DETAILED ACTION
This action is responsive to papers filed on 11/7/2025.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim 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 1-8 and 12-19 are rejected under 35 U.S.C. 101 because, while the claims herein are directed to a method and/or system, which could be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes), the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Regarding claim 1, the claim recites, in part, receiving a selection of a good or service for a purchase from a good/service provider using loyalty points, automatically identifying a date for an event associated with the purchase of the good or service; determining that the user does not have sufficient loyalty points in a user loyalty point account for the purchase; predicting a predicted number of loyalty points that the user will earn before the date of the event; presenting a difference between a number of loyalty points needed for the purchase and a number of loyalty points in the user loyalty account; presenting the predicted number of loyalty points that the user will earn before the date of the event; receiving approval to borrow loyalty points necessary for the purchase; approving the purchase and borrowing loyalty points necessary for the purchase; conducting the purchase using loyalty points in the user loyalty point account and the borrowed loyalty points, wherein a total number of points for the purchase is fixed when the purchase is conducted; periodically presenting recommendations for earning loyalty points; periodically reducing a borrowed loyalty points balance against new loyalty points earned by the user by redeeming the new loyalty points; determining, at the date of the event, a final loyalty points deficiency; and executing a transaction to pay for the final loyalty points deficiency.
Regarding claim 12, the claim recites, in part, receiving a selection of a good or service for a purchase from a good/service provider using loyalty points; automatically identifying a date for an event associated with the purchase of the good or service; determining that the user does not have sufficient loyalty points in a user loyalty point account for the purchase; predicting a predicted number of loyalty points that the user will earn before the date of the event; presenting a difference between a number of loyalty points needed for the purchase and a number of loyalty points in the user loyalty account; presenting the predicted number of loyalty points that the user will earn before the date of the event; receiving approval to borrow loyalty points necessary for the purchase; approving the purchase and borrowing loyalty points necessary for the purchase; conducting the purchase using loyalty points in the user loyalty point account and the borrowed loyalty points, wherein a total number of points for the purchase is fixed when the purchase is conducted; periodically presenting recommendations for earning loyalty points; periodically reducing a borrowed loyalty points balance against new loyalty points earned by the user by redeeming the new loyalty points; determining, at the date of the event, a final loyalty points deficiency; and executing a transaction to pay for the final loyalty points deficiency.
The limitations, as drafted and detailed above, recites borrowing of loyalty points and executing a transaction to pay for a loyalty points deficiency, which falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, and more specifically commercial interactions including sales activities or behaviors. Accordingly, the claim recites an abstract idea (i.e. “PEG”
Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application. In particular, the claims only recite the additional elements of points borrowing computer program (claims 1, 9, merely recites a program with no clear structure), user computer program (claims 1, 9, 12, merely recites a program with no clear structure), non-transitory computer-readable storage medium (claim 12), and one or more computer processors (claim 12). The additional technical elements above are recited at a high-level of generality (i.e. as a generic processor performing a generic computer function of receiving, identifying, determining, predicting, presenting, approving, conducting, reducing, and executing) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. There are no additional functional limitations to be considered under prong two.
Accordingly, the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (see MPEP 2106.05(e) and Vanda memo).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the
judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)). Thus, the claim is “directed to” an abstract idea (i.e. “PEG” Revised Step 2A Prong Two=Yes).
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using points borrowing computer program (claims 1, 9, merely recites a program with no clear structure), user computer program (claims 1, 9, 12, merely recites a program with no clear structure), non-transitory computer-readable storage medium (claim 12), and one or more computer processors (claim 12) to perform the claimed functions amounts to no more than mere instructions to apply the exception using a generic computer component.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on a computer, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent- eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat' l Ass' n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires a general purpose computer (see Applicant specification paragraphs 0058, 0062); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility.
The dependent claims 2-8, and 13-19 appear to merely limit specifics of a current loyalty point price, when the good or service is to be provided, specifics of the good or service, predicting points to be earned before a cut-off date, borrowing points from a pool, reducing a loyalty point balance, and basing borrowed points on an earning history, and therefore only limit the application of the idea, and not add significantly more than the idea (i.e. “PEG” Step 2B=No).
The points borrowing computer program (claims 1, 9, merely recites a program with no clear structure), user computer program (claims 1, 9, 12, merely recites a program with no clear structure), non-transitory computer-readable storage medium (claim 12), and one or more computer processors (claim 12) are each functional generic computer components that perform the generic functions of receiving, identifying, determining, predicting, presenting, approving, conducting, reducing, and executing, all common to electronics and computer systems.
Applicant's specification does not provide any indication that the points borrowing computer program (claims 1, 9, merely recites a program with no clear structure), user computer program (claims 1, 9, 12, merely recites a program with no clear structure), non-transitory computer-readable storage medium (claim 12), and one or more computer processors (claim 12) are anything other than generic, off-the-shelf computer components. Therefore, the claims do not amount to significantly more than the abstract idea (i.e. “PEG” Step 2B=No).
Thus, based on the detailed analysis above, claims 1-8 and 12-19 are not patent eligible.
Claim Rejections - 35 USC § 103
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, 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.
Claims 1-8 and 12-19 are rejected under 35 U.S.C. 103 as being unpatentable over Dalmia (U.S. Pub No. 2007/0129955).
Regarding claims 1, 9, 12, Dalmia teaches receiving, by a points borrowing computer program and from a user computer program associated with a user, a selection of a good or service to purchase from a good/service provider using loyalty points (Paragraphs 0058, 0082), automatically identifying an identification of a date for an event associated with the purchase of the good/service (Paragraph 0082, since the advanced loyalty points used on a purchase is “associated” with the purchase, the reimbursement date for advanced loyalty points used on a purchase is a date of an event that is “associated” with the purchase); determining, by the points borrowing computer program, that the user does not have sufficient loyalty points in a user loyalty point account for the purchase (Paragraph 0060); predicting, by the points borrowing computer program, a predicted number of loyalty points that the user will earn before the date of the event (Paragraph 0017); presenting, by the points borrowing computer program, a difference between a number of loyalty points needed for the purchase and a number of loyalty points in the user loyalty account (Paragraph 0060, “If sufficient loyalty points are not available, participant 1 may be presented with an option to accept a loyalty point advance in an amount sufficient to bridge the gap between the available loyalty points and the required loyalty points to pay for the transaction”); receiving, by the points borrowing computer program, approval to borrow loyalty points necessary for the purchase (Paragraph 0060); approving, by the points borrowing computer program, the purchase and borrowing loyalty points necessary for the purchase (Paragraphs 0011, 0016, 0060); conducting, by the points borrowing computer program, the purchase using loyalty points in the user loyalty point account and the borrowed loyalty points (Paragraphs 0011, 0016), wherein a total number of points for the purchase is fixed when the purchase is conducted (Paragraph 0060, Figure 7, number of points is fixed at 10,000); periodically reducing, by the points borrowing computer program, a borrowed loyalty points balance against new loyalty points earned by the user by redeeming the new loyalty points (Paragraph 0082); determining, the points borrowing computer program and at the date of the event, a final loyalty points deficiency (Paragraphs 0080-0081); and executing, by the points borrowing computer program, a transaction to pay for the final loyalty points deficiency (Paragraphs 0080-0081).
These claims introduce the specific data content of “presenting, by the points borrowing computer program, the predicted number of loyalty points that the user will earn before the date of the event” and “periodically presenting, by the points borrowing computer program, recommendations for earning loyalty points”. It could be argued that Dalmia does not teach such data content. However these differences are only found in the nonfunctional descriptive material and are not functionally involved in the method (or structurally programmed) steps recited. The steps would be performed the same regardless of data content. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of Patentability, see In re Gulack, 703 F.2d 1381, 217 USPQ 401, 404 (Fed. Cir. 1983); In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994). Therefore, it would have been obvious to one of ordinary skill at the time of the invention to have displayed any type of data content. Such data content does not functionally relate to the steps and the subjective interpretation of the data content does not patentably distinguish the claimed invention.
Regarding claims 2, 13, Dalmia teaches a current loyalty point price for the good or service is less than a future loyalty point price for the good or service on the date of the event (Paragraph 0083, including interest that is paid by the date of repayment, the total price paid for the good ends up being more at the date of repayment that it would be just paying the price up front).
Regarding claims 3, 14, Dalmia does not appear to specify the good or service is to be provided at a later date. However, Dalmia does teach that a purchased product being an airline ticket has been old and well known long before the filing of Applicant’s invention (Paragraph 0003, purchase of an airline ticket means the service of the flight will be provided at a later date). It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to offer any product for sale, including airline tickets, in order to appeal to a wide array of customers.
Regarding claims 4, 15, Dalmia does not appear to specify the good or service comprises hotel stay, an airline ticket, or a concert ticket. However, Dalmia does teach that a purchased product being an airline ticket has been old and well known long before the filing of Applicant’s invention (Paragraph 0003). It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to offer any product for sale, including airline tickets, in order to appeal to a wide array of customers.
Regarding claims 5, 16, Dalmia teaches the points borrowing computer program predicts the predicted number of loyalty points that the user will earn before a cut-off date before the date of the event (Paragraph 0084).
Regarding claims 6, 10, 17, Dalmia teaches the loyalty points are borrowed from a loyalty points pool (Paragraphs 0060, 0069, any account from which points are taken to be donated to a borrower is considered a “loyalty points pool”).
Regarding claims 7, 18, Dalmia teaches a balance in the user loyalty point account is reduced by a number of borrowed loyalty points (Paragraph 0082).
Regarding claims 8, 11, 19, Dalmia teaches a number of the borrowed loyalty points is based on a loyalty points earning history for the user (Paragraph 0084).
Response to Arguments
Applicant argues “the MPEP cautions that the grouping of Certain Methods of Organizing Human Activity "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, and is not to be expanded beyond these enumerated sub-groupings except in rare circumstances as explained in MPEP § 2106.04(a)(3)." Id. No such circumstances apply here. The claims do not recite any of these activities - the claims provide a technical solution to the problem of conducting a purchase with loyalty points when the user does not have sufficient loyalty points for the transaction”. However, Applicant claims that none of the enumerated subgrouping activities are present in the claim language, but then admits that the claims provide a solution to “conducting a purchase”. The conducting of a purchase, with any currency, including loyalty points, is irrefutably a commercial interaction including sales activities. Further, the conducting of a purchase is not a technical problem and the solution provided is not a technical solution, but rather a solution to the abstract idea. An improvement to an abstract idea is merely an improvement to ineligible subject matter, and is not statutory. In the SAP decision (See SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163, 127 USPQ2d 1597, 1599 (Fed. Cir. 2018)), the courts found that an improvement made to the abstract idea is not patent eligible. SAP v. Investpic: Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because there are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms. Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non-abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract.
Applicant argues “Here, the additional elements of "predicting, by the points borrowing computer program, a predicted number of loyalty points that the user will earn before the date of the event”, "presenting, by the points borrowing computer program, a difference between a number of loyalty points needed for the purchase and a number of loyalty points in the user loyalty account”, "presenting, by the points borrowing computer program, the predicted number of loyalty points that the user will earn before the date of the event," and "receiving, by the points borrowing computer program, approval to borrow loyalty points necessary for the purchase" integrates the alleged judicial exception into a practical application by using the prediction of the predicted number of loyalty points to borrow loyalty points. These elements together recite a meaningful way of using the alleged judicial exception beyond generally linking the use of the judicial exception to a particular technological environment“. However, the limitations recited by Applicant are not additional elements, but rather part of the abstract idea. Further, the steps of presenting and receiving are representative of mere data transmission or display, which is considered insignificant extra-solution activity. The predicting of a number of loyalty points is a simple broad calculation that is merely applied by the points borrowing computer program. Therefore, this argument is not persuasive.
Applicant argues “Dalmia discloses borrowing loyalty points with a reimbursement date for the loyalty points. This is not the identification of a good or service, and the receipt of a date for an event associated with a purchase. The date identified by Dalmia is a date by which all borrowed loyalty points must be repaid, see id. at 0080, and is independent of a date for an event associated with a purchase”. However, the claim language states “a date for an event associated with the purchase of the good or service”. Merriam Webster Online Dictionary defines “associate” as “to bring together or into relationship in any of various intangible ways (as in memory or imagination)”. Since the advanced loyalty points are used on a purchase, the advanced points are “associated” with the purchase. Therefore, the reimbursement date for advanced loyalty points used on a purchase is a date of an event that is “associated” with the purchase.
Applicant argues “Despite considering historical transaction data for the participant, Dalmia does not predict a number of loyalty points that the user will earn before the date of the event. Rather, Dalmia discloses determining a number of loyalty points available in the form of an advance. There is no specific disclosure of the consideration of a deadline, such as a data of an event as claimed”. However, according to Paragraph 0017 of Dalmia, historical transaction data is used to determine the number of points to advance to a user. Claim 2 of Dalmia further states that payback history is also considered. When the amount of advanced points are determined, this is taken to read on the amount that the system predicts a user will earn (and therefore be able to repay) before the date of the event, based on how much a user has spent in the past and how much a user has paid back in the past.
Applicant argues “instead of periodically reducing the loyalty account balance, Dalmia appears to only reduce the balance at the end of the reimbursement period or a billing due date”. However, this is an inaccurate reading of the reference. Figure 16 of Dalmia displays an account statement. The period for the statement appears to be monthly (May 1 2005 – May 30 2005), with a final due date for repayment listed below (06/30/06). At the bottom of the statement, it has a column for “points repaid this period” and a column for “outstanding points balance”. Therefore, the reduction appears to occur periodically, and in the case of Figure 16, monthly.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/MICHAEL BEKERMAN/Primary Examiner, Art Unit 3621