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 .
DETAILED ACTION
Status of Claims
This action is in reply to the communication filed on 10/29/2025.
Claims 1,4,6-912,15,17-20 have been amended.
Claims 1-20 are currently pending and have been examined.
Response to Applicant’s Arguments
Applicant’s amendments and arguments filed on 10/29/2025 have been fully considered and discussed in the next section. Applicant is reminded that the claims must be given its broadest, reasonable interpretation.
With regard to claims 12-20 rejection under 35 USC § 101, Applicant’s amendment clarified the claims rejection as being directed to a system without recitation of physical structure. Claims 12-20 currently recite a system with physical structure of interconnected devices. Therefore, the claim rejection of claims 12-20 under 35 USC § 101 as a system without recitation of physical structure is withdrawn.
With regard to claims 1-20 rejection under 35 USC § 101:
Step 2A, Prong Two
Applicant argues that “the claimed embodiments are a practical application that "improve[s] the functioning of a computer or another technologv" (in this case, at least electronic payment/rewards points technology). See, 2024 Guidance. In particular, the claimed embodiments solve one technological problem relating to how to efficiently provide notifications to, and receive donation confirmations from, a plurality of users who have rewards points in an electronic payments/rewards system. By using automation to filter the plurality of users in accordance with the claimed actions, a targeted set of users is produced that enables the system to avoid having to send notifications to the entire plurality of users. This in turn has a ripple effect of resource savings throughout the system in that the rewards server does not need to generate an overly (and unproductively) large set of notifications, network communications are reduced, thereby saving communication resources that can then be made available to others, and so on. In assessing the outcome of the Step 2A Prong Two analysis, the Office is further reminded that, as stated in the 2024 Guidance. Step 2A, Prong Two specifically excludes consideration of whether the additional elements represent well-understood, routine, conventional activity. Instead, analysis of well-understood, routine, conventional activity is done in Step 2B. (Emphasis added). In view of the above, it is clearly demonstrated that the presently claimed embodiments satisfy the requirements of Step 2A Prong Two, and that they are therefore patent eligible (page 8/15)”.
Examiner disagrees. The recitation of claim 1 of the additional elements of : a user device, and a server fails to (a) improve another technology or technical field and (b) improve the functioning of the computer itself and (c) applies the abstract idea with or by use of, a particular machine, which is a generic computer performing generic computer functions and are not seen to recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself.
Indeed, the identified improvements recited by Applicant are really, at best improvements to the performance of the abstract idea (e.g., improvements made in the underlying business method (how to efficiently provide notifications to, and receive donation confirmations from, a plurality of users who have rewards points in an electronic payments/rewards system. By using automation to filter the plurality of users in accordance with the claimed actions, a targeted set of users is produced that enables the system to avoid having to send notifications to the entire plurality of users) and not in the operations of any additional elements or technology.
As such, the examiner finds that any improvement obtained by practicing the claimed invention is an improvement to a business process.
Second, under Step 2a, Prong 2, the improvement to a technology or technological field must be rooted in the additional element. Additional elements are those elements outside of the identified abstract idea itself. In the instant case the only additional elements are a server and user device, which are just general-purpose computers with generic computing components upon which the abstract idea is applied which is insufficient to transform an abstract idea into a practical application under Step 2a, Prong 2 or be considered significantly more under Step 2b. Thus, any improvement obtained by practicing the abstract idea, is an improvement obtained by practicing the abstract idea and not rooting in the additional elements upon which the abstract idea is applied.
Also, resource savings throughout the system in that the rewards server does not need to generate an overly (and unproductively) large set of notifications, network communications are reduced, thereby saving communication resources that can then be made available to others does not change nor effect the actual computer itself (server). The computer (server) still has the same processor, the same amount of memory, and still functions in the stands way a computer is intended to function. The network still has the same amount of bandwidth. Thus, there is no change to the computer itself or the way in which it is capable of functioning.
Any purported improvement in regards to performing the filtering, the amount of notifications that are required to processes by the computer, the number of targeted communications send to filtered second set of users set are rooted solely in perform the identified abstract idea that is merely being applied with a general-purpose computer. Improvements of this nature are improvements in inelligible subject matter (see SAP v. Investpic: Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because they are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms.
Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non-abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract.). The same if true for the purported technological fields of electronic communications. The purported improvements are rooted solely in the abstract idea itself that is merely applied using a general purpose computer. As such, an purported improvement in what the applicant calls a technical field is an improvement in ineligible subject matter. In order for an improvement to a technology or technological filed to overcome a 35 USC 101 rejection, the purported improvement must be rooted in the "additional elements" which in this case they are not. The claimed additional elements are merely a general purpose computer upon which an abstract idea is merely being applied which is insufficient to transform an abstract idea into a practical application under Step 2a, Prong 2.
As such Applicant's claimed solution is NOT technological and does not addresses a technological problem. Accordingly, the claim rejection of claims 1-20 rejection under 35 USC § 101 is maintained.
Applicant argues that “Applicant's claimed embodiments are based on a new approach that solves the rewards points redemption problem, and of necessity this involves computer equipment. That the claimed embodiments defined "significantly more" than mere application of an abstract idea on a generic computer can be seen by the fact that they incorporate analysis and filtering of user and transaction data that is not shown in the prior art of record, and that the results of this processing are then applied to trigger actions at a user device. Embodiments defined by dependent claim 8 define an additional sequence of actions that complete the redemption process. Improvements over conventional technology at the time of Applicant's claimed invention were discussed above. Furthermore, it is respectfully asserted that the variously claimed embodiments are patentably distinguishable over the prior art of record, thereby further supporting the inventiveness of Applicant's claimed embodiments. For a full discussion of this, please see the traversal of the rejection under Section 102. For at least the foregoing reasons, it is believed that the variously claimed embodiments are patent eligible. Accordingly, it is respectfully requested that the rejection of claims 1-20 under 35 U.S.C. §101 be withdrawn (page 11/15)”.
Examiner disagrees. Examiner asserts that the rejection of claims under 35 USC 101 is separate and distinct from rejections for anticipation and obviousness. Rejecting the claims under 35 U.S.C. § 102 and/or 35 U.S.C. § 103 has no bearing or consequence on the materiality of a rejection under 35 U.S.C. § 101.
The recitation of claim 1 of the additional elements of : a user device, and a server fails to (a) improve another technology or technical field and (b) improve the functioning of the computer itself and (c) applies the abstract idea with or by use of, a particular machine, which is a generic computer performing generic computer functions and are not seen to recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself.
Indeed, the identified improvements recited by Applicant are really, at best improvements to the performance of the abstract idea (e.g., improvements made in the underlying business method (incorporate analysis and filtering of user and transaction data) and not in the operations of any additional elements or technology.
As noted above, the additional claim features do not amount to significantly more under the framework. The claim does not qualify under the other non-limiting non-exclusive examples. In order to overcome a 35 USC 101 rejection, the technical solution to a technical problem must be rooted in the "additional elements". Additional elements are defined as those elements outside the identified abstract idea itself. As thus, the only additional elements in the claim that would be capable of overcoming the 101 are (user device and a server), which are a general-purpose computer with generic computer components upon which an abstract idea is merely being applied.
As such, an purported improvement in what the applicant calls a technical field is an improvement in ineligible subject matter. In order for an improvement to a technology or technological filed to overcome a 35 USC 101 rejection, the purported improvement must be rooted in the "additional elements" which in this case they are not. The claimed additional elements are merely a general purpose computer upon which an abstract idea is merely being applied which is insufficient to transform an abstract idea into a practical application under Step 2a, Prong 2.
Accordingly, Applicant's claimed solution is NOT technological and does not addresses a technological problem. Therefore, the claim rejection of claims 1-20 rejection under USC § 101 is maintained.
With regard to claims 1-20 rejection under 35 USC § 102 (a) (1): Applicant’s arguments are considered. The claim rejection of claims 1-20 under 35 USC § 102 (a) (1) is withdrawn.
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 1-20 are rejected under 35 U.S.C.101 because the claimed invention is directed to a judicial exception subject matter, specifically an abstract idea. The analysis for this determination is explained below:
Step 1, determine whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
In this case, claim (s) 1-11 are directed to a process (i.e. a method); assuming that claim(s) 12-20 are amended as suggested above, are directed to a machine (i.e. a system).
The claimed invention is directed to at least one judicial exception (i.e. a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claim 1 for instance recite(s) the following abstract idea of: “ identifying, by a rewards server, a first set of users from a plurality of users based on reward points associated with a first set of payment modes, wherein the first set of payment modes is associated with the plurality of users, and wherein the reward points associated with each of the first set of users are set to expire after a first time period; initiating, by the rewards , an analysis of a transaction history of at least one of the first set of users to detect that at least one transaction of the transaction history of the at least one of the first set of users is associated with a set of sustainable initiatives; selecting, by the rewards, a second set of users from the first set of users, wherein the at least one transaction of the transaction history of each of the second set of users is detected to be associated with the set of sustainable initiatives; and communicating, by the rewards server, a dataset of the second set of users to a first issuer such that each of the second set of users is notified on a corresponding user by the first issuer to donate the reward points that are set to expire to a set of sustainable activities ”.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas as it relates to commercial interactions of advertising, marketing, or sales activities or behaviors; business relations, because the merely gather data, analyze the data, determine results based upon the analysis, generate tailored content based on the results, and transmit the tailored content. Accordingly, the claim recites an abstract idea (i.e. MPEP Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application because the claim only recites the additional elements of “ server and device ”. The additional technical elements above are recited at a high-level of generality (i.e. as a generic processor performing a generic computer function of processing, communicating and displaying) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) 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).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)). Thus, the claim is “directed to” an abstract idea (i.e. MPEP Step 2A Prong Two=Yes)
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using the additional elements of “ server and device” to perform the claimed functions amounts to no more than mere instructions to apply the exception using a generic computer component.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. 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.
The Examiner notes simply implementing an abstract concept on a computer, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent-eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires a general purpose computers communicating over a general purpose network (as evidenced from paragraph 136); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility. Thus, taken individually and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea) (i.e.MPEP Step 2B=No).
For the same reason these elements are not sufficient to provide an inventive concept. For these reasons, there is no inventive concept in the claim, and thus the claim is not patent eligible. Same Judicial analysis is applied here to independent claim 12.
The dependent claims 2-11 and 12-20 appears to merely further limit the abstract idea of Certain methods of organizing Human Activity” as it relates to commercial interactions of advertising, marketing, or sales activities or behaviors; business relations), which is considered part of the abstract idea and therefore only further limit the abstract idea (i.e. MPEP Step 2A Prong One=Yes), does/do not include any new additional elements that are sufficient to amount to significantly more than the judicial exception, and as such are “directed to” said abstract idea (i.e. MPEP Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. MPEP Step 2B=No).
Thus, the dependent claims further narrows the abstract idea and/or recite additional elements previously rejected in the independent claims 1 and 12.
Accordingly, the claim fails to recite any improvements to another technology or technical field, improvements to the functioning of the computer itself, use of a particular machine, effecting a transformation or reduction of a particular article to a different state or thing, adding unconventional steps that confine the claim to a particular useful application, and/or meaningful limitations beyond generally linking the use of an abstract idea to a particular environment. See 84 Fed. Reg. 55. Viewed individually or as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
Possible Allowable Subject Matter
Claims 1-20 would be allowable if the applicant were to be able to overcome the Claim rejection under 35 USC § 101.
The following is a statement of reasons for the indication of allowable subject matter, none of the cited reference discloses the claimed features of independent of claims 1, and 12. As such, the examiner, has been unable to find prior art that discloses the combination of the claimed features. Thus, the claims contain subject matter that would be allowable over the prior art if the applicant to be able to overcome the Claim rejections under 35 USC § 101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant' s disclosure.
Tietzen, US Pub No: 2022/0198479 A1, teaches system for incenting account holder transacting with merchant donation.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 files within TWO MONTHS from 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 extension fee 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Affaf Ahmed whose telephone number is 571-270-1835. The examiner can normally be reached on [ Mon-Thursday 8-6 pm ].
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached at 571-270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AFAF OSMAN BILAL AHMED/Primary Examiner, Art Unit 3622