DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/20/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-8 and 12-19 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1 and 12, these claims recite the limitations “automatically identifying, by the points borrowing computer program, a date of the purchase of the good or service”, “predicting, by the points borrowing computer program, a predicted number of loyalty points that the user will earn before the date of the purchase”, “presenting, by the points borrowing computer program, the predicted number of loyalty points that the user will earn before the date of the purchase”, and “determining, the points borrowing computer program and at the date of the purchase, a final loyalty points deficiency”, or substantially similar recitations. The instant specification does not have support for monitoring a date of the actual purchase, but rather a date of the use of the product or service that was purchased. Examples given for this include a travel date, a reservation date, or a concert date (See specification Paragraph 0043). There is no embodiment outlined within the specification where the date that is monitored is of the actual purchase itself. Therefore, this represents impermissible new matter and must be removed in Applicant’s next response. All dependent claims inherit this rejection through dependency from claims 1 and 12.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-8 and 12-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1 and 12, these claims recite the limitations “predicting, by the points borrowing computer program, a predicted number of loyalty points that the user will earn before the date of the purchase”, “conducting, by the points borrowing computer program, the purchase using loyalty points in the user loyalty point account and the borrowed loyalty points”, “automatically 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”, and “determining, the points borrowing computer program and at the date of the purchase, a final loyalty points deficiency”. This order of events makes little sense and makes the system unworkable. Supposedly, the system will predict the number of points a user will earn before the date of purchase, then the purchase is conducted. Therefore, the date of purchase has now passed. However, the system then begins periodically reducing the balance based on the number of loyalty points earned, and determines a final loyalty point deficiency at the date of the purchase. However, there is no possible time frame for the periodic reduction, since the purchase is conducted and the final point deficiency is calculated on the same date, that being the date of the purchase. This represents an impossible order of events, and must be corrected in Applicant’s next response. In the interest of applying prior art, Examiner will interpret these limitations in light of the instant specification, and read these limitations as pertaining to “a date for an event associated with a purchase”, and not the purchase itself. All dependent claims inherit this rejection through dependency from claims 1 and 12.
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 of 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 purchase; 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 purchase; 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; identifying, by the points borrowing computer program, recommendations for earning loyalty points; periodically presenting the recommendations for earning loyalty points; automatically 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 purchase, 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 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 purchase; 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; identifying recommendations for earning loyalty points; periodically presenting the 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 purchase, 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, identifying, 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, identifying, 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) in view of Ladds (U.S. Pub No. 2019/0197575).
EXAMINER NOTE: See the 112b rejection above for claim interpretation. As stated above, in the interest of applying prior art, Examiner will interpret the claimed date in light of the instant specification, and read the date as pertaining to “a date for an event associated with a purchase”, and not the purchase itself.
Regarding claims 1, 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); automatically 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).
Dalmia does not appear to specify identifying, by the points borrowing computer program, recommendations for earning loyalty points and periodically presenting, by the points borrowing computer program, the recommendations for earning loyalty points. However, Ladds teaches identifying, by the points borrowing computer program, recommendations for earning loyalty points and periodically presenting, by the points borrowing computer program, the recommendations for earning loyalty points (Paragraphs 0032, 0049). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to identify and present recommendations on how to earn loyalty points in order to encourage users to perform more activities that would result in more loyalty points earned.
Dalmia does not appear to specify “presenting, by the points borrowing computer program, the predicted number of loyalty points that the user will earn before the date of the event”. However, as explained above, Dalmia does teach predicting, by the points borrowing computer program, a predicted number of loyalty points that the user will earn before the date of the event. Further, Dalmia teaches presenting numerous different types of information to the user (Figures 15-16). Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the invention to have displayed any relevant already predicted/calculated data to the user. Such display of data content does not functionally relate to any further steps, and it any additional information provided could be useful to the user.
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, 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, 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 claims to apply or use the judicial exception in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. Indeed, the points borrowing computer program predicts a predicted number of loyalty points that the user will earn before the date of the purchase, identifies recommendations for earning loyalty points, automatically periodically reduces a borrowed loyalty points balance against new loyalty points earned by the user by redeeming the new loyalty points, and executes a transaction to pay for a final loyalty points deficiency. These additional elements - which are technical in nature - provide a technical solution to the issue of efficiently using reward points for a future event”. However, the issue of efficiently using reward points for a future event 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 “Applicant has amended claim 1 to refer to the data of the purchase. Therefore, Dalmia, which discloses a date by which all borrowed loyalty points must be repaid, see Dalmia at 0080, does not disclose this element”. However, as explained by the 112a and 112b rejections above, not only does Applicant not have support for this amendment, but this change to the claim language does not make sense and results in inoperability. Therefore, the claims have been interpreted in light of the specification and Dalmia still reads over this.
Applicant argues “Notably, Fig. 16 does include a column labeled "Points Repaid This Period," but the number of points repaid is 0, indicating that no repayment mas made. Thus, despite having this column, nothing suggests that the points are periodically reduced”. However, Merriam Webster Online Dictionary defines “periodically” as “from time to time”. Figure 16 of Dalmia irrefutably teaches repayments on a monthly basis, and even if there is a month where the repayment is 0, this still constitutes repayment “from time to time”, and therefore periodically. With regard to the amendment to this limitation, Merriam Webster defines “automatically” as “done or produced as if by machine”. There is a computer process involved in the reduction of the amount in the system when the user makes a payment which is representative that automatic processes are used. Therefore, the step of “automatically periodically reducing” is still taught by Dalmia.
All other arguments are believed to have been addressed either by the above responses or by the new grounds of rejection presented herein.
Conclusion
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/MICHAEL BEKERMAN/Primary Examiner, Art Unit 3621
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