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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 27, 2026 has been entered.
Response to Amendment
The amendment filed on May 27, 2026 cancelled no claims. Claims 1 and 11 were amended and no new claims were added. Thus, the currently pending claims addressed below are claims 1-20.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 112(a) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications (i.e., Application No. 16/259,386 and Application No. 17/958,704) fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Applicant states that this application is a continuation or divisional application of the prior-filed application. A continuation or divisional application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:
Original Claims 1 and 11 of the instant application recited the following limitation which is not found in the disclosure of Application No. 16/259,386 and/or Application No. 17/958,704: “transmitting the updated offer list to a provider computing system”. The disclosure of Application No. 16/259,386 and/or Application No. 17/958,704 support a provider computing system performing the claimed steps of receiving, aggregating, and generating comprising: providing, receiving, selecting transmitting, receiving, transmitting, and receiving. However, there is no disclosure of a computing system other than a provider computing system performing said steps or a disclosure of said provider computing system, after performing said steps, transmitting the updated offer list to a different provider computing system. Instead, Application No. 16/259,386 and/or Application No. 17/958,704 supports a provider computing system performing said steps and transmitting the updated offer list to the client device in paragraph 66 and Figure 5.
Please note that neither cancelling claims 1 and/or 11, nor amending claims 1, and/or 11 can correct this issue. The instant application must be changed to a continuation-in-part.
As per MPEP 211.05(I)(B):
“The disclosure of a continuation application must be the same as the disclosure of the prior-filed application; i.e., the continuation must not include anything which would constitute new matter if inserted in the original application. See MPEP § 201.07.”
“The disclosure of a continuation or divisional application cannot include anything which would constitute new matter if inserted in the prior-filed application.”
and, as per MPEP 2163:
“The claims as filed in the original specification are part of the disclosure and, therefore, if an application as originally filed contains a claim disclosing material not found in the remainder of the specification, the applicant may amend the specification to include the claimed subject matter. In re Benno, 768 F.2d 1340, 226 USPQ 683 (Fed. Cir. 1985).”
Thus, if Priority as a Continuation were to be granted by merely cancelling the claims as originally filed to overcome the lack of support issue, then the applicant could later amend the specification to include the cancelled subject matter as per MPEP 2163(I)(B) because the subject matter was found in the claims as originally filed. This would result in the application maintaining the status as a Continuation and given the priority date of the original application, yet still require the entry of New Matter. As such, merely cancelling the claimed subject matter is not sufficient.
As the instant application cannot be a Continuation of Application No. 17/958,704 and is currently not a Continuation-in-part of Application No. 17/958,704, the priority date for the instant application is it filing date of October 3, 2022.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 11,461,796. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim limitations are commensurate in scope with or obvious variants of claims 1-28 in U.S. Patent No. 11,461,796.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,073,425. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim limitations are commensurate in scope with or obvious variants of claims 1-18 in U.S. Patent No. U.S. Patent No. 12,073,425.
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 directed to a method and a system which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes). However, claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) the following abstract idea: (Examiner note: the plurality of merchant computing systems, multiple merchants, a user device, the client application executing on the user device, and the corresponding merchant have been included as part of the abstract idea itself because they are all outside the scope of the applicant’s invention (the computing system implementing the method) and, as such, cannot be considered “additional elements” of the claimed invention.)
receiving a plurality of offers from a plurality of merchant computing systems, wherein each offer of the plurality of offers includes an identifier of a corresponding merchant;
aggregating offers received from the plurality of merchant computing systems to generate an offer list comprising offers from multiple merchants;
generating an updated offer list comprising fewer offers than the offer list based on information on redemption of offers stored in association with accounts, wherein generating the updated offer list comprises:
providing content to be displayed comprising the offer list to a user device of a user for display in a client application executing on the user device;
receiving via the user device, an adjustment to a position of each offer in the offer list responsive to an input received at the user device indicating a movement of at least one offer to a different position in the offer list displayed on the user device, wherein the movement of the at least one offer results in the adjustment to the position of each offer in the offer list;
determining based on the adjustment to the position of each offer in the offer list, a respective priority for each offer of the plurality of offers;
selecting an immediate offer based at least on the respective priority of each offer of the plurality of offers;
transmitting the immediate offer for display;
receiving, from the user device, a user selection to redeem the immediate offer;
transmitting a quick response (QR) code associated with the immediate offer for display by the user device and presentation during payment at the corresponding merchant to redeem the immediate offer; and
receiving from the corresponding merchant, a notification indicating that the immediate offer was redeemed; and
transmitting the updated offer list to the user device.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely commercial or legal interactions because they recite advertising, marketing and sales activities or behaviors. Accordingly, the claim recites an abstract idea (i.e. “PEG” 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:
a computing system comprising: one or more processors, a memory, and a database (i.e., accounts database) executing software (i.e., instructions) which is a general-purpose computer with generic computer components; and
a user interface with the functionality to displays a list, and allow the list to be resorted by a user (e.g., a generic computer element).
The applicant’s specification discloses no technical details with regard to how such resorting is implemented by the user interface and provides no indication of technical problems that were overcome by implementing such resorting functionality. The examiner is aware of a number of user interfaces that allow users to resort lists displayed on a graphical user interface by using prepackaged features associated with programming languages such as SortableJS and/or user interfaces such as jQuery UI Sortable. As such, there does not appear to be an inventive concept associated with generating a graphical user interface with the functionality of displaying a list and allowing the list to be resorted by the user. As such, when considered individually the claim merely require:
applying the abstract idea using a general-purpose computer with generic computer components as a tool; and
applying the abstract idea using a generic graphical user interface with standard functionality (e.g., a generic computer element) as a tool.
When considered as a whole the claims amount to merely applying an abstract idea using a general-purpose computer with generic computer components and a generic computer element as a tool.
The following limitations, if removed from the abstract idea and considered additional elements, merely perform generic computer function of processing, storing, communicating (e.g., transmitting and receiving), and displaying data and, as such, are insignificant extra-solution activities (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
receiving a plurality of offers from a plurality of merchant computing systems, wherein each offer of the plurality of offers includes an identifier of a corresponding merchant (receiving data);
storing information on redemption of offers in an accounts database (storing data);
providing a graphical user interface comprising the offer list to a client device of a user for display in a browser application executing on the user device (transmitting data);
receiving via the user device, an adjustment to a position of each offer in the offer list responsive to an input received at the user device indicating a movement of at least one offer to a different position in the offer list displayed on the user device, wherein the movement of the at least one offer results in the adjustment to the position of each offer in the offer list (receiving data);
transmitting the immediate offer for display (transmitting data);
receiving, from the user device, a user selection to redeem the immediate offer (receiving data);
transmitting a quick response (QR) code associated with the immediate offer for display by the user device and presentation during payment at the corresponding merchant to redeem the immediate offer (transmitting data); and
receiving from the corresponding merchant, a notification indicating that the immediate offer was redeemed (receiving data); and
transmitting the updated offer list to the user device of the user for display (transmitting data).
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. “PEG” Revised 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 a computing system comprising one or more processors, a memory, and a database executing instructions and a graphical user interface with the functionality to displays a list and allow the list to be resorted by a user (e.g., a general-purpose computer with generic computer components and a generic computer element) to perform the claimed functions amounts to no more than mere instructions to apply the exception using the additional elements (i.e., the general-purpose computer with generic computer components and the generic computer element) as a tool.
“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 applying the abstract idea using a general-purpose computer with generic computer components and a generic computer element (a computing system comprising one or more processors, a memory, a database executing instructions and a graphical user interface with the functionality to displays a list, and allow the list to be resorted by a user) as evidenced from figures 1 and 2, and paragraphs 21-22, 26-27, 38-39 and 41 of the applicant’s specification; an interactive user interfaces that merely display data and accepts user input is a generic computer element as evidenced by the Intellectual Ventures I v. Capital One decision; and a user interface that display a list and allows a user to resort the list was well-known prior to January 1, 2018 as evidence from Wikipedia, jQuery September 23, 2017, https://en.wikipedia.org/w/index.php?title=JQuery_UI&oldid =802042306, pages 1-5 which discloses on page 1 that the jQuery UI which is a collection of GUI widgets and included the sortable interactions was the second most popular JavaScript library in 2017 and jQuery UI API Documentation, Sortable Widget, December 28, 2017, https://web.archive.org/web/20171228153200/https://api. jqueryui.com/sortable/, pages 1-41 which explain how Sortable works and provides example code for implementing a user interface with a simple list of user reorderable items on page 40); 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. Finally, the following limitations, if removed from the abstract idea and considered additional elements, would be considered insignificant extra solution activity as they are directed to merely receiving, displaying, storing, and/or transmitting data (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
receiving a plurality of offers from a plurality of merchant computing systems, wherein each offer of the plurality of offers includes an identifier of a corresponding merchant (receiving data);
storing information on redemption of offers in an accounts database (storing data);
providing a graphical user interface comprising the offer list to a client device of a user for display in a browser application executing on the user device (transmitting data);
receiving via the user device, an adjustment to a position of each offer in the offer list responsive to an input received at the user device indicating a movement of at least one offer to a different position in the offer list displayed on the user device, wherein the movement of the at least one offer results in the adjustment to the position of each offer in the offer list (receiving data);
transmitting the immediate offer for display (transmitting data);
receiving, from the user device, a user selection to redeem the immediate offer (receiving data);
transmitting a quick response (QR) code associated with the immediate offer for display by the user device and presentation during payment at the corresponding merchant to redeem the immediate offer (transmitting data); and
receiving from the corresponding merchant, a notification indicating that the immediate offer was redeemed (receiving data); and
transmitting the updated offer list to the user device of the user for display (transmitting data).
Thus, taken individually and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea), and therefore only limit the application of the idea, and do not add significantly more than the idea (i.e. “PEG” Step 2B=No).
The dependent claims 2-10 and 12-20 merely further limit the abstract idea by adding additional steps related to receiving a connection request which is considered part of the abstract idea (Claims 2 and 12); further limiting the selecting of the immediate offer which is considered part of the abstract idea (Claims 3-5 and 13-15); adding the additional step of receiving locations of the user device and maintaining and updating a location history of the user device which are all considered part of the abstract idea (Claims 6 and 16); adding an additional step of generating a filtered offer list and further limiting the adjusting which are both considered part of the abstract idea (Claims 7 and 17); adding an additional step of receiving an adjusted offer list which is considered part of the abstract idea (Claims 8 and 18); further limiting the immediate offer and further limiting the generating of the updated offer list which are both considered part of the abstract idea (Claims 9-10 and 19-20), and therefore only further limit the abstract idea (i.e. “PEG” Revised 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. “PEG” Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. “PEG” Step 2B=No).
Thus, based on the detailed analysis above, claims 1-20 are not patent eligible.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As per the “Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications” issued on January 21, 2011 and MPEP 2161.01, the first paragraph of § 112 contains a written description requirement that is separate and distinct from the enablement requirement. To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. The written description requirement of § 112, paragraph 1 applies to all claims including original claims that are part of the disclosure as filed. Claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function.
Independent claims 1 and 11, as currently amended, are recited using functional claim language and encompass a broad genus. The examiner has been unable to find support for such a broad genus in the applicant’s disclosure. limitation in the applicant’s specification.
First, the limitation directed to providing a graphical user interface comprising the offer list to a user device of a user for display in a client application executing on the user device, wherein the graphical user interface allows a user to move at least one offer to a different position indicates an invention which encompasses all possible ways of providing such a graphical user interface, with such capabilities, to a client application executing on a client device. As such, the applicant’s specification must describe enough individual species of providing such a graphical user interface, with such capabilities, to a client application executing on a client device to prove that the applicant had possession of the claimed genus. The only specific species of providing such a graphical user interface, with such capabilities, to a client application executing on a client device disclosed in the applicant’s specification is found in paragraphs 67-68. Paragraphs 67-68 make it clear that the only way in which the applicant’s invention can providing such a graphical user interface, with such capabilities, to a client application executing on a client device is if the user has logged into a client application or a mobile banking website portal and has selected a “View Rewards Offers” selection 602. This, species of providing the graphical user interface requires that a log-in procedure occur, prior to the providing and a selection by the user to “View Rewards Offers”. However, the claims neither require the user to perform a log-in function, nor require the user to select and, as such, “View Rewards Offers”. As such, the genus being claimed includes an invention capable of providing the graphical user interface in other instances such as when a user merely visits a webpage, when a user merely logs into a webpage or application, or when a user opens any application which does not require a login procedure such as a word processor application, a camera application, a navigation application, browser, etc. The disclosure of a single species of the applicant’s invention providing such a graphical user interface, with such functionality to a client device executing an application is not sufficient to prove, to one of ordinary skill in the art, that the applicant had possession of an invention which encompasses every way in which such a graphical user interface, with such functionality can be provided to a client device executing an application.
Second, the limitations of “receiving, from the user device, a user selection to redeem the immediate offer”, and “transmitting a quick response (QR) code associated with the immediate offer for display by the user device and presentation during payment at the corresponding merchant to redeem the immediate offer” encompasses all possible ways of all possible ways for transmitting the quick response (QR) code associated with the immediate offer for presentation and display during a payment. As such, the applicant’s specification must describe enough species of performing this function to prove that they had possession of the genus. While the examiner has found a number of different species of transmitting the immediate offer for display, he has only been able to find a single species of transmitting the quick response (QR) code associated with the immediate offer for presentation and display during a payment. According to paragraphs 50-51 and 67-70, the immediate offer can be transmitted for display via a push notification, a text message, or an overlay. However, the applicant’s specification does not indicate that the transmitting, in response to the user selection to redeem, the QR code can occur via a push notification, a text message, or an overlay. According to the applicant’s disclosure in paragraphs 67-70 and figure 9, when a selection to redeem the offer requires the QR code to be displayed, the QR code is displayed within the client application. The disclosure of a single species of the applicant’s invention transmitting, in response to a user selection to redeem, a quick response (QR) code associated with the immediate offer for display and presentation by the user device during payment at the corresponding merchant to redeem the immediate offer is not sufficient to prove, to one of ordinary skill in the art, that the applicant had possession of an invention which encompasses every way in which a QR code associated with an immediate offer can be transmitted for display an presentation by the user device, in response to a user selection to redeem.
The test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. A description that merely renders the invention obvious does not satisfy the requirement, Lockwood v. Am. Airlines, 107 F.3d 1565, 1571-72 (Fed. Cir. 1997). To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. The written description requirement of § 112, paragraph 1 applies to all claims including original claims that are part of the disclosure as filed. Claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus. The level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Computer-implemented inventions are often disclosed and claimed in terms of their functionality. This is because writing computer programming code for software to perform specific functions is normally within the skill of the art once those functions have been adequately disclosed. Nevertheless, for computer-implemented inventions, the determination of the sufficiency of disclosure will require an inquiry into both the sufficiency of the disclosed hardware as well as the disclosed software due to the interrelationship and interdependence of computer hardware and software. When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. Specifically, if one skilled in the art would know how to program the disclosed computer to perform the necessary steps described in the specification to achieve the claimed function and the inventor was in possession of that knowledge, the written description requirement would be satisfied. If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed computer to perform the claimed function, a rejection under § 112, paragraph 1 for lack of written description must be made. In the instant case, the claimed invention fails to satisfy the written description requirement because the invention is describing a genus of invention using functional language, merely describe a single species of the genus for each of the identified limitations, and there is no disclosure in the applicant’s specification of a specific algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed genus being claimed in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor has possession of the claimed genus. Hence, it is clear that the specification fails to satisfy the written description requirement because it does not sufficiently identify enough species to prove that the applicant had possession of the claimed genus. As such, claims 1 and 11 are rejected for failing to comply with the written description requirement.
Dependent claims 2-10 and12-20 fail to correct the deficiencies of the claim from which they depend and, as such, are rejected by virtue of dependency.
Possible Allowable Subject Matter
Claims 1-20 would be allowable over the prior art if the applicant were to be able to overcome the Priority issue, the Double Patenting rejections, the 101 rejections, and 112(a) rejections above.
The following is a statement of reasons for the indication of allowable subject matter: The examiner has found prior art (see Zilkha - 2014/0180817 and Angell - 2011/0087529) that discloses a method implemented using a computing system and a computing system comprising one or more processors and a memory with instructions executable by the one or more processor, the method and computing system comprising:
receiving a connection request from a client application installed on a user device of the user such that the client application is communicably coupled to the provider computing system;
receiving a current location of the user device and maintain and updating a location history of the user by storing store the current location in a location history of in one or more data structures of a user profile the user;
receiving a plurality of offers from a plurality of merchant computing systems, wherein each offer of the plurality of offers includes an identifier of a corresponding merchant;
aggregating offers received from the plurality of merchant computing systems to generate an offer list comprising offers from multiple merchants;
generating an updated prioritized offer list comprising fewer offers than the offer list based on information on redemption of offers in an accounts database, including filtering and prioritizing the offers in the plurality of offers based on the location history, the account information, and a location of each offer merchant corresponding to each offer in the plurality of offers, wherein generating the updated offer list comprises:
providing a graphical user interface comprising the offer list to a client application executing on the user device for display;
selecting an immediate offer from the updated prioritized offer list based on the priority of each offer in the updated prioritized offer list, and the location of the user device indicating that the user is currently standing outside the location of one of the offer merchants;
transmitting the immediate offer to the client application for display in the client application installed on the user device;
receiving, from the client application, a user selection to redeem the immediate offer;
transmitting a QR code associated with the immediate offer for display by the user device and presentation during payment at the corresponding merchant associated with the immediate offer to redeem the immediate offer; and
receiving, from the corresponding merchant, a notification indicating that the immediate offer was redeemed; and
transmitting the updated offer list to the user device of the user for display.
The examiner has also found prior art (see Numazawa et al. – 2016/0349943) which discloses:
receiving via a graphical user interface displayed at the user device, an adjustment to a position of each item on a list responsive to an input received at the user device indicating a movement of at least one item to a different position in the list displayed via the graphical user interface, wherein movement of the at least one offer results in the adjustment to the position of each offer in the offer list and determining a respective priority (e.g., order) based on the respective priority (e.g., order) of each item of the plurality of items.
However, the prior art of Numazawa does not disclose utilizing the adjustment to the priority of each offer in the offer list to select the immediate offer. As such, examiner has been unable to find prior art, that would be obvious to combine with Zilkha, Angell, and Numazawa, which discloses: selecting an immediate offer based at least on the adjustment to the priority of each offer in the offer list.
Thus, claims 1-20 contain subject matter that would be allowable over the prior art if the applicant were to be able to overcome the Priority issue, the Double Patenting rejections, the 101 rejections, and 112(a) rejections above.
Response to Arguments
Applicant's arguments filed May 27, 2026 have been fully considered but they are not persuasive.
The applicant’s arguments with regards to the Priority issue are not convincing. The original claims are part of the disclosure. As such, amendment to the claims cannot change the fact that the original disclosure included subject matter not supported by the disclosure of the earlier application (17/958,704). In order to correct the priority, issue the instant application must be changed to a Continuation-in-Part of the earlier application (17/958,704). Until such a change is made the effective filing date of the instant application will remain August 23, 2024. Once this change is made, removing the subject matter ,not supported by the disclosure of the earlier application (17/958,704), from the claims of the instant application would result in the claims having a priority date of January 29, 2018. As I understand it, the changing of the instant application to a Continuation-in-Part can be done by filing an updated Application Data Sheet (ADS) indicating that the instant application is a Continuation-in-Part of application 17/958,704. Thus, the applicant’s arguments are not convincing and the Priority issues are maintained.
The applicant’s response to the Double Patenting rejection was non-responsive. While the examiner could have issued a Notice of Non-Responsive Amendment, in an order to further the prosecution of the case, he is instead warning the applicant with regards to the requirements of the MPEP and Double Patenting rejections. As per 37 CFR 1.111, "In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action". While, 37 CFR 1.111 allows for a request to "be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated", a Double Patenting rejection is not an objection or requirement as to form not necessary for further consideration of the claims as noted in MPEP 804 (B)(1) "filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance." As such, a failure to address the Double Patenting rejection in future correspondence is likely to result in a Notice of Non-Responsive Amendment. The applicant can properly address the Double Patenting rejection by either filing a Terminal Disclaimer or providing specific arguments why one or more limitations in the claims, as amended, are not an obvious variant of the claims in the identified patent. Merely, amending the claims to recite a new limitation and stating that the applicant believes the Double Patenting rejection cannot be maintained over the claims as currently amended is not sufficient. The applicant needs to provide specific arguments as to why said limitation would not be an obvious variant of the claims in the identified patent. However, should the applicant present such a convincing argument that the claims as amended of the instant application are not obvious variants of the claims of the previous application and/or patent, then it is likely they would also not be obvious variants of the previous claims of the instant application for which the examiner has issued an Office Action. This is because said previously examined claims were obvious variants of the previous application and/or patent. Thus, a successful argument regarding amended claims not being obvious variants of the previous application and/or patent is likely to result in Restriction by Original Presentation for the newly amended claims in the instant application. Given that the applicant has provided no specific argument as to why the claims as amended are not obvious variants of Patent No. 11,461,796 and Patent No. 12,073,425, the Double Patenting rejections have been maintained.
The applicant’s arguments with regards to the 35 USC 101 rejections are not convincing.
The applicant asserts that the claims overcome the 35 USC 101 rejection under Step 2a, Prong 1 because they are not simply directed to advertising, marketing, or sales activities because they recite limitations of “providing a graphical user interface…to a user device of a user for display in a client application executing on the user device” and “receiving via the graphical user interface displayed at the user device, an adjustment to a position of each [element]…responsive to input received at the user device indicating a movement of at least one offer to a different position in the offer list displayed via the graphical user interface: at the user device,” “determining, based on the adjustment to the position of each offer in the offer list, a respective priority for each offer” and “selecting an immediate offer based on the respective priority of each offer” and, as such, cannot be considered advertising or marketing because actions relating to advertisements, sales, or marketing activities are not recited in the claims. The examiner strongly disagrees. First, the claims absolutely recite an advertising or marketing because they explicitly “set forth” advertising. The Merriam-Webster Online dictionary defines advertising as “the action of calling something to the attention of the public especially by paid announcements”. As such, the offer list of offers from the plurality of merchants is an advertisement, the immediate offer is an advertisement, and the quick response (QR) code for redeeming an offer is an advertisement. Second, the claims absolutely recite an advertising or marketing because they explicitly “describe” an advertising process comprising: gathering advertising data (a plurality of offers from merchants); analyzing the data and determining result (aggregating offers), generating tailored advertising content (generating an offer list comprising offers), transmitting the tailored advertising content (transmitting the offer list for display); gathering additional advertising data (receiving the user ordered list of offers based on positions); analyzing the additional advertising data and determining results (determining a respective priority for each offer of the plurality of offers and selecting an immediate offer), transmitting the advertisement (transmitting the immediate offer), gathering even more advertising data (receiving the user selection to redeem the immediate offer); transmitting an additional advertisement (transmitting the QR code for display and presentation); receiving yet more advertising data (receiving a notification that the immediate offer was redeemed); and analyzing advertising data, determining results, and generating tailored advertising content (generating the updated offer list), and transmitting the tailored advertising content (transmitting the updated offer list). Third, an analysis of a claim with regard to 101 under Step 2a, Prong 1 requires the examiner to separate the claim into the limitations of a claim that recite an abstract idea which falls within one of the enumerated categories and sub-categories and the limitations which are “additional elements” within the scope of the claimed invention. Under Step 2a, Prong 1, the examiner is only to determine which limitations of the claims recite the abstract idea. The additional elements” are not considered with regards to Step 2a, Prong 2 and/or Step 2b. As such, the computing system comprising: the one or more processors, the memory, and the database (i.e., accounts database) executing software (i.e., instructions); and the user interface with the functionality to displays a list, and allow the list to be resorted by a user is not considered under Step 2a, Prong 1. As such, the claims clearly recite the identifier abstract idea which falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely commercial or legal interactions because they recite advertising, marketing and sales activities or behaviors. Thus, the applicant’s arguments are not convincing and the rejections have been maintained.
The applicant argues that the claims overcome the 35 USC 101 rejection under Step 2a, Prong 2 because the claims recite the additional elements that integrate any purported abstract idea into a practical application, in particular the claimed technology provides a technical improvement to systems that provide graphical user interfaces. The examiner disagrees. “Additional elements” are defined as those elements of a claim which are not part of the abstract idea itself. Therefore, the only “additional elements” in the claim are the computing system comprising: the one or more processors, the memory, and the database (i.e., accounts database) executing software (i.e., instructions); and the user interface with the functionality to displays a list, and allow the list to be resorted by a user which is merely a general-purpose computer with generic computer components (i.e., the computing system comprising the one or more processors, the memory, and the database executing instructions), and a generic computer element (i.e. the graphical user interface with standard functionality). As such, when considered individually the claim merely require: applying the abstract idea using a general-purpose computer with generic computer components as a tool; and applying the abstract idea using a generic graphical user interface with standard functionality (e.g., a generic computer element) as a tool. When considered as a whole the claims amount to merely applying an abstract idea using a general-purpose computer with generic computer components and a generic computer element as a tool. All of which amount to merely applying the abstract idea using a general-purpose computer with generic computer components and/or a generic computer element as a tool(s), which is insufficient to transform an abstract idea into a practical application under Step 2a, Prong 2. In order for a technical improvement to transform an abstract idea into a practical application under Step 2a, Prong 2, the improvement must be rooted in the “additional elements” of a claim in a manner other than merely applying the abstract idea using the “additional elements” as a tool. The purported improvements associated with reducing user’s time wasted when compiling, searching, and sifting through offer, as well as, allowing users to indicate priorities is rooted are both rooted in the abstract idea itself which is merely applied using the “additional elements” as a tool. Improvements of this nature are improvements to an abstract idea which is an improvement in ineligible subject matter (see MPEP 2106.05(a) - “It is important to note, the judicial exception alone cannot provide the improvement”; and MPEP 2106.05(a)(II) - “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”; and the SAP v Investpic decision - 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.). Thus, the applicant’s arguments are not convincing and rejections have been maintained.
The applicant argues that the claims overcome the 35 USC 101 rejection under Step 2b because the steps of “providing a graphical user interface comprising the offer list to a user device of a user for display in a client application executing on the user device”, “receiving via the graphical user interface displayed at the user device, an adjustment to a position of each offer in the offer list responsive to an input received at the user device indicating a movement of at least one offer to a different position in the offer list displayed via the graphical user interface”, “determining, based on the adjustment to the position of each offer in the offer list, a respective priority of each offer of the plurality of offers”, and “selecting an immediate offer based on at least the respective priority of each offer of the plurality of offers” cannot be considered well-understood, routing, or conventional. The examiner disagrees. The applicant appears to be misconstruing Step 2b as described in MPEP 2106. The question under Step 2b is whether the “additional elements” within the scope of the claims, considered both individually and as a whole were well-understood routine and conventional, and if there is a specific arrangement of devices whether the portions of the abstract idea each “additional elements” is required to perform were well-understood routine and conventional. The analysis under Step 2b does not require that a determination of whether limitations that are part of the abstract idea itself where well-understood routine an conventional. First, the has provided proof that the computing system comprising: the one or more processors, the memory, and the database (i.e., accounts database) executing software (i.e., instructions) is merely a general-purpose computer with generic computer components that was well-understood, routine, and conventional before the effective filing date of the invention. Second, the examiner has provided proof that the graphical user interface with the functionality to displays a list, and allow the list to be resorted by a user was well-understood, routine, and conventional before the effective filing date of the invention. Third, considered individually the claim merely requires that the portions of the abstract idea associated with receiving a plurality of offer, aggregating offer, providing tailored content comprising an offer list, receiving an adjustment, determining a respective priority based on the adjustment, selecting an immediate annuity, transmitting the immediate annuity, receiving a user selection to redeem the immediate annuity, transmitting a quick response code, receiving a notification, generating and updated offer list, and transmitting the updated offer list be performed using a well-understood, routine, and conventional general-purpose computer as a tool, and that portions of the abstract idea related to displaying data, obtaining user input, and transmitting the user input be applied using a well-understood, routine, and conventional graphical user interface. Both of which are insufficient to be considered “significantly more” under Step 2b. Fourth, when considered as a whole, the claim merely require that the abstract idea be merely applied using a well-understood, routine, and conventional general-purpose computer and a well-understood, routine, and conventional graphical user interface as a tool which is also insufficient to be considered “significantly more” under Step 2b. Under Step 2b, in order to be considered “significantly more” than the abstract idea, any purported improvement obtained by practicing the claimed invention must be rooted in the “additional elements” of a claim in a manner other than simply using well-understood, routine, and conventional “additional elements” as tools to merely apply an abstract idea. As such the applicant’s arguments are not convincing and the rejections have been maintained.
The applicant argues that the claims as amended overcome the 35 USC 112(a) and points to the paragraphs 66-70 of the specification for support for this argument. The examiner disagrees. As detailed in the 35 USC 112(a) rejection above, paragraphs 66-70 support a single species of the claimed genus of invention where the user must log into the client application or mobile banking website portal and select a “View Rewards Offers” selection 602, before the applicant’s invention can provide the graphical user interface comprising the offer list; and where the transmitted QR code is for display and presentation n the client application. The single species disclosed in this section of the applicant’s specification does is not sufficient to prove, to one of ordinary skill in the art, that the applicant had possession of the broad genus present in the claims (see the 35 USC 112(a) rejections above for a more detailed explanation of the genus being claimed). As such, the applicant’s arguments are not convincing and the rejections have been maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Walsh et al. (2016/0148241): discloses allowing users to select coupons from a list for immediate use, wherein the QR code for the coupon is provided after the selection of the coupon.
Haver et al. (2014/0324627): discloses users with an offer watch list that provides notification to the users of offers that exist in their immediate proximity.
Abhishek et al., (“The Potential of Mobile Coupons: Current Status and Future Promise”, 2014, Indian Institutional Repository Working Papers http://vslir.iima.ac.in:8080/jspui/handle/11718/13309, pgs. 1-24): discloses the current and future of Mobile Coupons including immediate use location-based coupons with QR codes and there use in retail environments to increase sales and/or hijack sales from competitors.
Publicover et al. (WO2015/148693) that discloses receiving an adjustment to the priority of each offer in the updated prioritized offer list responsive to an input received at the user device indicating a movement of at least one offer to a different priority in the offer list displayed, wherein the priority adjustment indicates a user assigned respective priority for each offer of the plurality of offer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN W VAN BRAMER whose telephone number is (571)272-8198. The examiner can normally be reached Monday-Thursday 5:30 am - 4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Spar Ilana can be reached on 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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\/John Van Bramer/Primary Examiner, Art Unit 3622
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