Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
This communication is in response to the Request for Continued Examination for filed on 08/04/2026 for the application No. 18/911,098. Claims 1-34 are currently pending and have been examined. Claims 1-34 have been rejected as follow,
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/04/2026 has been entered.
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- 34 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 1-34 are not compliant with 101, according with the last “2019 Revised Patent Subject Matter Eligibility Guidance” (2019 PEG), published in the MPEP 2103 through 2106.07(c). The claims have been amended and Examiner’s analysis is presented below in all the claims.
Claim 1: Step 1 of 2019 PGE, does the claim fall within a Statutory Category? Yes. The claim recites a method.
Step 2A - Prong 1: Is a Judicial Exception recited in the claim? Yes. The claim recites the limitations of “b) in response to the request, determining, …, whether the user has signed in or signed up via the-at least one modal ….wherein the at least one modal is used by the user to sign in or sign up; c) in response to determining that the user has signed in or signed up via the at least one modal, f) employing, [a model]… to predict a subset of a plurality of offers associated with products or brands to be sent to the user based on user attributes of the user, wherein the [model] to score the plurality of offers based on the user attributes of the user, and predict the subset of the plurality of offers based on scores of the plurality of offers; h) auto refreshing, … one or more of the subset of the plurality of offers …. with one or more new offers based on one or more offer criteria”.
The “determining, employing, auto refreshing” limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitations as certain methods of organizing human activity, advertising, marketing or sales activities or behaviors. The method for providing access to digital content. Thus, the claim recites an abstract idea.
Step 2A - Prong 2: Integrated into a Practical Application? No. The claim recites additional limitations, such as,
“ receiving, … a request to access digital content; in response to determining that the user has signed in or signed up, providing the user access to the digital content for a specific time period; providing, … access to the digital content for a specific time period; d) providing, …, the user access ….; g) sending, …, the subset of the plurality of offers to the user, wherein the subset of the plurality of offers is stored…”.
These are limitations toward accessing or receiving or storing data (gathering data).
The Examiner analyses other supplementary elements in the claim in view of the instant disclosure: “by a server system from a user device of a user”; “displayed on the user device”; to a digital wallet on the user device of the user; by the server system, a machine learning (ML) model ; the ML model is trained ; stored in the digital wallet and accessible by the user in the digital wallet; “ The limitations comprise generic recited computer elements, software and data elements.
The use of “a digital wallet on the user device ; by the server system, a machine learning (ML) model ; the ML model is trained “, it is software. The Examiner looked in the specification the improvement
“ Referring to FIGS. 22A and 22B, user demographics, wallet history, user usage history (e.g., emails, product apps or websites), user interests history of publications, articles, product, product categories, etc. can be stored as user attributes 2210. User attributes 2210 may be enhanced with third party data from other websites, services, etc.”, paragraph 69. “…feedback loop 2260 may serve as a supervisory process with appropriate checks to improve the overall personalization of the offers presented to user 105 by presenting offers that can generate a positive attribution to the user. …In one instance, this involves improving various algorithms used (ML or other) by recording user 105's interactions with AADS wallet, feeding back the data to improve brand offer score.”, paragraph 71. “ Referring to FIG. 22B, in an embodiment, user personalization system 190 may use artificial intelligence (AI), such as machine learning (ML), to improve offers presented to user 105 with the goal that offer presented to user 105 have a positive attribution. …”, paragraph 72. Improvement of data or result is not sufficient to integrate the abstract idea because it merely reflects the use of conventional technology and amounts to only generally linking the use of an abstract idea to a particular technological environment. MPEP 2106.05(h).
The use of “by a server system from a user device of a user”; stored in the digital wallet and accessible by the user in the digital wallet; “ ; when the claim invokes computers or other machinery merely as a tool to perform a process. The use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea does not integrate a judicial exception into a practical application or provide significantly more. The combination of these additional elements can also be considered no more than mere instructions “to apply” the exception, See MPEP 2106.05(f).
Also the additional elements:
“ receiving, … a request to access digital content; in response to determining that the user has signed in or signed up, providing the user access to the digital content for a specific time period; providing, … access to the digital content for a specific time period; d) providing, …, the user access ….; g) sending, …, the subset of the plurality of offers to the user, wherein the subset of the plurality of offers is stored…”. These are limitations toward accessing or receiving data. It is merely gathering data can be considered pre-solution and post-solution activity. The Examiner gives the broadest reasonable interpretation to the above elements. They are insignificant extra-solution activity. See MPEP 2106.05(g).
Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claim as a whole does not integrate the method of organizing human activity into a practical application. Thus, the claim is ineligible because is directed to the recited judicial exception (abstract idea).
Step 2B : claim provides an inventive concept? No.
As discussed with respect to Step 2A Prong Two, the additional elements in the claim,
“by a server system from a user device of a user”; “displayed on the user device”; to a digital wallet on the user device of the user; by the server system, a machine learning (ML) model ; the ML model is trained ; stored in the digital wallet and accessible by the user in the digital wallet; “ amount to no more than mere instructions to apply the exception. i.e., mere instructions to apply an exception using generic hardware and software cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Under the 2019 PEG, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B.
Here, the limitations:
“ receiving, … a request to access digital content; in response to determining that the user has signed in or signed up, providing the user access to the digital content for a specific time period; providing, … access to the digital content for a specific time period; d) providing, …, the user access ….; g) sending, …, the subset of the plurality of offers to the user, wherein the subset of the plurality of offers is stored…”, were considered to be extra-solution activity in Step 2A, and thus it is re-evaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field.
Again the limitations
“ receiving, … a request to access digital content; in response to determining that the user has signed in or signed up, providing the user access to the digital content for a specific time period; providing, … access to the digital content for a specific time period; d) providing, …, the user access ….; g) sending, …, the subset of the plurality of offers to the user, wherein the subset of the plurality of offers is stored…”.
These are limitations toward accessing or receiving or storing data (gathering data). Accessing or transmitting data is very well understood, routine and conventional computer task activity; It represents insignificant extra solution activity. Mere data-gathering step[s] cannot make an otherwise nonstaturory claim statutory In re Grams,888 F.2d 835, 840 (Fed. Cir. 1989) (quoting In re Meyer, 688 F.2d 789, 794 (CCPA 1982)).
Further, the instant specification does not provide any indication that the elements
“by a server system from a user device of a user”; “displayed on the user device”; to a digital wallet on the user device of the user; by the server system, a machine learning (ML) model ; the ML model is trained ; stored in the digital wallet and accessible by the user in the digital wallet; “ were are anything other than generic software and hardware, and the OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); and v. Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; court decisions cited in MPEP 2106.05(d)(II) indicate that merely computer receives and sends information over a network and presenting or displaying information, is a well‐understood, routine, conventional function when it is claimed in a merely generic manner (as it is here).
Accordingly, a conclusion that the “by a server system from a user device of a user”; “displayed on the user device”; to a digital wallet on the user device of the user; by the server system, a machine learning (ML) model ; the ML model is trained ; stored in the digital wallet and accessible by the user in the digital wallet; “ limitations (pointed above) are well-understood, routine, conventional activity is supported under Berkheimer Option 2. The claim is ineligible.
Additionally, the Examiner notes that generic elements such as “modal, a digital wallet and a machine learning model” as claimed here, are well-understood, routine, conventional elements and activity. All the elements in the instant claim are fully supported under Berkheimer Option 2.
Claim 18: Step 1 of 2019 PGE, does the claim fall within a Statutory Category? Yes. The claim recites a data processing system.
Step 2A - Prong 1: Is a Judicial Exception recited in the claim ? Yes. Because the same reasons pointed above.
Step 2A - Prong 2: Integrated into a Practical Application? No. Because the same reasons pointed above.
Step 2B : claim provides an inventive concept? No. Because the same reasons pointed above. The claim is ineligible.
Dependent claims 2-17, 19-34, the claims recite elements such as “ computing a payment amount based on at least one of: the at least one modal or the one or more offers about the one or more products or brands”, etc. These elements do not integrate the system of organizing human activity into a practical application. The claims are ineligible.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-34 are rejected under 35 U.S.C. 103 as being unpatentable over US PG. Pub. No. 20180349485 (Carlisle) in view of US PG. Pub. No. 20130346302 (Purves).
As to claims 1 and 18, Carlisle discloses a computer-implemented method of providing access to digital content (Fig. 1 and associated disclosure), the method comprising:
a) receiving, by a server system from a user device of a user, a request to access digital content;
(“…Platform 110 transmits or serves these user interfaces in response to requests from user system(s) 130. …”, paragraph 30 and Fig. 1.
“…The user may then interact with the search results in a manner similar or identical to the interactions described herein. In a similar manner, the user may be able to access a multi-screen view 328 and/or a multi-modal view 336, generate broadcast messages, receive alerts 344 or other notifications, utilize a content feed 350, and/or access or utilize any of the other functions described herein via native screens of the operating system on user system 130”, paragraph 40);
b) in response to the request, determining, by the server system, whether the user has signed in or signed up via the-at least one modal displayed on the user device, wherein the at least one modal is used by the user to sign in or sign up;
(“[0070] In an embodiment, when a user starts up the application (e.g., client application 132), the application may initially display a set of one or more home screens. Alternatively, if the application requires authentication, the application may initially display a log-in screen, which prompts the user to authenticate by inputting credentials (e.g., username and password) and/or biometric information (e.g., via a fingerprint sensor on user system 130 for matching the user's fingerprint to a stored reference fingerprint, via a camera on user system 130 for matching the user's facial features to stored reference facial features, etc.), and/or by any other existing or future authentication process. Once the authentication process is complete, the application may then generate and/or display the home screen(s)”, paragraph 70 and Fig. 1);
c) in response to determining that the user has signed in or signed up via the at least one modal,
(…Once the authentication process is complete, the application may then generate and/or display the home screen(s)”, paragraph 70 and Fig. 1),
providing, by the server system, the user device access to the digital content for a specific time period;
(“[0193] Screen 340E of the illustrated embodiment of the broadcast wizard prompts the user to specify a timing at which the broadcast message should be sent. For example, screen 340E may comprise a list with options for specifying a delay (e.g., no delay, twenty-four hours, three days, seven days, thirty days, ninety days, one-hundred-twenty days, etc.), from the time that the broadcast message is submitted, until the broadcast message is sent. If no delay is specified, the application may send the broadcast message to the recipients as soon as possible after the broadcast message has been submitted by the user. Otherwise, if a delay is specified, the application will wait until the delay period expires…”, paragraph 193 and Fig. 3L.
Further, Carlisle teaches in multiple instances, “[0194] Alternatively, screen 340E of the illustrated embodiment of the broadcast wizard prompts the user to specify a timing by which responses to the broadcast message need to be received [Examiner interprets as providing to the user device access …for a specific time period]. For example, screen 340E may comprise a list with options for specifying a time period (e.g., twenty-four hours, three days, seven days, thirty days, ninety days, one-hundred-twenty days, etc.), from the time that the broadcast message is submitted, by which any response to the broadcast message need to be received [Examiner interprets as providing to the user device access …for a specific time period]. ….”, paragraph 194.
“…if the user responds by indicating that the functional result was useful, the application may not adjust its artificial-intelligence algorithm for the user or may adjust its artificial-intelligence algorithm to reinforce a same or similar functional result in the future. The application may prompt the user for such feedback for as long as the user utilizes the application or for a set period of time [Examiner interprets as the user device access to the digital content]….”, paragraph 338.
“…The received information may comprise criteria for determining a target of the broadcast message, the content of the broadcast message, a timing of the broadcast message, and/or a deadline time at which responses to the broadcast message must be received (e.g., specified number of minutes, hours, days, or other time period, from submission of the broadcast message, after which no more responses will be received or considered, specified date and/or time, specified date and/or time range during which all responses must be received[Examiner interprets as providing to the user device access …for a specific time period], etc.)…”, paragraph 353);
d) providing, by the server system, the user access to a digital wallet on the user device of the user;
(Carlisle teaches that his system receive offers from offerors or advertisers and send offers to user that request a service or product, “… enables companies to provide targeted, personalized, and/or real-time advertising to users and/or initiate real-time interactions with users, simultaneously across multiple online platforms …”, paragraph 336.
“… In an embodiment, platform 110 acts as a clearinghouse that collects requests and offers submitted from any number and variety of user systems 130 (e.g., via the application), operated by any types of users (e.g., personal, business, etc.), at any time and over any time period….”, paragraph 382. “[0383] In step 746, platform 110 matches requests to offers…”, paragraph 383. “[0386] In step 748, the list of one or more matching offers, determined in step 746, are sent to user [Examiner interprets as sending by a server system to the user one or more offers ] system 130A for review by the requester. The list is subsequently received by user system 130A in step 750”, paragraph 386. “Receive Request & Offer(s)”, element 744 Fig. 7B and paragraph 394.
Also , Carlisle’s system teaches “platform 110 may facilitate a more complicated negotiation than the offer and acceptance illustrated in process 740. For example, the peer-to-peer routing performed in FIG. 7B may involve one or more rounds of counteroffers by …. offeror [Examiner interprets as sending by a server system to the user one or more offers ] prior to full acceptance and opening of the smart contract. Instead of simply selecting one or more offers in step 752, the requester may select one or more offers to which to send a counteroffer. The counteroffer(s) may be relayed by platform 110 via steps 756 and 758, and the offeror may accept the counteroffer in step 762, or may propose a counter-counteroffer which is then similarly relayed by platform 110 to the requester”, paragraph 398.
“…transferring the payment (e.g., cryptocurrency, reward tokens, etc.) from an electronic wallet under the control of the smart contract to an electronic wallet of the offeror….”, paragraph 401.
“…transfer the escrowed payment from the electronic wallet over which it has authority to an electronic wallet of the offeror…”, paragraph 402);
f) employing, by the server system, a machine learning (ML) model to predict a subset of a plurality of offers associated with products or brands to be sent to the user based on user attributes of the user, wherein the ML model is trained to score the plurality of offers based on the user attributes of the user, and predict the subset of the plurality of offers based on scores of the plurality of offers;
(“0303] In an embodiment, personal data 422 comprises data and information related to the identity and personal information of the user. For example, personal information for a person may include, without limitation, a name, address (e.g., street and street number, city, state, postal code, country, etc.), ethnicity, gender, current and/or previous geolocation, spiritual information (e.g., religious affiliation), political party, language(s) spoken, interests (e.g., keywords, books, movies, music, etc.), organizations, communities or other groups of which the user is a member, profession, prior profession, education level, age, background, career keywords, business history, skills, awards, current projects, business possibilities, areas of knowledge, programs and/or seminars taught by the user, mentors or other people whom the user admires, research, strengths, areas in which the user wishes to improve, and/or the like. Personal information for a company may include, without limitation, a name, address, contact information (e.g., telephone number, fax number, email address), website address, type (e.g., public or private), industry, languages supported, geographic research, revenue, number of employees, awards, organizations of which the company is a member, keywords, open job positions, statement(s) about the company (e.g., summary, intention, vision, history, etc.), culture of the company (e.g., as keywords), past, current, and/or future projects, global footprint, actions taken related to the company's global footprint, from where the company sources, manufacturing, laws or policies supported by the company, and/or the like. Personal data 422 may also include data extracted based on photographs stored by the user, such as personal attributes (e.g., eye color, height, hair color, etc.). Personal data 422 may further include marriage status, educational background, employment status and/or history, and/or the like”, paragraph 303.
“[0306] In an embodiment, each contact may be ranked against other contacts based on that contact's relationship with the user (e.g., how close the contact is with the user) [Examiner interprets as based on the user attributes of the user]. For example, family members may be ranked higher than alumni contacts. Alternatively or additionally, each contact may be associated with a level of interaction, based on how often or frequently the user interacts with the contact. Higher levels of interaction may be indicative of contacts that are closer to the user than other contacts”, paragraph 306.
“[0407] In an embodiment, the matching algorithm may comprise or utilize the artificial intelligence to predict needs and/or offers. …”, paragraph 407.
“[0408] In an embodiment, the matching algorithm may be configured to optimize matches based on one or more criteria. For example, the matching algorithm may prioritize matches by proximity, cheapest value, congruence, and/or the like. It should be understood that the matching algorithm may rank matches according to multiple prioritizations or weightings. For example, the matching algorithm may score each match based on weightings assigned to two or more attributes of a match (e.g., degree of separation between users [Examiner interprets as based on the user attributes of the user], amount of money involved, equivalence between the need and offer, etc.), and select the match with the highest score as the one to be presented to the users”, paragraph 408).
g) sending, by the server system, the subset of the plurality of offers to the user, wherein the subset of the plurality of offers is stored in the digital wallet and accessible by the user[ in the digital wallet]; and
(“[0085] In an embodiment, the graphical user interface comprises a rewards-themed screen (e.g., via a user operation within people-themed home screen 302C). The rewards-themed screen may track and display a multitude of different rewards, received by the user, in all areas of growth and contribution….”, paragraph 85.
“[0456] Upon allocating rewards to contributions, the allocations may be associated with a corresponding user and stored in a database (e.g., database 114…”, paragraph 456);
h) auto refreshing, by the server system, one or more of the subset of the plurality of offers[ in the digital wallet ]with one or more new offers based on one or more offer criteria.
(“[0292] In an embodiment, the descriptive user-specific data is stored in a descriptive user data model that drives the artificial intelligence (e.g., the predictive model described herein) to bias search results, content, and/or the like for the associated user. For example, the application may use the descriptive user data model to train the artificial intelligence for a particular user. In an embodiment, training the artificial intelligence includes a feedback loop. For example, the artificial intelligence may access the descriptive user data model to retrieve descriptive data indicative of a user bias. The artificial intelligence may then bias the results of a user search, analyze the user's interaction with the search results (e.g., which search results the user finds helpful and/or which search results the user does not find helpful), and updates the descriptive user data model based on those interactions.”, paragraph 292.
“[0320] In various embodiments, user profile engine 400 may develop a dynamically updateable representation of the biases of the user based on continuously received descriptive data from one or more functions of the application over time. For example, the user may interact with the application over an extended period of time, and, based on each interaction, the corresponding functions of the application may inject descriptive data into user profile engine 400. User profile engine 400 may then update descriptive user data model 405, at least in part, based on each received descriptive data over time. In this way, descriptive user data model 405 is constantly updated and modified. For example, in the background, user profile engine 400 may collect and aggregate any and all information entered by the user into the application. In an embodiment, the updateable descriptive user data model 405 may be utilized to train the artificial intelligence (e.g., the predictive model described herein) over time as the user inputs or otherwise generates increasing amounts of descriptive data. For example, each time the artificial intelligence accesses descriptive user data model 405, it has access to increasingly greater amounts of information from which it can determine the user's biases”, paragraph 320.
“0332] In step 438, descriptive user data model 405 is updated and stored, for example, based on the received user input (e.g., from step 432)….”, paragraph 332. “…Accordingly, descriptive user data model 405 may be continually and dynamically updated based on user interactions with the application over time.”, paragraph 333 and Fig. 4B.
“…For example, as gamification engine 900 receives data from one or more other functions of the application, it may extract data indicative of the contribution, process the data to determine a quality of the interaction (e.g., positive sentiment, altruistic, etc.), allocate the reward as tokens based on the contribution type and/or quality, and store the allocation in the database as a new data structure or update an existing data structure associated with the given user….”, paragraph 456).
Carlisle does not expressly disclose but Purves discloses
one or more offers in the digital wallet.
(“[0181] FIGS. 9A-F show user interface diagrams illustrating example features of virtual wallet applications in a payment mode, in some embodiments of the Bill Pay. With reference to FIG. 9A, in one embodiment, the wallet mobile application may provide a user with a number of options for paying for a transaction via the wallet mode 910. In one implementation, an example user interface 911 for making a payment is shown. The user interface may clearly identify the amount 912 and the currency 913 for the transaction. The amount may be the amount payable and the currency may include real currencies such as dollars and euros, as well as virtual currencies such as reward points. The amount of the transaction 914 may also be prominently displayed on the user interface. The user may select the funds tab 916 to select one or more forms of payment 917, which may include various credit, debit, gift, rewards and/or prepaid cards. The user may also have the option of paying, wholly or in part, with reward points….”, paragraph 181 and Figs. A-F).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate Purves’s teaching with the teaching of Carlisle. One would have been motivated to provide rewards and payment functionality in order to support a wallet (see Purves Fig. 7 element 701).
As to claim 18, it comprises the same limitations than claim 1 above, therefore is rejected in the same manner.
Further the claim comprises a server system (see at least Figs. 1, 7B and 9A), comprising: one or more processors (paragraph 43). and at least one memory coupled to the one or more processors and storing instructions, which when executed by the one or more processors, cause the server system to perform operations (paragraph 45).
As to claims 2 and 19, Carlisle discloses
computing by the server system, a payment amount based on at least one of:the at least one modal or the plurality of offers with products or brands.
(“…For example, in many cases, the consideration will be money. Thus, a prepayment may be submitted with the acceptance selection in step 774. The prepayment can be submitted using any well-known online payment methods (e.g., credit card, debit card, direct debit from a bank account, Paypal™, Venmo™, electronic wallet, etc.). In an embodiment, prepayments may be made using a cryptocurrency associated with the blockchain described herein. In addition, this cryptocurrency may be integrated with the rewards system described herein (e.g., the reward tokens, discussed herein, may be the cryptocurrency, exchangeable with the cryptocurrency, etc.). In this case, a user can utilize his or her reward tokens to engage in the transactions described herein….”, paragraph 394).
As to claims 3 and 20, Carlisle discloses
wherein the user the user attributes of the user are augmented with third party data.
(“[0065] In addition, the application may support or implement any other conventional or future method of user interaction. Such methods may include augmented reality (e.g., overlaying any of the visual elements described herein over a real-time image of the user's physical environment), virtual reality (e.g., providing a virtual universe in which the user can move and with which the user can interact using conventional virtual reality gear, such as a headset, hand paddles, etc.), and/or the like”, paragraph 65).
As to claims 4 and 21, Carlisle discloses
wherein the at least one modal comprises a user interface (UI) element having at least one product or brand.
(“Navigable graphical user interface for social media system. In an embodiment, a graphical user interface is generated, which provides user navigation between each screen, generated by an executing one of a plurality of app modules to comprise content from a corresponding content source….”, abstract.
“[0085] In an embodiment, the graphical user interface comprises a rewards-themed screen (e.g., via a user operation within people-themed home screen 302C). The rewards-themed screen may track and display a multitude of different rewards, received by the user, in all areas of growth and contribution. The rewards-themed screen may comprise links to information about ratings, recognition (e.g., the recognition-themed screen), reward tokens and/or tiers, access, and/or the like. Ratings, recognition, and rewards may be achieved by the user via his or her activity, interactions, referrals, contributions, creative contributions, service, and/or the like, within the application. A user's overall rating and/or rewards may be determined by the user's growth in awareness, completion of specific content or activities, activities, interactions recommendations, referrals, offers, donations…”, paragraph 85.
“…The application may be configured to emulate a screen of the graphical user interface on each of the plurality of displays. For example, the application may be rendering a broadcast-results screen 342, a people search function, and a multi-modal view 336. The application may communicate and emulate the screens for each of these on a different display. For instance, the application may display broadcast-results screen 342 on a communicatively coupled television, the people search results on a communicatively coupled computer monitor, and multi-model view 336 on both a communicatively coupled tablet computer and the native display of user system 130 (e.g., a smartphone). The application may synchronize each device for simultaneously viewing and interaction by the user within the application (e.g., for viewing or interacting with the same content on two different displays…”, paragraph 286 and Fig. 3K).
As to claims 5 and 22, Carlisle discloses
wherein are each offer of the subset of the plurality of offers is selectable by the user.
(“…a notification, including a multi-screen and/or multi-modal search, from a notification, and/or search the notification settings and/or histories of other users (e.g., friends, companies, celebrities, charities, members of the same team, community, or other group, etc.) who have opted in to allow such searches (e.g., in exchange for a reward)….”, paragraph 209.
“[0387] In step 752, the user may review and select one or more of the offers in the list of offers, received in step 750, via the graphical user interface of the application. For example, the graphical user interface may comprise an offer-selection screen which includes a selectable representation of each offer in the list (e.g., with a summary of the offer and/or offeror, and a link to further details regarding the offer and/or offeror…”, paragraph 387 and Fig. 7B).
As to claims 6 and 23, Carlisle discloses
wherein each [offer] of the subset of the plurality of offers is revealed or concealed.
(Carlisle teaches content that is hidden, “…In an embodiment, content feed 350 may be hidden (e.g., terminated or run in the background) in response to, for example, a predetermined time of inactivity or a user operation”, paragraph 221 and Fig. 3).
Carlisle does not disclose but from Carlisle teaching of hidden content (paragraph 221) and reward (paragraphs 84-85), It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the pointed out teaching to hide offers or rewards, and the results would have been predictable.
As to claims 7 and 24, Carlisle discloses
wherein the at least one modal further comprises a search bar to search for a product or brand.
(“[0096] In an embodiment, the graphical user interface may enable a user to search from one or more of home screens 302 and/or any other screens described herein. For example, the user may initiate a search by selecting a “search” link 304 to a search engine via a user operation (e.g., tap or voice input), selecting (e.g., tapping) an open region (e.g., where no links 302 are positioned) on home screen 302, selecting a search option in the application menu, and/or the like”, paragraph 96.
“…[0102] Preferred Sources: comprises search results from sources that the user and/or other users prefer (e.g., sources most frequently and/or recently used by the user). The user may specify (e.g., via a profile or settings screen of the graphical user interface) his or her preferred sources (e.g., app modules, websites, brands, retailers, providers, and/or the like…”, paragraph 101.
“[0338] In an embodiment, the artificial intelligence may be trained for a particular user, at least in part, by that user's responses to prompts. For example, after the artificial intelligence injects what it perceives to be user biases into a particular function (e.g., search, advertising, etc.), the application may prompt the user (e.g., via a pop-up overlay in the graphical user interface, via feedback inputs associated with each search result, advertisement, etc.) to indicate whether or not the functional result (e.g., search results, advertisement, etc.) of the user-biased function was useful (e.g., via one or more inputs within the pop-up overlay)), paragraph 338).
As to claims 8 and 25, Carlisle discloses
prior to auto refreshing the one or more of the subset of the plurality of offers in the digital wallet with the one or more new offers, determining, by the server system, that the one or more offer criteria are met.
(“[0184] In an embodiment, the application enables a user to broadcast a message (e.g., send) to one or more other users via a set of one or more intuitive screens. Options and criteria related to the broadcast message may be driven by the artificial intelligence described elsewhere herein (e.g., the predictive model described herein)….”, paragraph 184 and “[0188] At a minimum, the collected information should define the content of the broadcast message and criteria for determining the recipients of the broadcast message….”, paragraph 188.
“….In an embodiment, the user may specify additional or different criteria to be used in determining the target, and the artificial intelligence, described elsewhere herein (e.g., the predictive model described herein), may use the specified criteria to determine the subset of users who should receive the message.”, paragraph 192.
“[0456] Upon allocating rewards to contributions, the allocations may be associated with a corresponding user and stored in a database (e.g., database 114). In an embodiment, the allocated rewards and associated contribution data may be recorded as a transaction on the blockchain (e.g., comprising a transfer of tokens). In an embodiment, the allocated rewards may be stored as a table or other data structure which associates the allocated rewards with the given user. For example, as gamification engine 900 receives data from one or more other functions of the application, it may extract data indicative of the contribution, process the data to determine a quality of the interaction (e.g., positive sentiment, altruistic, etc.), allocate the reward as tokens based on the contribution type and/or quality, and store the allocation in the database as a new data structure or update an existing data structure associated with the given user….”, paragraph 456.
“…the data structure of allocated rewards for a particular user may be injected into user profile engine 400 to update a descriptive user data model 405..”, paragraph 457).
As to claims 9 and 26, Carlisle discloses
wherein customization of product or brand preferences is provided [in the digital wallet].
(“….For example, the graphical user interface may comprise a settings screen which allows the user to select one or more home screens from a set of predefined themed home screens and/or add a blank home screen which the user may customize. The settings screen may also enable the user to logically arrange the selected home screens (e.g., in any desired order”, paragraph 71).
Carlisle does not disclose but Purves discloses
in the digital wallet
(“[0278] FIG. 102 shows a data flow illustrating an example social wallet widget integration, in some embodiments of the Bill Pay. In one embodiment, user 10201 may use a client to request a widget designer interface, e.g., 10205, configured with capabilities to allow the user to customize a widget, generate a social media application, inject an existing social media application with content, provide widget checkout capabilities from within a social media site or within a social media application, share the user's injected content or social media application on the user's social media feed for viewing by other users who "follow" the user, and/or the like….”, paragraph 278 and FIG. 102).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate Purves’s teaching with the teaching of Carlisle. One would have been motivated to provide customization of a wallet widget in order to offer widget customization (Purves paragraph 278).
As to claims 10 and 27, Carlisle discloses
wherein the user attributes of the user include the product or brand preferences. :
(Carlisle teaches preferences, “…It should be understood that the set of options in one context may overlap with the set of options in a different context, and that some options (e.g., navigation to a screen for setting user preferences and/or application settings) may be present in every context. …”, paragraph 68.
“,,,The user may specify (e.g., via a profile or settings screen of the graphical user interface) his or her preferred sources (e.g., app modules, websites, brands, retailers, providers, and/or the like…”, paragraph 101.
“0385] The artificial intelligence may be employed to narrow down the number of offers (e.g., to a predetermined number of best-fit offers) and/or eliminate any offer that the requester is unlikely to accept. The artificial intelligence may select and/or eliminate offers from consideration according to the requesting and/or offering users' biases (e.g., preferences, interests, activities, etc.). For example, certain offers may be selected, eliminated, and/or ranked higher or lower based on location (e.g., selected or ranked higher if the offeror is within a geographical vicinity of the requester, and/or eliminated or ranked lower if the offeror is outside a geographical vicinity of the requester). As another example, certain offers may be selected, eliminated, and/or ranked higher or lower based on matching biases (e.g., preferences, interests, and/or activities). …”, paragraph 385.
“…In an embodiment, the artificial intelligence may access a user's descriptive user data model 405 and suggest items based on user preferences and currently owned tokens…”, paragraph 435).
As to claims 11 and 28, Carlisle does not expressly disclose but Purves discloses
wherein the product or brand preferences are customized based on one or more user actions of the user
(“…developers may present a customized action such as, for example, an offer to a user if the user buy a product now…”, paragraph 365).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate Purves’s teaching with the teaching of Carlisle. One would have been motivated to provide customization based in user actions such as user’s purchase of a product (Purves paragraph 365).
As to claims 12 and 29, Carlisle does not expressly disclose but Purves discloses
wherein the one or more user actions comprise at least one of: saving at least one offer of the subset of the plurality of offers, liking at least one offer of the subset of the plurality of offers, ranking the subset of the plurality of offers, or sharing at least one offer of the subset of the plurality of offers with another user.
(“[0278] FIG. 102 shows a data flow illustrating an example social wallet widget integration, in some embodiments of the Bill Pay. In one embodiment, user 10201 may use a client to request a widget designer interface, e.g., 10205, configured with capabilities to allow the user to customize a widget, generate a social media application, inject an existing social media application with content, provide widget checkout capabilities from within a social media site or within a social media application, share the user's injected content or social media application on the user's social media feed for viewing by other users who "follow" the user, and/or the like….”, paragraph 278).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate Purves’s teaching with the teaching of Carlisle. One would have been motivated to provide customization based in user actions such as user sharing of content in order to encourage other users to follow a user.
As to claims 13 and 30, Carlisle discloses
wherein reward points or virtual currency are provided to the user in the digital wallet, wherein and the reward points or virtual currency can be used for a purchase, or donated to or shared with another user.
(“…In an embodiment, prepayments may be made using a cryptocurrency associated with the blockchain described herein. In addition, this cryptocurrency may be integrated with the rewards system described herein (e.g., the reward tokens, discussed herein, may be the cryptocurrency, exchangeable with the cryptocurrency, etc.). In this case, a user can utilize his or her reward tokens to engage in the transactions described herein…”, paragraph 394).
As to claims 14 and 31, Carlisle does not expressly disclose but Purves discloses
wherein the digital wallet comprises a content history of digital contents accessed by the user, and a reward history of reward points or virtual currency earned by the user.
(“[0192] FIG. 10 shows a user interface diagram illustrating example features of virtual wallet applications, in a history mode, in some embodiments of the Bill Pay. In one embodiment, a user may select the history mode 1010 to view a history of prior purchases and perform various actions on those prior purchases. For example, a user may enter a merchant_identifying information such as name, product, MCC, and/or the like in the search bar 1011. In another implementation, the user may use voice activated search feature by clicking on the microphone icon 1014. The wallet application may query the storage areas in the mobile device or elsewhere (e.g., one or more databases and/or tables remote from the mobile device) for transactions matching the search keywords. The user interface may then display the results of the query such as transaction 1015. The user interface may also identify the date 1012 of the transaction, the merchants and items 1013 relating to the transaction, a barcode of the receipt confirming that a transaction was made, the amount of the transaction and any other relevant information”, paragraph 192 and Fig. 10).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate Purves’s teaching with the teaching of Carlisle. One would have been motivated to provide historical transactions in order to “to view a history of prior purchases” (Purves paragraph 192).
As to claims 15 and 32, Carlisle discloses
wherein determining whether the user has signed in or signed up via the at least one modal displayed on the user device comprises determining by the server system, whether the user has agreed, via the at least one modal, to receive a product offering.
(“0372] In step 730, since the combination of the request and response represents an agreement (e.g., an offer and acceptance of the offer), the agreement is recorded as a transaction in a blockchain. The recorded transaction may reference a smart contract, i.e., a computer protocol that executes logic, for example to facilitates, verifies, or enforces performance of the agreement. In an embodiment, the transaction may include one or more of the agreement, the content of the agreement, the content of the request, and/or the content of the response”, paragraph 372 and Fig. 7A.
“ [0396] In step 782, platform 110 selects an applicable smart contract to be used for the transaction.… For example, transactions representing offers, requests, acceptances, and/or the like may each be associated with a separate smart contract for executing and/or recording the transaction….”, paragraph 396 and Fig. 7C).
As to claims 16 and 33, Carlisle discloses
the request includes information of the digital content and user information of the user
(“…Platform 110 may also comprise or be communicatively connected to a server application 112 and/or one or more databases 114. In addition, platform 110 may be communicatively connected to one or more user systems 130 via one or more networks 120…”, paragraph 27 and Fig. 1); and the method further comprises: updating a content database based on the information of the digital content;
([0465] FIG. 10A illustrates an infrastructure for delivering privatized external content, according to an embodiment. The first time a user system 130 requests content from a particular source (e.g., website on external system 140), platform 110 may access the source to retrieve the content, store the content in a user dataset 1014, associated with the user of user system 130, in database 114, and provide the content to user system 130. Subsequently, while the content is open in user system 130 (e.g., being presented in an active or inactive module screen, being presented in a content block 351 or 352 of a content feed 350, etc.), platform 110 may poll the source to update the copy of the content in user dataset 1014. Platform 110 may maintain a separate user dataset 1014 for each user of the application…”, paragraph 465); and updating a user database based on the user information of the user.
(“[0456] Upon allocating rewards to contributions, the allocations may be associated with a corresponding user and stored in a database (e.g., database 114). In an embodiment, the allocated rewards and associated contribution data may be recorded as a transaction on the blockchain (e.g., comprising a transfer of tokens). In an embodiment, the allocated rewards may be stored as a table or other data structure which associates the allocated rewards with the given user. For example, as gamification engine 900 receives data from one or more other functions of the application, it may extract data indicative of the contribution, process the data to determine a quality of the interaction (e.g., positive sentiment, altruistic, etc.), allocate the reward as tokens based on the contribution type and/or quality, and store the allocation in the database as a new data structure or update an existing data structure associated with the given user…”, paragraph 456).
As to claims 17 and 34, Carlisle does not expressly disclose but Purves discloses
updating by the server system, the subset of the plurality of offers stored in the digital wallet.
(“…For example, 7 items worth $102.54 were in the selected wallet shop bill. A user may now select any of the items and select buy again to add purchase the items. The user may also refresh offers 816j to clear any invalid offers from last time and/or search for new offers that may be applicable for the current purchase…”, paragraph 175 and Fig. 8B.
“[0254] In some implementations, the user and the Bill Pay server may continue to communicate with each other until the user has obtained offer conditions that he approves of. In some implementations, the merchant's offer message 2104 may include the parameters Bill Pay may use to update the offer, thus allowing the user's wallet application to automatically calculate the updated offer information without the need to communicate with the Bill Pay server. …”, paragraph 254).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate Purves’s teaching with the teaching of Carlisle. One would have been motivated to update offers in order to support commerce and bill pay (Purves abstract and paragraph 254).
Response to Arguments
Applicant’s arguments of 08/04/2026 have been very carefully considered but are not persuasive.
Applicant argues (remarks 14-16)
Claim Rejections - 35 USC§ 103
Claims 1-34 are rejected under 35 USC 103 as being unpatentable over US PG. Pub.
No. 20180349485 (Carlisle) in view of US PG. Pub. No. 20130346302 (Purves).
Claim 1, as amended, recites "employing, by the server system, a machine learning (ML)
model to predict a subset of a plurality of offers associated with products or brands to be sent to
the user based on user attributes of the user, wherein the ML model is trained to score the
plurality of offers based on the user attributes of the user, and predict the subset of the plurality
of offers based on scores of the plurality of offers" and "auto refreshing, by the server system,
one or more of the subset of the plurality of offers in the digital wallet with one or more new
offers based on one or more offer criteria"….
Thus, while Carlisle discloses the use of artificial intelligence to determine the content in
which a user is likely to be interested in, and determine or influence the links 304 for each home
screen 302, there is no indication that the artificial intelligence of Carlisle would "predict a
subset of a plurality of offers associated with products or brands to be sent to the user based on
user attributes of the user, wherein the ML model is trained to score the plurality of offers based
on the user attributes of the user, and predict the subset of the plurality of offers based on scores
of the plurality of offers" as specified by claim 1. Carlisle also does not disclose "auto
refreshing, by the server system, one or more of the subset of the plurality of offers in the digital
wallet with one or more new offers based on one or more offer criteria" as specified by claim 1….
In response the Examiner asserts that the prima facie of obviousness established in this case discloses all the limitations in the claims.
The prima facie established in this case is strong in user attributes and score the plurality of offers based on the user attributes of the user, see for example “personal data 422 comprises data and information related to the identity and personal information of the user. For example, personal information for a person may include, without limitation, a name, address (e.g., street and street number, city, state, postal code, country, etc.), ethnicity, gender, current and/or previous geolocation, spiritual information (e.g., religious affiliation), political party, language(s) spoken, interests …such as personal attributes (e.g., eye color, height, hair color, etc.). Personal data 422 may further include marriage status, educational background, employment status and/or history, and/or the like”, Carlisle paragraph 303 and Fig. 4A.
Attributes of the model in Fig. 4A can be ranked for example “[0306] In an embodiment, each contact may be ranked against other contacts based on that contact's relationship with the user (e.g., how close the contact is with the user) [Examiner interprets as based on the user attributes of the user]. For example, family members may be ranked higher than alumni contacts. Alternatively or additionally, each contact may be associated with a level of interaction, based on how often or frequently the user interacts with the contact. Higher levels of interaction may be indicative of contacts that are closer to the user than other contacts”, paragraph 306.
“[0407] In an embodiment, the matching algorithm may comprise or utilize the artificial intelligence to predict needs and/or offers. …”, paragraph 407.
“[0408] In an embodiment, the matching algorithm may be configured to optimize matches based on one or more criteria. For example, the matching algorithm may prioritize matches by proximity, cheapest value, congruence, and/or the like. It should be understood that the matching algorithm may rank matches according to multiple prioritizations or weightings. For example, the matching algorithm may score each match based on weightings assigned to two or more attributes of a match (e.g., degree of separation between users [Examiner interprets as based on the user attributes of the user], amount of money involved, equivalence between the need and offer, etc.), and select the match with the highest score as the one to be presented to the users”, Carlisle paragraph 408.
Purves is strong in “[0181] FIGS. 9A-F show user interface diagrams illustrating example features of virtual wallet applications in a payment mode, in some embodiments of the Bill Pay. With reference to FIG. 9A, in one embodiment, the wallet mobile application may provide a user with a number of options for paying for a transaction via the wallet mode 910. In one implementation, an example user interface 911 for making a payment is shown. The user interface may clearly identify the amount 912 and the currency 913 for the transaction. The amount may be the amount payable and the currency may include real currencies such as dollars and euros, as well as virtual currencies such as reward points. The amount of the transaction 914 may also be prominently displayed on the user interface. The user may select the funds tab 916 to select one or more forms of payment 917, which may include various credit, debit, gift, rewards and/or prepaid cards. The user may also have the option of paying, wholly or in part, with reward points….”, paragraph 181 and Figs. A-F).
Again, the prima facie of obviousness established in this case discloses all the limitations in the claims. There is not novelty at all in the instant claims at the time of the invention.
Applicant argues (remarks 10-14)
Claim Rejections - 35 USC§ 101
Claims 1-34 are rejected under 35 U.S. C 101 because the claimed invention is
allegedly being directed to non-statutory subject matter.
STEP 2A-PRONG 1
With respect to Prong 1, the Office Action, under the "Response to Arguments" heading,
states "The 101 analysis presented above is facially sufficient, and presents why the elements in
the claims are considered to be insignificant extra-solution activity. See MPEP 2106.05(g) and
also are considered to be no more than mere instructions 'to apply' the exception, See MPEP
2106.05(±). The Examiner does not agree with applicant because the instant claims in the way
that they presented cover performance of the limitations as certain methods of organizing human
activity, advertising, marketing or sales activities or behaviors. They recite an abstract idea. The
method for providing access to digital content." (Office Action, p. 27-28).
According to the MPEP, "The term "certain" qualifies the "certain methods of organizing
human activity" grouping as a reminder of several important points. First, not all methods of
organizing human activity are abstract ideas (e.g., "a defined set of steps for combining
particular ingredients to create a drug formulation" is not a certain "method of organizing human
activity"), In re Marco Guldenaar Holding B. V, 911 F.3d 1157, 1160-61, 129 USPQ2d 1008,
1011 (Fed. Cir. 2018). Second, this grouping is limited to activity that falls within the
enumerated sub-groupings of fundamental economic principles or practices, commercial or legal
interactions, and managing personal behavior and relationships or interactions between people,…
In response the Examiner asserts that a prima facie of unpatentability has being established in this case and reviewed in view of last amendments filed. Applying the 2019 PEG patent-eligibility test, when an Examiner classifies an invention under this broad judicial exception, it is because the claims although have some technology comprise tracking of human behavior or activity (i.e. determining that the user has signed in or signed up) and encouraging an economic practice (ie. auto refreshing offers in a digital wallet). The instant claims comprise technical elements (“by a server system from a user device of a user”; “displayed on the user device”; to a digital wallet on the user device of the user; by the server system, a machine learning (ML) model ; the ML model is trained ; stored in the digital wallet and accessible by the user in the digital wallet; “), but they do not make the claim eligible for patent protection. The instant claims are directed to a “ method for providing access to digital content”. Thus the claims recite an abstract idea.
Here, amended claim I is not directed to a fundamental economic principle or practice,
commercial or legal interaction, or managing personal behavior or relationship or interaction
between people. Instead, amended claim I recites, in part:
providing, by the server system, the user access to a digital wallet on the user device of
the user….
The above-recited features of claim I (with the emphasized portions in particular) do not
merely describe certain methods of organizing human activity, advertising, marketing or sales
activities or behaviors. While the goal of the claimed invention may include an advertising
component, the claim is formulated to enable a user device to access digital content (such as
news articles, textual information, e.g., scientific articles or papers, poems, essays, op-eds,
games, in-game purchases, art, e.g., non-fungible token (NFT), literary works, videos, music,
podcasts, etc.) for a limited time period for free from a website or app while receiving product
offerings stored in a digital wallet. (Specification as-filed ("Spec."), para. [0034], [0038],…
In response the Examiner agrees that the instant application is in compliance with the utility requirement. The claimed invention has a readily apparent well-established utility (see MPEP 2107). But, per MPEP 2106 an invention also must comply with the Subject Matter Eligibility test under Alice framework, see “2019 Revised Patent Subject Matter Eligibility Guidance” (2019 PEG), published in the MPEP 2103 through 2106.07(c). The instant claims are directed to an abstract idea. None of the limitations considered as an ordered combination, provides eligibility, because taken as a whole, the claim simply instruct the practitioner to implement an abstract idea with routine, conventional technology. Accordingly, the claims are ineligible (see complete and facially sufficient analysis of the rejection above).
Moreover, although discussed in relation to the mental process grouping, as noted on
pages 2-3 of Memorandum dated August 4, 2025 on Evaluating SME of claims under 35 U.S.C.
IOI ("Memorandum dated August 4, 2025"), "[t]he mental process grouping is not without
limits. Examiners are reminded not to expand this grouping in a manner that encompasses
claim limitations that cannot practically be performed in the human mind. The MPEP and
the AI-SME Update provide examples of claim limitations that cannot be practically
performed in the human mind. Claim limitations that encompass AI in a way that cannot be
practically performed in the human mind do not fall within this grouping ... Consider for
example, the published USPTO examples 39, which illustrates claim limitations that merely
involve an abstract idea, and 47, which shows limitations that recite an abstract idea. The claim
limitation "training the neural network in a first stage using the first training set" of
example 39 does not recite a judicial exception. Even though "training the neural network"
involves a broad array of techniques and/or activities that may involve or rely upon
mathematical concepts, the limitation does not set forth or describe any mathematical
relationships, calculations, formulas, or equations using words or mathematical
symbols ... " (emphasis added).
Thus, in accordance with the Memorandum dated August 4, 2025, considering that claim
I recites "employing, by the server system, a machine learning (ML) model to predict a subset of
a plurality of offers associated with products or brands to be sent to the user based on user
attributes of the user, wherein the ML model is trained to score the plurality of offers based on
the user attributes of the user, and predict the subset of the plurality of offers based on scores of
the plurality of offers", in no way the claimed invention is directed an abstract idea, such as
methods of organizing human activity, advertising, marketing or sales activities or behaviors.
Accordingly, it is respectfully submitted that the eligibility analysis is concluded and that claims
1-34 are eligible….
In response the Examiner asserts that the instant claims have technology but performing an abstract mental idea via generic computer hardware or generic automation still leaves the claim directed to a judicial exception under Step 2A, unless the hardware configuration or process steps structurally improve the functioning of the computer or technical field.
The additional elements in the claims to the abstract idea , “by a server system from a user device of a user”; “displayed on the user device”; to a digital wallet on the user device of the user; by the server system, a machine learning (ML) model ; the ML model is trained ; stored in the digital wallet and accessible by the user in the digital wallet; “, they are recited in a very generic way.
Next, the claims comprise “a machine learning (ML) model ; the ML model is trained “, but under 35 U.S.C. § 101, using generic machine learning to automate tasks or analyze data does not make an invention patent- eligible . Legal precedent, such as the Ex part Desjardins (2025), establishes that claims must improve the underlying machine learning technology itself rather than merely applying standard Al tools to a new field.
STEP 2A-PRONG 2
With respect to Prong 2, the Office Action states "The instant claims are directed to an
abstract idea. The inventive concept (the Examiner clarifies that the term "inventive concept" is
often used by the courts to describe additional element(s) that amount to significantly more than
a judicial exception) contained in the instant claims "a user device of a user"; "the user device at
least one modal for the user to sign-in or sign-up"; "via the at least one modal"; "a digital wallet;"
"by a server system", "providing, by the server system, a display of the one or more offers in the
digital wallet", no comprises limitations that provides eligibility, because taken as a whole, the
claim simply instruct the practitioner to implement an abstract idea with routine, conventional
technology." (Office Action, p. 29).
In the instant case, the claimed invention involves employing an ML model to predict a
subset of offers associated with products or brands to be sent to the user based on user attributes
of the user. Also, the ML model is trained to score the offers based on the user attributes of the
user, and predict the subset of the offers based on the scores. The claimed invention further
involves auto refreshing of one or more of the subset of offers in the digital wallet with one or
more new offers based on one or more offer criteria. The claimed invention also involves
communications of data and information between a server system and a user device (e.g.,
smartphone, tablet, laptop, computer, smartwatch, game console, smart television, streaming
device, etc.)….
In response the Examiner asserts that the additional elements to the abstract idea are , “by a server system from a user device of a user”; “displayed on the user device”; to a digital wallet on the user device of the user; by the server system, a machine learning (ML) model ; the ML model is trained ; stored in the digital wallet and accessible by the user in the digital wallet; “,
The Examiner looked in the instant description, improvement of data or results, as in this case, is not sufficient to integrate the abstract idea because it merely reflects the use of conventional technology and amounts to only generally linking the use of an abstract idea to a particular technological environment. MPEP 2106.05(h).
The claims recite a machine learning predictive model and score-prediction process, the claims are eligible for a patent only, if the claims integrate any recited any abstract idea into a practical application or achieves a specific technical improvement. Routine data scoring, refreshing, or standard predictions alone are considered ineligible abstract ideas.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
“Towards an interoperable mobile wallet service”. IEEE.2014.
This article discloses “Advancement in mobile technology, coupled with a market wide growth in mobile subscriber base, is encouraging financial, telecom and even third party operators to offer mobile payment services. In presence of a plethora of such services, an imminent problem is lack of interoperability across them. In this work, we address the challenge of interoperability by designing a wallet service built upon a concept of token. A token encapsulates a payment instruction, which can be of different types, such as instant, dated or installment payment. A token is represented by a Info-Matrix code, viz. Quick-Response (QR) code, thereby bringing in additional advantages in terms of user interactions with the wallet service. We present the lifecycle management of a token, beginning with token generation on user request, transfer of token, and acknowledged receipt and encashment of a token. This work presents an architecture for interoperable wallet service, along with the implementation of a system that demonstrates the use of QR-codes as standardized tokens for transactions.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARIA VICTORIA VANDERHORST whose telephone number is (571)270-3604. The examiner can normally be reached on business hours from Monday through Friday from 8:30 AM to 4:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ashraf Waseem can be reached on 571-270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARIA V VANDERHORST/ Primary Examiner, Art Unit 3621 8/21/2026
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