless validation” merely reflects a business improvement, not a technological improvement to the computer functionality. Furthermore, on September 26, 2025, the United States Patent and Trademark Office (USPTO) issued an Appeals Review Panel decision in Ex Parte Desjardins, Appeal No. 2024-000567 (PTAB September 26, 2025, Appeals Review Panel Decision) vacating the Board’s new ground of rejection under 35 U.S.C. § 101. The decision was designated precedential on November 4, 2025. (SEE USPTO memorandum dated December 5, 2025) Specifically, Ex Parte Desjardins explained the following:
Enfish ranks among the Federal Circuit's leading cases on the eligibility of technological improvements. In particular, Enfish recognized that “[m]uch of the advancement made in computer technology consists of improvements to software that, by their very nature, may not be defined by particular physical features but rather by logical structures and processes.” 822 F.3d at 1339. Moreover, because “[s]oftware can make non-abstract improvements to computer technology, just as hardware improvements can,” the Federal Circuit held that the eligibility determinations should turn on whether “the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.” Id. at 1336. (Desjardins, page 8). While the applicant's claims are not directed to machine learning/Artificial Intelligence, the Desjardins decision further emphasizes that merely performing a calculation (e.g. the calculation of a particular algorithm) and/or merely performing business logic via a computer is not sufficient to overcome a 101 rejection.
Applicant’s arguments with respect to claim(s) 1-24 have been considered but are moot due to the updated rejection.
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.
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