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 .
Claim Interpretation
The claim terms identified below have been given the following interpretations:
Automated teller machine (ATM): a computerized electronic machine that performs basic banking functions such as handling check deposits and issuing cash withdrawals (The applicant’s specification does not define the term ATM and as such the examiner has relied upon the Merriam-Webster online dictionary for the plain meaning of the term which is: a computerized electronic machine that performs basic banking functions (such as handling check deposits and issuing cash withdrawals). Should the applicant intend a broader interpretation of the term ATM, then the applicant needs to provide the examiner with support in the applicant’s disclosure which supports the claim ATM being something other than a special purpose computer that performs basic banking functions such as handling check deposits and issuing cash withdrawals. The examiner cautions the applicant that any interpretation of an ATM being a general-purpose computer would result in the claims being rejected under 35 USC 101 as reciting an abstract idea that is merely applied using a general purpose.)
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. However, the 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. 148/235,302; and Application No. 16/148,739) fail 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 of the prior-filed application. A continuation 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:
Claims 1, 8 and 15 of the instant application recites “an automated teller machine (ATM)” performing the claimed steps “upon determining” “that a mobile device is within a threshold proximity of the ATM”. The examiner cannot find support for this limitation in the disclosure of Application No. 18/235,302 or the disclosure of Application No. 16/148,739. The closest disclosure of the ATM determining a threshold distance is found in paragraph 45-46 of Application No. 18/235,302 and paragraphs 44-45 of Application No. 16/148,739. However, these paragraphs merely support the ATM determining that the mobile device is in proximity to the ATM or determining that the mobile device is within a certain proximity of the ATM. However, based on these paragraphs the determination is not made based on threshold proximity, but based on the fact that the ATM is within a signal range of a short-range communication device, such as a near-field communication ("NFC") or radio frequency identification ("RFID") device. NFC has a maximum range of about 4 inches. The range of an RFID device is dependent on the type of RFID (i.e., low frequency RFID having a range of less than 4 inches and Active RFID having a range up to 328 feet) but the maximum range is approximately 328 feet. Thus, the certain proximity is based on the ability to receive the signal, and not based on a proximity threshold the ATM determines the mobile device to be within. While paragraph 45-46 of Application No. 18/235,302 and paragraphs 44-45 of Application No. 16/148,739 do disclose that location information can be provided to the ATM by an application executing on the mobile device (i.e., a short-range communication device in the mobile device) and determining that the mobile device is within a certain proximity of the ATM, the only example of such an interaction is when the application executing on the mobile device (i.e., short- range communication device in the mobile device) determines the mobile device is within a certain distance (e.g., threshold proximity) of the ATM, and transmit information to the ATM based on this determination. As such, the disclosures of Application No. 18/235,302 and Application No. 16/148,739 cannot be said to support the ATM determining a mobile device of a customer is within a threshold proximity of the ATM or upon determining that a mobile device of a customer is within a threshold proximity of the ATM, because there is no disclosure of the ATM using a “threshold” of any type, much less a “threshold proximity” to determine that mobile device is proximate to the ATM or within a certain proximity of the ATM. At best the disclosures of Application No. 18/235,302 and Application No. 16/148,739 support determine that a mobile device of a customer is proximate the ATM, and upon determining that the mobile device of the customer is proximate the ATM. As such, it is clear that the disclosure of the instant application introduces subject matter that is not support in the disclosures of Application No. 18/235,302 and Application No. 16/148,739, when it introduces the limitation requiring the claimed steps to be performed by the ATM upon the ATM “determining that a mobile device of a customer is within a threshold proximity of the ATM” in the originally filed claims (Examiner note: the originally filed claims are part of the disclosure of the instant application. See MPEP 2163(I)(B)).
Furthermore, the examiner cannot find support for “generate a push notification indicating that the customer is near the ATM where the customer can redeem the at least a portion of the real-time rewards balance that is expiring and an interactive user interface element configured to be interacted with by the customer on the mobile device to view a location of the ATM” in the disclosures of Application No. 18/235,302 or the disclosure of Application No. 16/148,739. Figure 9 and paragraphs 44 and 67-68 of Application No. 16/148,739, as well as figure 9 and paragraphs 45 and 68-69 of Application No. 18/235,302 support generating a push notification indicating that the customer is near the ATM where the customer can redeem the at least a portion of the real-time rewards balance that is expiring and a button configured to be interacted with by the customer on the mobile device to view a location of the ATM limitation”. However, neither the disclosure of Application No. 18/235,302 nor the disclosure of Application No. 16/148,739 can be said to support a post notification that includes “an interactive user interface element”. While a button is species of “interactive user interface element”, there are not a sufficient number of different species of interactive user interface elements in the disclosures of Application No. 18/235,302 or Application No. 16/148,739 to prove that the applicant had possession of the genus of any user interface element (see 112(a) written description rejection below). As such, the disclosures of Application No. 18/235,302 and Application No. 16/148,739 can only be said to support a post notification that includes a button. As such, it is clear that the disclosure of the instant application introduces subject matter that is not support in the disclosures of Application No. 18/235,302 and Application No. 16/148,739, when it introduces the limitation requiring the post notification to include “an interactive user interface element” in the originally filed claims (Examiner note: the originally filed claims are part of the disclosure of the instant application. See MPEP 2163(I)(B))
Please note that neither cancelling claims 1, 8, and/or 15, nor amending claims 1, 8, and/or 15 can correct this issue. The instant application must be changed to a continuation-in-part of Application No. 18/235,302. 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 or amending 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. 18/235,302 and is currently not a Continuation-in-part of Application No. 18/235,302, the priority date for the instant application is it filing date of October 02, 2024.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,776,000. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of the instant applicant merely remove limitations, broaden limitations and/or recite obvious variants of claims 1-17 in U.S. Patent No. 11,776,000.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,118,579. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of the instant applicant merely remove limitations, broaden limitations and/or recite obvious variants of claims 1-20 in U.S. Patent No. 12,118,579.
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, ¶ 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.
Originally filed independent claims 1, 8, and 15 recite generating a push notification including “an interactive user interface element configured to be interacted with by the customer on the mobile device to view a location of the ATM”. Generating a push notification that includes an interactive user interface is functional language that requires the specification to sufficiently identify how the invention achieves the claimed function. The examiner has been unable to find support for the claimed genus of generating a push notification that includes “an interactive user interface element” in the applicant’s disclosure. However, the examiner has found support of a specific species of interactive user interface element included in push notification, in figure 9 and paragraphs 45 and 68-69 of the applicant’s disclosure, where it discloses a push notification that includes a “button” that can be pressed to see the ATM location.
The test for sufficiency, under the first paragraph of 35 USC 112(a) written description, 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. In order to find support for the claimed genus of “an interactive user interface element”, the applicant’s disclosure would need to have support for enough species of interactive user interface elements included in generated push notification to reasonably convey to one skilled in the art that the applicant has possession of the genus. The specification does not describe in sufficient detail the process for generating push notification such that one of ordinary skill in the art could determine that the applicant had possession of the genus of generating a push notification that include “an interactive user interface element”. The only support for generating a push notification in the applicant’s specification is found in figure 9 and paragraphs 45 and 68-69. These paragraphs disclose a species of the claimed genus where generating a push notification includes a button that can be pressed by the customer to see the ATM location and/or other buttons that can be pressed to perform other actions. No where in the applicant’s disclosure is another species of interactive user interface element disclosed in relation to a push notification. In fact, the only other mentions of species of interactive user interface elements in applicant’s disclosure is figures 4-8 and paragraphs 59-67 where the applicant describe the screens of the ATM that displayed to a user when the user interacts directly with the ATM. In figures 4-8 and paragraphs 59-67 primarily consist of a single species of interactive user interface element, namely a button. The only other possible interactive user interface element of the ATM screen must be inferred from paragraph 66, which discloses that rewards total 502 includes the ability for the customer to scroll to view the additional information for those rewards accounts. Thus, even to menu screens of the ATM are only disclosed as having buttons or enabling scrolling which are two species of the most basic types of interactive user interface elements, and the scrolling species is used for the function of viewing additional information within a screen. As such, the only species of an interactive user interface element in the applicant’s disclosure that can be used to view a location of the ATM is a button.
While, the disclosure of a button included in the push notification may be sufficient species to prove the applicant had possession of the most basic types of interactive user interface elements that can be programmed to operate in the same manner as a button, because computer-implemented inventions are often disclosed and claimed in terms of their functionality 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. This is not true for some more sophisticated types of interactive user interface elements such as interactive maps, live video feeds, interactive directions using 360-degree media and/or AR overlays, interactive infographics, interactive timelines, data visualization such as heatmaps, gamified dashboards, minigames, etc. Many of these more sophisticated user interface elements could be used to view a location of an object, but the disclosure of a species of a “button”, is not sufficient to convey to one skilled in the relevant art that the inventor or a joint inventor had possession of these types of interactive user interface elements at the time the application was filed.
As such, there are not a sufficient number of species to support the genus of generating “a push notification…and an interactive user interface element configured to be interacted with by the customer on the mobile device to view a location of the ATM”. MPEP 2106.01 requires that 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. In the instant case, the applicant’s specification fails to sufficient species to support the claimed genus of “an interactive user interface element”. Without additional examples of specific species the applicant cannot show that he has invented the claimed genus of “an interactive user interface element configured to be interacted with by the customer on the mobile device to view a location of the ATM”. 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, ¶ 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, ¶ 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 a genus claim and described in functional language, but the specification does not provide sufficient species to prove the applicant has support for the genus of “a push notification…and an interactive user interface element configured to be interacted with by the customer on the mobile device to view a location of the ATM”. There are no algorithms that describe the generating of the post notification that includes an interactive user interface element configured to be interacted with by the customer on the mobile device to view a location of the ATM. There are no flow charts that describe the generating of the post notification that includes an interactive user interface element configured to be interacted with by the customer on the mobile device to view a location of the ATM. Hence, it is clear that claims 1, 8, and 1 fail to satisfy the written description requirement. An adequate written description of a claimed genus requires more than the generic statement of the inventions boundaries as presented in the applicant’s original claims.
Dependent claims 2-7, 9-14 and 16-20 fail to correct the deficiencies of the claims from which they depend and, as such, are rejected by virtue of dependency.
For the purpose of prosecuting the claims the examiner is going to interpret claims 1, 8, and 15 as if they recited “generate a push notification comprising: an indication that the customer is near the ATM where the customer can redeem the at least a portion of the real-time rewards balance that is expiring, and button configured to be pressed by the customer on the mobile device to view a location of the ATM system”; “generating, by the ATM, a push notification comprising: an indication that the customer is near the ATM where the customer can redeem the at least a portion of the real-time rewards balance that is expiring, and button configured to be pressed by the customer on the mobile device to view a location of the ATM”; and “generate a push notification comprising: an indication that the customer is near the ATM where the customer can redeem the at least a portion of the real-time rewards balance that is expiring, and a button configured to be pressed by the customer on the mobile device to view a location of the ATM”, respectively.
Claim Rejections - 35 USC § 101
Claims 1-20 have not been rejected under 35 USC 101. While the claims recite an abstract idea under Step 2a, Prong 1 because they are directed to “Certain Methods of Organizing Human Activity” namely commercial or legal interactions because they recite advertising, marketing or sales activities or behaviors, the claims transform the abstract idea into a practical application under Step 2a, Prong 2. The applicant’s specification does not define the term ATM and as such the examiner has relied upon the Merriam-Webster online dictionary for the plain meaning of the term which is: a computerized electronic machine that performs basic banking functions (such as handling check deposits and issuing cash withdrawals). Thus, the ATM cannot be considered a general-purpose computer as it must be able to perform basic banking functions such as handling check deposits or issuing cash withdrawals. As such, the ATM is a special purpose computer with special purpose components such as slots for accepting checks inserted for deposit, bins for storing said checks once inserted into said slots, bins for storing cash, and a mechanism for dispensing said cash when withdraws are requested. The examiner has determined that such ATMs performing the functions of determining a mobile device of a customer is within a threshold proximity of the ATM (inherently required to be performed based on the “upon determining” step), receiving a rewards balance associated with the customer, determining that a portion of the rewards are expiring within a certain amount of time, and generating and a push notification that includes: an indication that the customer is near the ATM where the customer can redeem the at least a portion of the rewards that are expiring, and a button that can be pressed by the customer to view a location of the ATM; and transmitting the push notification to the mobile device of the customer is an improved ATM that operates in a manner different from traditional ATMs that transforms the abstract idea into practical application under Step 2a, Prong 2 and/or is considered ‘significantly more” than the abstract idea under Step 2b.
Possible Allowable Subject Matter
Claims 1-20 would be allowed, if the applicant were to be able to overcome the Priority issues, the Double Patenting rejections, and the 35 USC 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 Arumugam: US Patent 10,445,711 in at least column 4, lines 26-53 and column 7, lines 26-52) that disclose an automated teller machine (ATM), method executed by an ATM for generating a notification for a customer, and one or more non-transitory computer-readable storage media executing on an ATM comprising:
a processing circuit comprising a processor and a memory, the memory structured to store instructions that are executable by the processor and cause the processing circuit to:
determine that a mobile device of a customer is within a threshold proximity of the ATM;
upon determining that the mobile device of the customer is within a threshold proximity of the ATM:
retrieve a real-time account balance of an account associated with a customer
retrieve a real-time message associated with the customer;
generate a push notification to be displayed on the mobile device of the customer, the push notification comprising: an indication that the customer is near the ATM, and a button configured to be pressed by the customer on the mobile device to connect to the ATM; and
transmit the push notification to the mobile device of the customer.
The examiner has also found prior art (see Lambert et al.: US Patent 10,242,382 in at least column 5, lines 15-24; column 8, lines 28-56; column 9, lines 10-27; column 9, line 63 through column 10, line 4) that discloses:
retrieving a real-time rewards balance of a rewards account associated with a customer;
determining that at least a portion of the real-time rewards balance is expiring within a certain amount of time;
generating a notification based on the at least a portion of the real-time rewards balance is expiring within the certain amount of time; and
transmitting the notification to the mobile device of a customer.
The examiner has also found prior art (see Arora et al.: PGPUB: 2017/0178462 in at least paragraph 44) that discloses:
an ATM machine where the customer can redeem the at least a portion of the real-time rewards balance that is expiring.
The examiner has also found prior art (see Vltavsky: US Patent 9,380,421 in at least column 3, lines 31-46 and column 8, line 47 through column 9, line 13) which discloses:
a button configured to be pressed by the customer on the mobile device to view a location of the ATM
Thus, it is clear that each and every limitation claimed is present in the prior art. However, the examiner has determined that it would not have been obvious to one of ordinary skill in the art to combine these four different references to arrive at the claimed invention without the use of the applicant’s claims as a roadmap and, thereby, using impermissible hindsight. As such, claims 1-20 would be allowable over the prior art if the applicant were to be able to overcome the Priority issues, the Double Patenting rejections, and the 35 USC 112(a) rejections above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ameiss et al. (CA2736215) which discloses a reward system that retrieves real-time rewards balances of customers, determines that a portion of the rewards are expiring within a certain amount of time, generates a notification based on the determination, and transmits a notification to a mobile device of a customer.
Taylor et al. (US 8,408,455) which discloses an ATM machine that allows customers to access rewards accounts and perform actions on the rewards account including balance inquiries, withdrawals, redemptions, and transfers.
Iqbal et al. (PGPUB: 2015/0287018) which discloses an ATM for loyalty and financial accounts requiring one or more authentication factor that detects a mobile device when it is in proximity to the ATM.
Francis et al. (PGPUB: 2014/0074569) which discloses a loyalty/rewards program that receives an indication that the customer has entered a predefined merchant location and transmits a notification to the mobile device of the customer, wherein the notification is determined based on consumer use, preferences, and/or behavior, and the notification can include an earned reward, a reward threshold, or an expiring reward.
Samuely (Citibank commits to beacons after merchants give the technology thumbs-up, 2017, https://www.retaildive.com/ex/mobilecommercedaily/citibank-commits-to-beacons-after-merchants-give-the-technology-a-thumbs-up, pgs. 1-7) which discloses determining that a mobile device is within proximity of an ATM and providing a notification to he mobile device based on the determination; and card-free ATM machines that allow the user to interact with the ATM using their mobile devices to withdraw funds and complete other financial transactions.
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