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
The amendment filed on December 18, 2025 cancelled no claims. Claims 1-2, 8, 11-12, and 18 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 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 browser application executing on the user device, the corresponding merchant, and a provider computing system 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 offer 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 comprising the offer list to a user device of a user for display in a browser application executing on the user device;
receiving via the user device, an adjustment to a priority of each offer in the offer list responsive to input at the user device, the adjustment indicating an adjusted position of each offer in the offer list;
selecting an immediate offer based at least on the adjustment to the priority of each offer in the offer list;
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 a provider computing system.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely advertising, marketing or sales activities and 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, a database executing instructions (e.g., a general-purpose computer with generic computer components), wherein the computer generates a user interface that displays a list that is able to be re-sorted by a user (e.g., a generic computer component). The applicant’s specification discloses no technical details with regard to how such resorting is implemented in the generated user interface and provides no indication of technical problems that were overcome by allowing such resorting to occur. The examiner is aware of a number of user interfaces that allow users to resort lists that are displayed by using prepackaged features associated with programming languages and/or user interfaces such as drag and drop or sortable, As such, there does not appear to be technical improvement to a technical problem with regards to user interfaces that have been overcome which would be capable of transforming the abstract idea into a practical application.
The following limitations, if removed from the abstract idea and considered additional elements, merely perform generic computer function of processing, communicating (e.g., transmitting and receiving), and displaying:
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 offer 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 user device of a user for display in a browser application executing on the user device (transmitting data);
receiving via the graphical user interface displayed at the user device, an adjustment to a priority of each offer in the offer list responsive to input at the user device, the adjustment indicating an adjusted 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 a provider computing system (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 (e.g., a general-purpose computer with generic computer components), wherein the computer generates a user interface that displays a list that is able to be re-sorted by a user (e.g., a generic computer component) to perform the claimed functions amounts to no more than mere instructions to apply the exception using a general-purpose computer with generic computer components.
“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 computer (a computing system comprising one or more processors, a memory, a database executing instructions (e.g., a general-purpose computer with generic computer components) 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 are considered insignificant extra solution activity as they are directed to merely receiving, storing and/or transmitting data:
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 offer 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 user device of a user for display in a browser application executing on the user device (transmitting data);
receiving via the graphical user interface displayed at the user device, an adjustment to a priority of each offer in the offer list responsive to input at the user device, the adjustment indicating an adjusted 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 a provider computing system (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.
Independent claims 1 and 11 have been amended to recite “providing a graphical user interface comprising the offer list to a user device of a user for display in a browser application executing on the user device”; “transmitting the immediate offer 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”. The examiner has been unable to find support for these limitation in the applicant’s specification.
In regards to the limitation “providing a graphical user interface comprising the offer list to a user device of a user for display in a browser application executing on the user device”, the examiner can find no support for a “browser application” in the applicant’s disclosure. The term “browser” is not used in the applicant’s disclosure. The applicant asserts that support for this limitation can be found in paragraphs 67-68 of the applicant’s specification. However, the term “browser application” is not found in paragraphs 67-68. Paragraph 67 recites “The customer 106 first logs into the client application 148 or to a mobile banking website portal”. Neither the “client application” nor the “mobile banking website portal” inherently requires a browser application. The term browser application is broad enough to encompass an application that allows one to access a plurality of different websites. First, the recitation of the “client application 148 and/or the “mobile banking website portal” merely requires an application capable of accessing a single banking portal via a log-in process. Thus, it is clear the applicants disclose does not support “a browser application as currently claimed”. Second, even if the examiner were to concede, which he does not, that accessing a mobile banking website portal inherently did require a browser application, the claim limitation, as currently amended, does not have support in the applicant’s disclosure. Paragraphs 67-68 makes it clear that the only way in which the applicant’s invention can provide a graphical user interface to a user device of a user for display in an application executing on the user device is if the user has logged into the “client application” or the “mobile banking website portal”. Since, the claim does not require the user to perform a log-in function, the claimed “providing a graphical user interface comprising the offer list to a user device of a user for display in a” “application executing on the user device” is not supported by the applicant’s disclosure. Thus, it is clear, claims 1 and 11 have been amended to recite subject matter not supported by the applicant’s specification. The examiner suggests amending the limitation to recite: “providing a graphical user interface comprising the offer list to a user device of a user for display in a client application in response to the user logging into the client application”
In regards to the limitations “transmitting 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”. The applicant has removed the requirement that the immediate offer be display in the application executing on the user device. The examiner can find support for transmitting the immediate offer to the client device via a push notification, a text message, or an overlay (see paragraphs 50-51 and 67-70 of the applicant’s disclosure). However, the only support in the applicant’s disclosure for “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” is found in paragraphs 67-70 and figure 9, where a selection to redeem the offer requires the QR code to be displayed within the client application. There is no support in the applicant’s disclosure for displaying the QR code in a text message or push notification for the user to present to the merchant during payment to redeem the immediate offer. Thus, the applicant’s disclosure only supports transmitting a quick response (QR) code associated with the immediate offer for display by the user device in the client application and presentation during payment at the corresponding merchant to redeem the immediate offer. As such, it is clear that independent claims 1 and 11 have been amended to include subject matter not found in the applicant’s disclosure. The examiner suggests amending the limitations to recite: “transmitting, for display, the immediate offer as one of an overlay on the client application, a text notification or a push notification”; and “transmitting a quick response (QR) code associated with the immediate offer for display and presentation, by the user device in the client application, during payment at the corresponding merchant to redeem the immediate offer”.
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 offer 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 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 a provider computing system.
The examiner has also found prior art (see Publicover et al. – WO2015/148693) that discloses:
receiving an adjustment to the priority of each offer in the updated prioritized offer responsive to input at the user device, the adjustment indicating an adjusted position of each offer in the updated prioritized offer list.
However, the prior art of Foster 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 Foster, 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 December 10, 2025 have been fully considered but they are not persuasive.
The applicant’s arguments with regards to the Priority issue are not convincing. Paragraph 24 of the applicant’s specification supports the offer generation circuit of the offer vending computing system 114 providing the aggregated and filtered offers to the provider computing system 112. Based on the applicant’s disclosure offer vending computing system 114 is associated with one or more offer vendors and merely aggregates and filters offer before sending them to provider computing system 112. According to originally filed independent claims 1 and 11, the applicant’s invention is performed by a single computing system that receives a plurality of offers, aggregates the offers, generates an updated offer list comprising: providing a graphical user interface, receiving an adjustment to a priority of each offer responsive to input at the user device; selecting an immediate offer; transmitting the immediate offer; receiving a user selection to redeem the immediate offer; transmitting a QR code; receiving a notification indicating the immediate offer was redeemed; and transmitting the updated offer list to a provider computing system. There is no support in the applicant’s specification for offer vending computing system 114 being able to generate an updated offer list by: providing a graphical user interface, receiving an adjustment to a priority of each offer responsive to input at the user device; selecting an immediate offer; transmitting the immediate offer; receiving a user selection to redeem the immediate offer; transmitting a QR code; and receiving a notification indicating the immediate offer was redeemed. According to the applicant’s disclosure it is provider computing system 112 that performs the steps of generate an updated offer list by: providing a graphical user interface, receiving an adjustment to a priority of each offer responsive to input at the user device; selecting an immediate offer; transmitting the immediate offer; receiving a user selection to redeem the immediate offer; transmitting a QR code; and receiving a notification indicating the immediate offer was redeemed. Provider computing system 112 has a provider offer aggregation circuit 172 which receive the pre-aggregated offers from the offer vendor computing system 114 and/or from merchants 108 and complete a final aggregation and targeting filter for the offer data. Thus, provider computing system 112 is also able to perform the claimed steps of receiving of a plurality of offers and aggregating the offers. However, there is no support in the applicant’s disclosure for provider computing system 112 transmitting the updated offer list to a provider computing system. Thus, originally filed claims 1 and 11 must be recited steps being performed by provider computing system 112. As such, it is immaterial whether offer vending computing system 114 can transmit aggregated and filtered offers to provider computing system 112. The question is whether there is support in the disclosure of Application No. 16/259,386 and/or Application No. 17/958,704 for provider computing system 112 transmitting the updated offer list to a provider computer system. Neither the specification of the instant application nor the disclosure of Application No. 16/259,386 and/or Application No. 17/958,704 have support for the provider computing system 112 transmitting the updated offer list to a provider computer system recited in originally filed claims 1 and 11 of the instant application. Since the originally filed claims of the instant application are part of the disclosure of the instant application, the limitation requiring the provider computing system 112 transmitting the updated offer list to a provider computer system is new matter introduced with the filing of the present disclosure that is not supported by the prior applications. As such, the only way in which the instant applicant can obtain priority to previous applications is to change the instant application to a Continuation-in-Part and ensure that the subject matter newly introduced during the filing of the instant application is not included in the claims of the instant application. Given that the instant application has yet to be changed to a Continuation-in-Part, the instant application is not entitled to a priority date earlier than that filing date of the instant application.
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 rejection has 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 browser application executing on the user device” and “receiving via the graphical user interface displayed on the user device, an adjustment to a priority of each [element]…responsive to input at the user device,” where “ the adjustment indicat[es] an adjustment of each [element]” on the graphical user interface, and that such approaches cannot be considered advertising, sales, or marketing activities are not recited in the claims. The examiner strongly disagrees. First, the Merriam-Webster Online dictionary defines advertising as “the action of calling something to the attention of the public especially by paid announcements”. Since, the claim requires making the user aware of offers from merchants in the form of an offer list, allows the user to prioritize the offers, makes the user aware of an immediate offer, receives an indication of the users redeem the immediate offer, and makes the user aware of a QR code they can use during payment to redeem the offer, every step of the claim is clearly advertising. Second, the additional element of the graphical user interface programmed to allow a user to rearrange a list has no bearing with regards to whether a claim recites an abstract idea under Step 2a, Prong 1. Such “additional elements” are only analyzed under Step 2a, Prong 2 and Step 2b. Finally, the user device and the browser application executing on the user device are outside the scope of the applicant’s invention. The computer performing the applicant’s invention merely transmits data to and received data from said user device and/or browser application. As such, the user device and browser application are indeed part of the abstract idea itself because they cannot be considered “additional elements” of the applicant’s Thus, it is clear that the claims have been properly rejected under Step 2a, Prong 1 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 of “providing a graphical user interface comprising the offer list to a user device of a user for display in a browser application executing on the user device” and “receiving via the graphical user interface displayed on the user device, an adjustment to a priority of each offer in the offer list responsive to input at the user device”, where “the adjustment indicates an adjusted position of each offer in the offer list” which is a technical improvement to systems that provide graphical user interfaces because the system can generate a updated offer list based on adjustments to offers in an offer list that corresponds to selected adjustments to positions of those offers in the offer list, as presented via the graphical user interface”. The examiner disagrees. The applicant appears to be mixing in limitations of the abstract idea itself with what they are calling “additional elements” of the claims. Under Step 2a, Prong 2, a determination must be made as to whether the “additional elements” of the claim recite a technical improvement that transforms the abstract idea into a practical application. “Additional elements” are defined as those elements outside the identified abstract idea itself. Therefore, the only “additional elements” in the claim are a computing system comprising one or more processors, a memory, a database executing instructions (e.g., a general-purpose computer with generic computer components), wherein the computer generates a user interface that displays a list that is able to be re-sorted by a user (e.g., a generic computer component). Since one could send the user an email with a list of offers and ask the user to type in numbers next to each item on the list and return the email, the content of the list, what they represent, and the receipt of a prioritized list from the user are not technical elements of the invention, they are part of the abstract idea itself. In regards to the “additional element” of a user interface that displays a list that is able to be re-sorted by a user, there is no indication in the applicant’s specification that they invented such an interface, no indication of technical issue encountered when inventing such an interface, nor solutions to such problems the applicant invented when inventing such a user interface. In fact, the examiner has provided proof that such interfaces were generic interface functionality before the effective filing date of the invention. As such, a computer generating such a user interface that displays a list that is able to be re-sorted by a user is a generic computer component, and not a technical improvement. Thus, the claims merely apply the abstract idea using a general-purpose computer with generic computer components which is insufficient to transform an abstract idea into a practical application under Step 2a, Prong 2. Any purported improvement obtained by the specific information represented by the list, the received prioritized list and what the applicant’s invention does with such a list is an improvement to the abstract idea itself which is an improvement in ineligible 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.). As such, the claims are properly rejected under Step 2a, Prong 2 and the 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 browser application executing on the user device” and “receiving via the graphical user interface displayed on the user device, an adjustment to a priority of each offer in the offer list responsive to input at the user device”, where “the adjustment indicates an adjusted position of each offer in the offer list” and “selecting an immediate offer based at least on the adjustment to the priority of each offer in the offer list” cannot be considered well-understood, routine and conventional and, as such, the claims recited significantly more than any purported abstract idea. The examiner disagrees. The consideration under Step 2b is whether the “additional elements” of the claim recite “significantly more” than the abstract idea. As indicated above, “additional elements” are defined as those elements outside the abstract idea itself. Whether the abstract idea recites steps that are well-understood, routine, or conventional are not a consideration under Step 2b. The only “additional elements” in the claim are a computing system comprising one or more processors, a memory, a database executing instructions (e.g., a general-purpose computer with generic computer components), wherein the computer generates a user interface that displays a list that is able to be re-sorted by a user (e.g., a generic computer component). The examiner has provided proof that these additional elements were well-understood, routine, and conventional before the effective filing date of the invention. The claims merely require performing the abstract idea using well-understood, routine, and conventional “additional elements” as a tool which is insufficient to be considered significantly more under Step 2b. Thus, the rejections have been maintained.
The applicant’s argument with regards to the 35 USC 112(b) rejections are moot as the amendment has overcome the 35 USC 112(b) rejection raised in the Office Action dated September 18, 2025. Thus, the rejections have been withdrawn. The examiner notes however that the claim amendment has introduced a new 35 USC 112(a) rejection.
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.
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 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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/John Van Bramer/Primary Examiner, Art Unit 3622