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
Response to Amendment
This communication is in response to the amendment filed on 3/2/2026 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,
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
“ determining whether the user has signed in or signed up via the at least one modal;”The “determining” 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 providing the user access to the digital content for a specific time period; sending to the user one or more offers about one or more products or brands; providing the user access …and storing and providing a display of the one or more offers …”. 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:
“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”
These elements are recited in a very generic way.
The Examiner gives the broadest reasonable interpretation to the above elements. They are insignificant extra-solution activity. See MPEP 2106.05(g).
The combination of these additional elements can also be considered no more than mere instructions “to apply” the exception, See MPEP 2106.05(f).
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,
“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” 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:
“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” 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.
Other limitations in the claim, 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; sending to the user one or more offers about one or more products or brands; providing the user access …and storing and providing a display of the one or more offers …”. 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
“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” were are anything other than generic software and not hardware at all, 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 “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” 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 and a digital wallet” 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 server 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 provided 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, providing by a server system the user device at least one modal for 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) determining by a server system whether 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);
d) 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 a 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);
e) sending by a server system to the user one or more offers about one or more products or brands;
(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);
f) providing by a server system the user access to a digital wallet;
(“…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);
g) and storing by a server system, the one or more offers [ in the digital wallet].
(“[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) providing, by the server system, a display of the [one or more offers in the digital wallet].
(“….The rewards-themed screen may track and display a multitude of different rewards, received by the user…”, paragraph 85).
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 provided at least one modal or the one or more offers about the one or more 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 at least one modal is displayed on the user device of the user.
(“…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 4 and 21, Carlisle discloses
wherein the at least one modal comprises a first modal having the one or more offers about the one or more products or brands.
(Fig. 3K element 336.
“[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).
As to claims 5 and 22, Carlisle discloses
wherein the one or more offers about the one or more products or brands are 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).
As to claims 6 and 23, Carlisle discloses
wherein the one or more [offers] are 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 first modal further has a search bar to search for a product or brand.
(“[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
wherein the one or more offers about the one or more products or brands are refreshable to provide the user with one or more new offers about one or more new products or brands.
(“[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
providing by the server system, customization of product or brand preferences [ 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 sending to the user the one or more offers about the one or more products or brands comprises: sending, by the server system to the user the one or more offers about the one or more products or brands based on 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).
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 the one or more offers, liking the one or more offers, ranking the one or more offers, or sharing the one or more 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
providing by the server system, the user with reward points or virtual currency in the digital wallet, wherein 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 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 one or more 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 03/02/2026 have been very carefully considered but are not persuasive.
Applicant argues (Remarks 8-13)
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…
Here, 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:…
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
Application Serial No. 18/911,098 -9- Atty. Docket No. 113086P002
offerings in a digital or virtual wallet instead of payments to access digital content. (Specification
as-filed ("Spec."), para. [0034], [0038], [0052]). The user device can access the free digital
content after the user has signed in or signed up via at least one modal provided to the user
device. (Spec., para. [0052]).
Therefore, based on the recited features in claim 1 above, in no way the method of claim
1 is directed to a method of organizing human activity, and it is respectfully submitted that claim
1 (and similarly claim 18) does not recite an abstract idea.
In response the Examiner asserts that a prima facie of unpatentability has been established. Further, the Examiner looked both the instant claims and the specification to elaborate Examiner's facially sufficient analysis above. The Examiner considered each limitation or element in the claims individually and as a whole according with the guidelines published in published in the MPEP 2103 through 2106.07(c).
The 101 analysis presented above is facially sufficient, and presents why the elements in the claims are considered to be an abstract idea and the elements that 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(f). 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.
…Non-limiting hypothetical examples of
claims that do not recite (set forth or describe) an abstract idea include ... vi. a method of
rearranging icons on a graphical user interface (GUI) comprising the steps of: receiving a
user selection to organize each icon based on the amount of use of each icon, determining the
amount of use of each icon by using a processor to track the amount of memory allocated to the
application associated with the icon over a period of time, and automatically moving the most
used icons to a position in the GUI closest to the start icon of the computer system based on the
determined amount of use". Id.
Here, as recited for example in claims 9-14, "Users can customize their product
preferences in the wallet, which may be used to customize products or brands presented to the
user. .. Users can like, share, and rank offers in the AADS wallet. Users may earn rewards or
Application Serial No. 18/911,098 -10- Atty. Docket No. 113086P002
reward coins for using the AADS wallet system. Rewards or reward coins can be spent for
purchases or shared with other users. Users can access their history in the AADS wallet system."
(Spec., para. [0034]).
Therefore, similar to example vi (method of rearranging icons on a GUI) pro
In response the Examiner asserts that it seems that applicant is comparing Example 37 – Relocation of Icons on a Graphical User Interface- with instant claims 9-14. The Examiner highlights that a claim is eligible if it provides a specific technical improvement. Because the facial sufficient analysis above, the claims are recited using generic computer components, therefore the claims are ineligible.
It is noted that with respect to Prong 2, "examiners should evaluate whether the claim as
a whole integrates the recited judicial exception into a practical application of the exception. A
claim that integrates a judicial exception into a practical application will apply, rely on, or use
the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the judicial exception."
(2019 Revised Patent Subject Matter Eligibility Guidance, at 18). That is, the "Examiners
evaluate integration into a practical application by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating
those additional elements individually and in combination to determine whether they
integrate the exception into a practical application, using one or more of the considerations
Application Serial No. 18/911,098 -11- Atty. Docket No. 113086P002
laid out by the Supreme Court and the Federal Circuit." (2019 Revised Patent Subject Matter
Eligibility Guidance, at 19).
In the instant case, the claimed invention 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.). For example, a
server system receives a request to access digital content from a user device of a user. In
response to the request, the server system provides the user device at least one modal for the user
to sign-in or sign-up. In response to determining that the user has signed in or signed up via the
at least one modal, the server system provides the user device access to the digital content for a
specific or limited time period. The server system sends to the user ( e.g., via email, short
message service (SMS), or in a wallet app) one or more offers about one or more products or
brands. The server system also provides the user access to a digital wallet, stores the offer(s) in
the digital wallet, and provides a display of the offer(s) in the digital wallet.
In response the Examiner asserts that the instant claims are analyzed according to the last “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.
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. See also MPEP 2106.05 I. THE SEARCH FOR AN INVENTIVE CONCEPT and II. ELIGIBILITY STEP 2B: WHETHER THE ADDITIONAL ELEMENTS CONTRIBUTE AN "INVENTIVE CONCEPT", to understand what is an inventive concept eligible under 101.
In summary, a prima facie of unpatentability has been established. The Examiner respectfully notes that Applicant has not provided persuasive rebuttal arguments to overcome the prima facie case.
Applicant argues (Remarks 13-16)
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…There is simply no disclosure in the cited paragraph of
Carlisle of providing access to digital content/or a specific time period let alone "providing ... the
user device access to the digital content for a specific time period" responsive to "determining
that the user has signed in or signed up via the at least one modal" as specified by claim 1.
In response the Examiner asserts that the prima facie of obviousness established in this case discloses not only timing to send a message from an advertiser but also the prima facie teaches “providing ... the user device access to the digital content for a specific time period”, see , “[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 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 ….”, 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 ….”, 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, etc.)…”, paragraph 353);
…Accordingly, from the above-quoted portions, while Carlisle discloses a platform 10 that
receives a request from user system 130A and offer(s) from user system(s) 130B, there is no
indication that the offer(s) of Carlisle is/are offer(s) about one or more products or brands.
Furthermore, it is noted that the Carlisle platform 10 merely receives the offer(s) from user
system(s) 130B. The Carlisle platform 10 does not send the offer(s) to a user system.
Carlisle therefore cannot disclose "sending, by the server system to the user, one or more
offers about one or more products or brands" as specified by claim 1….
In response the Examiner asserts that the prima facie of obviousness established in this case is solid . This prima facie discloses "sending, by the server system to the user, one or more offers about one or more products or brands", because Carlisle’s system teaches that his system receive offers from offerors or advertisers and send offers to user that request a service or product, 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).
Accordingly, cited paragraph of Purves merely discloses a wallet mobile application that
provides a user with options to pay for a transaction by identifying an amount and a currency
(e.g., dollars, euros, or virtual currencies) for the transaction. There is simply no indication in the
cited paragraph of Purves that the wallet mobile application of Purves would store any offer,
such as the offer(s) of Carlisle.
Purves therefore cannot disclose "one or more offers in the digital wallet" as specified by
claim 1.
In response the Examiner asserts that this allegation is not true. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
A prima facie of obviousness has been established in this case. The prima facie is the combination of Carlisle and Purves. The Examiner further notes that when combining, as obvious, features from a secondary reference into the primary reference, it is the feature which is being brought into the primary reference, not the entire invention of the secondary reference . In the present rejection the features incorporated from the secondary reference, Purves, do not destroy or render inoperable the invention of the primary reference, Carlisle. Thus, it would have been obvious to one of the ordinary skill in the art to modify the primary reference to include the features.
Regarding to the allegation “There is simply no indication in the cited paragraph of Purves that the wallet mobile application of Purves would store any offer,
such as the offer(s) of Carlisle.”, it is the primary reference Carlisle’s system that discloses the store offers limitation.“[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.
In summary, the Examiner respectfully notes that applicant has not provided persuasive rebuttal evidence to overcome the prima facie case. Further, the elements of this instant Application are old and well known at the time of the invention. The combination set for the rejection produce results that are predictable. There is lack of novelty on the claimed invention therefore there is a loss of a right to a patent.
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.”
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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 5/1/2026
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