DETAILED ACTION
Status of the Application
In response filed on March 10, 2026, the Applicant amended claims 1, 4, 7, 10, 13, and 16; and cancelled claims 3, 5, 6, 9, 11, 12, 15, 17, and 18. Claims 1, 2, 4, 7, 8, 10, 13, 14, and 16 are pending and currently under consideration for patentability.
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 .
Response to Amendments and Arguments
v Applicant’s arguments, with respect to the rejection of amended independent claims 1, 7, and 13 (as well as each of the dependent claims) under 35 U.S.C. §103 have been considered, and are persuasive. Although no particular claim limitation is novel, the Examiner is persuaded that
v Applicant’s arguments, with respect to the rejection of claims 1, 2, 4, 7, 8, 10, 13, 14, and 16 under 35 U.S.C. 101 have been fully considered and are not persuasive. The rejections of claims 1, 2, 4, 7, 8, 10, 13, 14, and 16 under 35 U.S.C. 101 have been maintained accordingly.
Applicant specifically argues that
1) “Applicant respectfully submits that the Office's characterization of Applicant's claims improperly overgeneralizes the claims and strips away the concrete mechanisms recited. As amended, the independent claims do not merely recite an outcome ("authorize a coupon") or a generalized business practice. Applicant's amended claims recite a specific technical processing pipeline with defined data structures and message content requirements that govern how the authorization is performed…These limitations are not a "commercial interaction" themselves. They define how a computing system structures and processes a tokenized authorization request message, resolves a token through mapping data, identifies applicable coupon data through a database association, and gates authorization through fraud model analysis prior to transmitting an authorizing response.”
Examiner respectfully disagrees with Applicant’s first argument.
The Examiner did not improperly overgeneralize the claims. The Examiner specifically identified each of the limitations that set forth the abstract idea. The only limitations omitted from the characterization of the abstract idea are the requirements for the requirement for the “receiving…using…identifying…determining…performing…and transmitting steps” to be performed using a general purpose computer (e.g., recitation of “a computing system comprising: a database having…a communication interface; a processor; and a memory device storing computer-executable instructions thereon, that when executed by the processor, cause the processor to perform the operations of… via the communication interface… via the communication interface” (claim 1), “performed by a computer system comprising a database…… via a communication interface… via the communication interface” (claim 7), and “a non-transitory computer-readable medium storing one or more instructions that, when executed by one or more processors, cause the one or more processors to” (claim 13)), the requirement for the coupon token to be digital (e.g., the recitation of “a digital coupon token…the digital coupon token… digital coupon token” (claims 1, 7, and 13)), and the requirement for the authorization request and response message to be received/transmitted from/to a merchant computer (e.g., the recitation of “from a merchant computing device… to the merchant computing device” (claims 1, 7, and 13)). This does not amount to stripping away “the concrete mechanisms recited”. These “additional” limitations are equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer, and/or serves merely to generally link the use of the judicial exception to a particular technological environment or field of use.
Examiner disagrees that the claims recite a “specific technical processing pipeline”. The claims involve receiving an authorization request, and using information from that request to determine whether or not to authorize the transaction (e.g., in part by using other stored information to determine whether or not to authorize the transaction/redemption). The specificity of the data that is included in the request, stored in the database and/or otherwise used to determine whether or not to authorize the transaction (including the type/sequence of data analysis) is of little significance here (e.g., because novelty and non-obviousness are not determinative of eligibility). This process is only a “pipeline” insofar as it comprises receiving information, analyzing that information (e.g., using other stored information), and transmitting a response. This process is only “technical” in that computers are used to perform the analysis, that certain information is represented digitally, and exchanged between computers.
Applicant specifically argues that
2) “The Office's alternative "mental processes" rationale is likewise inapposite when the amended claim language is applied. The Office's observation/evaluation framing depends on treating "receiving,""using,""identifying," and "determining" as if they were free floating mental steps, but the amended claims require computer-implemented operations performed on specific computerized artifacts: (i) mapping table token resolution; (ii) database associations linking VCN and unique coupon program ID; (iii) parsing and using an encoded custom data field; and (iv) fraud model analysis gating tied to transmission of an authorizing response message. These are not steps that a human can practically perform "in the mind" as the claim requires. The Office's mental process grouping therefore rests on an oversimplified reading that ignores the claim's recited data structures and the required transaction message processing context..”
Examiner respectfully disagrees with Applicant’s second argument.
The specific “artifacts” are only “computerized” in that Applicant’s claim language requires a general-purpose computer to perform the steps, that certain information is digital, and that certain information (the request/response) be communicated with a computer. These limitations are equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer, and/or serves merely to generally link the use of the judicial exception to a particular technological environment or field of use. A human being is capable of receiving a coupon authorization request message from a merchant (e.g., wherein the authorization request message comprises all of the data listed in the claim, including an SKU and unique coupon program ID “encoded in a custom data field”). Absent the requirement for the receiving to be performed by a computer and from a merchant computing device via a communication interface, a human may receive this information physically using pen and paper. A human is also capable of storing information in a database (which Examiner notes, Applicant’s specification explains may be an “body of data” or “structured collection of records” – see [0020]). Even if the database were required to be stored in a computer, this again would be equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. A human being is also capable of comparing the received information to the stored data, retrieving corresponding stored data, identifying associated data, making determinations using the data, analyzing certain data with a fraud model, and transmitting an authorization response. Applicant fails to explain why a manual approach to performing these functions could not be performed in the human mind or with paper and pen, even if a less desirable alternative.
Applicant specifically argues that
3) “Here, the amended independent claims are not a results-only "authorize coupon" instruction. Rather, the claims require a particular data framework and control flow in an authorization pipeline: (i) the authorization request message must include both the digital coupon token and the unique coupon program ID, with the product SKU data and unique coupon program ID encoded together in a custom data field; (ii) the system must resolve the digital coupon token to a VCN via token-to-VCN mapping table retrieval; (iii) the system must identify coupon data based on one or more of the retrieved VCN or the unique coupon program ID using the database stored VCN-to-coupon program ID association; (iv) the system must enforce purse/date/SKU restrictions; and (v) the system must perform fraud model analysis and transmit an authorizing response message only when the coupon transaction passes the fraud model analysis in addition to the restriction checks. These limitations meaningfully limit the claim scope to a specific technical implementation of tokenized coupon authorization and thereby integrate any alleged abstract idea into a practical application…Applicant respectfully submits that this "apply it" characterization is an oversimplification that fails to evaluate the ordered combination, as required by USPTO guidance. The amended claims do not merely say "apply coupon authorization on a computer." They recite how the system structures and processes the authorization request message, resolves tokenized identifiers via mapping table retrieval, uses a database association between VCN and program ID for coupon data identification, and gates authorization based on restriction checks and fraud model analysis prior to transmitting an authorizing response. These are precisely the type of concrete technical elements that USPTO guidance requires examiners to evaluate as an ordered combination rather than collapsing them into an overgeneralized "commercial interaction" characterization.”
Examiner respectfully disagrees with Applicant’s third argument.
As discussed above with respect to Applicant’s first and second arguments, the specificity of the data that is included in the request, stored in the database, and/or otherwise used to determine whether or not to authorize the transaction is of little significance here (e.g., because novelty and non-obviousness are not determinative of eligibility). Specificity (e.g., whether a claims recite a “specific way” of doing something) is relevant with respect to the inquiry of whether the claims are directed to a technical solution to a technical problem and/or a technical improvement (e.g., because in order to show the claims are directed to a technical solution to a technical problem and/or a technical improvement, it must be shown that the claims recite a particular way of achieving the solution/improvement, as opposed to merely claiming the idea of a solution or outcome). However, Applicant has not identified any alleged technical solution to a technical problem and/or a technical improvement to which the claims are directed. Applicant instead appears to merely argue these details are important because they meaningfully limit the claim scope to a specific implementation of tokenized coupon authorization. However, merely limiting a claim to a particular way of doing something and/or novelty/non-obviousness are not determinative of eligibility. Novelty or non-obviousness of any of the steps/formulas is not the standard for eligibility and are not determinative of eligibility. See Diamond v. Diehr, 450 U.S. 175, 188-89, (1981 - the novelty of a process or its steps is not relevant to determining whether the claimed subject matter is patentable). Elec. Commc’n Techs., LLC v. ShoppersChoice.com, LLC, 958 F.3d 1178, 1183 (Fed. Cir. 2020 - “[E]ven taking as true that claim 11 is ‘unique,’ that alone is insufficient to confer patent eligibility [when] the purported uniqueness of claim 11... is itself abstract.”’); Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161, 1169 (Fed. Cir. 2019 – “merely reciting an abstract idea by itself in a claim—even if the idea is novel and non-obvious—is not enough to save it from ineligibility’’). SAP, 898 F.3d at 1163 (“We may assume that the techniques claimed are ‘[g]roundbreaking, innovative, or even brilliant,’ but that is not enough for eligibility.”) (citation omitted).
Although the claims recite generic computers such that the coupon redemption and transactions are occurring via computers and therefore within a computing environment (i.e., “electronic transaction message processing”), the underlying process is that of coupon tracking and processing/redemption. Coupon tracking and processing/redemption is not a computerrelated technology or technological environment. That computers are being used to implement the coupon tracking and processing/redemption does not transform the underlying business processes in to a computer-related technology or technological environment. Relatedly, “preventing fraudulent coupons from being redeemed” is not a technical improvement, and the desire to prevent fraudulent coupons from being redeemed is not a “technology-based problem. This is a non-technical business problem. Furthermore, the claimed coupon tracking/redemption process does not result in any technical improvement to computer functionality/capabilities. Any improvement here is an improvement to the underlying abstract idea (e.g., an improved coupon tracking/redemption process which may result in preventing fraudulent coupons from being redeemed), not a technical improvement to computer functionality/capabilities, an improvement to a computer-related technology or technological environment, and does not amount to a technology-based solution to a technology-based problem.
Applicant specifically argues that
4) “Additionally, under Step 2B, Applicant submits that the ordered combination of claim limitations, as a whole, recites an unconventional arrangement of operations in a specific sequence with specific technical data artifacts, which supplies an inventive concept. In the Action, the Office asserts that the recited additional elements are well- understood, routine, and conventional, and further takes Official Notice with respect to certain generic computer functions. Applicant respectfully disagrees. First, Step 2B must consider whether the ordered combination amounts to significantly more, not whether individual computing components (e.g., "a database,""a processor,""memory,""receiving/transmitting") are, in isolation, conventional. The Office's conventionality assertion does not substantively analyze the ordered combination of: the custom data field encoding of product SKU data and unique coupon program ID in the authorization request message; the token-to-VCN mapping table retrieval keyed by a digital coupon token; the database stored association between VCN and unique coupon program ID used for coupon data identification based on one or more of those values; and the conditional transmission of an authorizing response message based on restriction checks and the coupon transaction passing fraud model analysis.
Second, the Office's "routine" characterization overlooks that the amended claims recite specific data structures and association logic and a specific gating sequence that meaningfully constrain claim scope and are integral to the authorization decisioning.”
Examiner respectfully disagrees with Applicant’s fourth argument.
Step 2B is concerned with “additional” elements, including the combination of “additional” elements (see MPEP 2106.05 “Instead, an "inventive concept" is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself. Alice Corp., 573 U.S. at 27-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966)). This is not to be confused with merely limiting a claim to a particular way of doing something and/or novelty/non-obviousness (e.g., a combination of steps/functions, a detailed description of the information being analyzed, etc.). However, this is what Applicant’s argument does, by asserting “that the ordered combination of claim limitations, as a whole, recites an unconventional arrangement of operations in a specific sequence with specific technical data artifacts” and subsequent reference to “the custom data field encoding of product SKU data and unique coupon program ID in the authorization request message; the token-to-VCN mapping table retrieval keyed by a digital coupon token; the database stored association between VCN and unique coupon program ID used for coupon data identification based on one or more of those values; and the conditional transmission of an authorizing response message based on restriction checks and the coupon transaction passing fraud model analysis” (none of which are “additional” elements). Examiner maintains that the combination of additional elements (e.g., the combination of a computer system having a communication interface and a processor and a memory devices, a digital authorization request from a merchant computer, and a digital coupon authorization message transmitted to the merchant computer) was well-understood, routine, and conventional. Any unconventionality is found only in the type of data being analyzed, and the specific data analysis steps used to determine whether to authorize the transactions, not in the additional elements.
v Applicant’s arguments, with respect to the Double Patenting rejection of amended claims 1, 2, 4, 7, 8, 10, 13, 14, and 16 over claims 1-20 of U.S. Patent No. 11,551,255 B2 have been fully considered and are not persuasive. See updated rejection below.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
v Claims 1, 2, 4, 7, 8, 10, 13, 14, and 16 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of US Patent No. 11,551,255 (corresponding to US Non-provisional Application No. 17/407,414) in view of Dobson et al. (U.S. PG Pub No. 2017/0140385 , May 18, 2017- hereinafter "Dobson”), Byrd (U.S. PG Pub No.20130325575 - hereinafter "Byrd”); and Howe (U.S. PG Pub No. 2016/0132879 May 12, 2016 - hereinafter "Howe”). Although the conflicting claims are not identical, they are not patentably distinct from each other. With respect to claims 1, 2, 4, 7, 8, 10, 13, 14, and 16, although the conflicting claims are not identical, they are not patentably distinct from each other.
Claims 1-20 of US Patent No. 11,551,255 do not appear to explicitly disclose the fraud analysis limitations recited claims 1, 2, 4, 7, 8, 10, 13, 14, and 16 in the instant invention (e.g., “performing a fraud model analysis, including: analyzing one or more of the VCN or the unique coupon program ID using a fraud model; and determining that the coupon transaction satisfies a predetermined authorization criterion; and based on the satisfaction of the predetermined authorization criterion…authorizing” (claims 1, 7, and 13) or “ based on the analyzing of the one or more of the VCN or the unique coupon program ID, determining a fraud score; comparing the fraud score to a predetermined threshold score; and determining that the fraud score is within the threshold score.” (claims 4, 10, 16). However, Dobson discloses these features ([0020] & [0025]-[0028]). Dobson suggests it is advantageous to include these steps, because doing so can provide an efficient, effective, and configurable mechanism to enable an issuer to mitigate fraud risk within a configurable/pre-specified tolerance ([0004] & [0028], [0068], & [0079]-[0080]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify each of the claims of US Patent No. 11,551,255 to include these steps/functions, as taught by Dobson, because doing so can provide an efficient, effective, and configurable mechanism to enable the issuer to mitigate fraud risk within a configurable/pre-specified tolerance.
Claims 1-20 of US Patent No. 11,551,255 do not appear to explicitly disclose the product SKU data and the unique coupon program ID being encoded in a custom data field. However, Howe discloses processing discounts via credit card processing network where an SKU for a purchased product is included in a custom data field of an authorization request formatted using ISO 8583 standard used to determine associated pricing information/rules associated with the particular item ([0066]-[0069]) and Byrd discloses a system for processing coupons including receiving an authorization request formatted using ISO 8583 standard with a coupon identifier (unique coupon program ID) encoded in a custom data field ([0054] & [0077] & [0078]). Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. That is in the substitution of the location/format of the SKU data in the authorization request of Howe and the location/format of the unique coupon program ID in the authorization request of Byrd, for that of the combination of the claims of Patent ‘255 in view of Dobson. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious.
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.
v Claim(s) 1, 2, 4, 7, 8, 10, 13, 14, and 16 is/are rejected under 35 U.S.C. 101 because 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.
Step 1:
Claim(s) 7, 8, and 10 is/are drawn to methods (i.e., a process), claim(s) 1, 2, and 4 is/are drawn to systems (i.e., a machine/manufacture), and claim(s) 13, 14, and 16 is/are drawn to non-transitory computer-readable media (i.e., a machine/manufacture). As such, claims 1, 2, 4, 7, 8, 10, 13, 14, and 16 is/are drawn to one of the statutory categories of invention (Step 1: YES).
Step 2A - Prong One:
In prong one of step 2A, the claim(s) is/are analyzed to evaluate whether it/they recite(s) a judicial exception.
Claim 1 (representative of independent claim(s) 7 and 13) recites/describes the following steps;
a database having coupon data, a unique coupon program identifier (ID) associated with the coupon data, and a data mapping table stored thereon, the coupon data including a coupon value, a date restriction, and a product SKU restriction, the data mapping table including token-to-virtual card number (VCN) mapping data associating a VCN to a digital coupon token, the database storing an association between the VCN and the unique coupon program ID
receiving, from a merchant…a coupon authorization request message requesting authorization of a coupon transaction, the coupon authorization request message including authorization data comprising the…coupon token, the unique coupon program ID, a transaction date, and product SKU data; the product SKU data and the unique program ID being encoded in a custom data field;
using the…coupon token, retrieving the VCN from the data mapping table;
identifying the coupon data based on one or more of the retrieved VCN or the unique coupon program ID;
determining that the coupon value is less than an amount held in a prepaid purse associated with the…coupon token, the transaction date is within the date restriction, and the product SKU data matches the product SKU restriction;
performing a fraud model analysis, including: analyzing one or more of the VCN or the unique coupon program ID using a fraud model; and determining that the coupon transaction satisfies a predetermined authorization criterion; and
based on the satisfaction of the predetermined authorization criterion, transmitting…a coupon authorization response message to the merchant…the coupon authorization response message authorizing a coupon transaction for the coupon value
These steps, under its broadest reasonable interpretation, describe or set-forth a business process for authorizing application of a coupon to a transaction. More specifically, the inventive process for authorizing application of a coupon to a transaction comprises storing a collection of coupon data (i.e., having a database having coupon data, a unique coupon program identifier (ID) associated with the coupon data, and a data mapping table stored thereon, the coupon data including a coupon value, a date restriction, and a product SKU restriction, the data mapping table including token-to-virtual card number (VCN) mapping data associating a VCN to a digital coupon token, the database storing an association between the VCN and the unique coupon program ID), receiving a coupon authorization request message from a merchant comprising specific data (authorization data comprising a coupon token (i.e. code that is a proxy for other sensitive information), a unique coupon program ID, a transaction date, and product SKU data - the product SKU data and the unique program ID being encoded in a custom data field), using the coupon token to retrieve a VCN number from a data mapping table, identifying coupon data (e.g., coupon redemption restrictions) associated with the VCN or the unique coupon program ID, determining that the coupon value is less than an amount held in a prepaid purse associated with the coupon (and coupon token, and VCN), determining that the transaction date is within the date restriction, determining that the product SKU data matches the product SKU restriction, performing a fraud model analysis, including: analyzing one or more of the VCN or the unique coupon program ID using a fraud model; and determining that the coupon transaction satisfies a predetermined authorization criterion, and transmitting a coupon authorization response message to the merchant authorizing a coupon transaction for the coupon value.; This process amounts to a commercial or legal interactions (specifically, an advertising, marketing or sales activity or behavior). These limitations therefore fall within the “certain methods of organizing human activity” subject matter grouping of abstract ideas.
Additionally, and/or alternatively, each of the above-recited steps/functions, under their broadest reasonable interpretation, encompass a human manually (e.g., in their mind, or using paper and pen) performing one or more concepts performed in the human mind, such as one or more observations, evaluations, judgments, opinions, but for the recitation of generic computer components. For example, the “receiving” step is an observation, the “using”, “identifying”, “determining” and “performing” steps are each one or more observations or evaluations. Furthermore, creating a database (i.e., collection of data) can be accomplished manually using pen and paper. If one or more claim limitations, under their broadest reasonable interpretation, covers performance of the limitation(s) in the mind but for the recitation of generic computer components, then it falls within the “mental processes” subject matter grouping of abstract ideas.
As such, the Examiner concludes that claim 1 recites an abstract idea (Step 2A – Prong One: YES).
Independent claim(s) 7 and 13 recite/describe nearly identical steps (and therefore also recite limitations that fall within this subject matter grouping of abstract ideas), and this/these claim(s) is/are therefore determined to recite an abstract idea under the same analysis.
Each of the depending claims likewise recite/describe these steps (by incorporation - and therefore also recite limitations that fall within this subject matter grouping of abstract ideas), and this/these claim(s) is/are therefore determined to recite an abstract idea under the same analysis. Any element(s) recited in a dependent claim that are not specifically identified/addressed by the Examiner under step 2A (prong two) or step 2B of this analysis shall be understood to be an additional part of the abstract idea recited by that particular claim. The same reasoning is similarly applicable to the limitations in the remaining dependent claims, and their respective limitations are not reproduced here for the sake of brevity.
Step 2A - Prong Two:
In prong two of step 2A, an evaluation is made whether a claim recites any additional element, or combination of additional elements, that integrate the exception into a practical application of that exception. An “addition element” is an element that is recited in the claim in addition to (beyond) the judicial exception (i.e., an element/limitation that sets forth an abstract idea is not an additional element). The phrase “integration into a practical application” is defined as requiring an additional element or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that it is more than a drafting effort designed to monopolize the exception.
The claim(s) recite the additional elements/limitations of
“a computing system comprising: a database…a communication interface; a processor; and a memory device storing computer-executable instructions thereon, that when executed by the processor, cause the processor to perform the operations of… via the communication interface… via the communication interface” (claim 1)
“from a merchant computing device… to the merchant computing device” (claims 1, 7, and 13)
“a digital coupon token…the digital coupon token… digital coupon token” (claims 1, 7, and 13)
“performed by a computer system comprising a database…… via a communication interface… via the communication interface” (claim 7)
“a non-transitory computer-readable medium storing one or more instructions that, when executed by one or more processors, cause the one or more processors to” (claim 13)
“said processor further programmed to perform an operation comprising” (claims 2-6)
“the one or more instructions further cause the one or more processors to…” (claims 14-18)
The requirement to execute the claimed steps/functions using “a computing system comprising: a database having…a communication interface; a processor; and a memory device storing computer-executable instructions thereon, that when executed by the processor, cause the processor to perform the operations of… via the communication interface… via the communication interface” (claim 1) or “performed by a computer system comprising a database…… via a communication interface… via the communication interface” (claim 7) or “a non-transitory computer-readable medium storing one or more instructions that, when executed by one or more processors, cause the one or more processors to” (claim 13), the recitation of “said processor further programmed to perform an operation comprising” (claims 2-6), and the recitation of “the one or more instructions further cause the one or more processors to…” (claims 14-18) is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. Applicant’s own disclosure explains that these “additional” elements may be embodied as a general-purpose computer (e.g., the published specification at paragraphs [0101]-[0103] “a standalone, client or server computer system…In various embodiments, computer hardware, such as a processor, may be implemented as special purpose or as general purpose. For example…encompassed within a general-purpose processor or other programmable processor…general-purpose”). This/these limitation(s) do/does not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application (see MPEP 2106.05(f)).
The recited additional element(s) of “from a merchant computing device… to the merchant computing device” (claims 1, 7, and 13) and/or “a digital coupon token…the digital coupon token… digital coupon token” (claims 1, 7, and 13) serves merely to generally link the use of the judicial exception to a particular technological environment or field of use. Specifically, it/they serve(s) to limit the application of the abstract idea to computing environments, such as computerized point-of-sale systems/commerce, distributed computing environments and/or the internet, where information is represented digitally, exchanged between computers over a network, and presented using graphical user interfaces. This reasoning was demonstrated in Intellectual Ventures I LLC v. Capital One Bank (Fed. Cir. 2015), where the court determined "an abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer"). This/these limitation(s) do/does not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application (see MPEP 2106.05(g)).
The recited element(s) of “transmitting, via the communication interface, a coupon authorization response message to the merchant computing device, the coupon authorization response message authorizing a coupon transaction for the coupon value”, even if considered to be an “additional” element for the purpose of the eligibility analysis, would simply append insignificant extra-solution activity to the judicial exception, (e.g., mere post-solution activity in conjunction with an abstract idea). The term “extra-solution activity” is understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. The recited additional element(s) do are deemed “extra-solution” because all uses of the recited judicial exceptions require such data output, and because such solution-outputting/transmission steps have long been held to be insignificant pre/post-solution activity. This/these limitation(s) do/does not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application (see MPEP 2106.05(h) and (g)).
Furthermore, although the claims recite a specific sequence of computer-implemented functions, and although the specification suggests certain functions may be advantageous for various reasons (e.g., business reasons), the Examiner has determined that the ordered combination of claim elements (i.e., the claims as a whole) are not directed to an improvement to computer functionality/capabilities, an improvement to a computer-related technology or technological environment, and do not amount to a technology-based solution to a technology-based problem. For example, Applicant’s published specification suggests that it is advantageous to implement the claimed business process because doing so can help mitigate coupon redemption fraud or counterfeit coupon redemption (see, for example, Applicant’s published disclosure at paragraphs [0003]-[0004], [0097]). These are non-technical business advantages/improvements. At most, the ordered combination of claim elements is directed to a non-technical improvement to an abstract idea itself (e.g., an improved process for authorizing the redemption of a coupon).
Dependent claims 8 and 10 fail to include any additional elements. In other words, each of the limitations/elements recited in respective dependent claims 8 and 10 is/are further part of the abstract idea as identified by the Examiner for each respective dependent claim (i.e. they are part of the abstract idea recited in each respective claim). For example, claim 8 recites “further comprising: comparing the coupon value to an amount of available funds held in the prepaid purse”. This is an abstract limitation which further sets forth the abstract idea encompassed by claim 8. This limitation is not an “additional element”, and therefore it is not subject to further analysis under Step 2A- Prong Two or Step 2B. The same logic applies to each of the other dependent claims, whose limitations are not being repeated here for the sake of brevity and clarity. With respect to the other dependent claims not specifically listed here - each of the limitations/elements recited in these dependent claims other than those identified as being “additional” elements above (at the beginning of the Prong One analysis), are further part of the abstract idea encompassed by each respective dependent claim (i.e. it should be understood that these limitations are part of the abstract idea recited in each respective claim).
The Examiner has therefore determined that the additional elements, or combination of additional elements, do not integrate the abstract idea into a practical application. Accordingly, the claim(s) is/are directed to an abstract idea (Step 2A – Prong two: NO).
Step 2B:
In step 2B, the claims are analyzed to determine whether any additional element, or combination of additional elements, is/are sufficient to ensure that the claims amount to significantly more than the judicial exception. This analysis is also termed a search for an "inventive concept." An "inventive concept" is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself. Alice Corp., 134 S. Ct. at 2355, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966)
As discussed above in “Step 2A – Prong 2”, the requirement to execute the claimed steps/functions using “a computing system comprising: a database having…a communication interface; a processor; and a memory device storing computer-executable instructions thereon, that when executed by the processor, cause the processor to perform the operations of… via the communication interface… via the communication interface” (claim 1) or “performed by a computer system comprising a database…… via a communication interface… via the communication interface” (claim 7) or “a non-transitory computer-readable medium storing one or more instructions that, when executed by one or more processors, cause the one or more processors to” (claim 13), the recitation of “said processor further programmed to perform an operation comprising” (claims 2-6), and the recitation of “the one or more instructions further cause the one or more processors to…” (claims 14-18) is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations therefore do not qualify as “significantly more” (see MPEP 2106.05(f)).
As discussed above in “Step 2A – Prong 2”, the recited additional element(s) of “from a merchant computing device… to the merchant computing device” (claims 1, 7, and 13) and/or “a digital coupon token…the digital coupon token… digital coupon token” (claims 1, 7, and 13) serves merely to generally link the use of the judicial exception to a particular technological environment or field of use. These limitations therefore do not qualify as “significantly more” (see MPEP 2106.05(g)).
As discussed above in “Step 2A – Prong 2”, the recited element(s) of “transmitting, via the communication interface, a coupon authorization response message to the merchant computing device, the coupon authorization response message authorizing a coupon transaction for the coupon value”, even if considered to be an “additional” element for the purpose of the eligibility analysis, would simply append insignificant extra-solution activity to the judicial exception, (e.g., mere post-solution activity in conjunction with an abstract idea). These element(s), taken individually or in combination, additionally amount to well-understood, routine and conventional activities previously known to the industry, specified at a high level of generality, appended to the judicial exception. These elements, taken individually or in combination, are well-understood, routine and conventional to those in the field of transaction/coupon processing. These limitations therefore do not qualify as “significantly more”. (see MPEP 2106.05(d)). This conclusion is based on a factual determination. The determination that receiving data/messages over a network is well-understood, routine, and conventional is supported by Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362; TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014), and MPEP 2106.05(d)(II), which note the well-understood, routine, conventional nature of receiving data/messages over a network. Furthermore, Examiner takes Official Notice that these steps were well-understood, routine, and conventional at the effective filing date of the claimed invention. Furthermore, the lack of technical detail/description in Applicant’s own specification provides implicit evidence that these steps were well-understood, routine, and conventional.
Viewing the additional limitations in combination also shows that they fail to ensure the claims amount to significantly more than the abstract idea. When considered as an ordered combination, the additional components of the claims add nothing that is not already present when considered separately, and thus simply append the abstract idea with words equivalent to “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer, generally link the abstract idea to a particular technological environment or field of use, append the abstract idea with insignificant extra solution activity associated with the implementation of the judicial exception, (e.g., mere data gathering, post-solution activity), and appended with well-understood, routine and conventional activities previously known to the industry.
Dependent claims 8 and 10 fail to include any additional elements. In other words, each of the limitations/elements recited in respective dependent claims 8 and 10 is/are further part of the abstract idea as identified by the Examiner for each respective dependent claim (i.e. they are part of the abstract idea identified by the Examiner to which each respective claim is directed).
The Examiner has therefore determined that no additional element, or combination of additional claims elements is/are sufficient to ensure the claim(s) amount to significantly more than the abstract idea identified above (Step 2B: NO).
Indication of Novel and Non-Obvious Subject Matter
Independent claims 1, 7, and 13 recite novel and non-obvious subject matter. Each of the dependent claims similarly recite novel and non-obvious subject matter by virtue of their dependency on one of these claims.
The following is an examiner’s statement of reasons for indication of novel and non-obvious subject matter:
The closest prior art of record is Gilman et al. (U.S. PG Pub No. 2012/0271697 October 25, 2012); McFarren et al. (U.S. PG Pub No. 2020/0273022, August 27, 2020 - hereinafter "McFarren”); VanDeburg et al. (U.S. PG Pub No.2013/0144700 June 6 2013 - hereinafter "VanDeburg”); Byrd (U.S. PG Pub No.20130325575 - hereinafter "Byrd”); Howe (U.S. PG Pub No. 2016/0132879 May 12, 2016 - hereinafter "Howe”); Dobson et al. (U.S. PG Pub No. 2017/0140385 , May 18, 2017- hereinafter "Dobson”); Wane et al. (U.S. PG Pub No. 2009/0144164, June 4, 2009); Mann et al. (U.S. PG Pub No. 2014/0278881 September 18, 2014 - hereinafter "Mann”); Gratry et al. (World Intellectual Property Organization Pub No. WO 2015/008084, January 22, 2015); Sampey et al. (U.S. PG Pub No. 2021/0004860, January 7, 2021); Ramanathan et al. (U.S. Patent No 10,929,8540); “Why are Travel Management Companies (TMCs) Switching To Virtual Payments?” (published on May 23 2017 at https://www.wexinc.com/insights/blog/wex-travel/tmcs-switching-virtual-payments/)
Gilman discloses a system for processing coupon redemption via credit card processing network. Discloses a database having coupon data, a data mapping table stored thereon, the coupon data including a coupon value, a date restriction, the data mapping table including token-to-virtual card number (VCN) mapping data associating a VCN to a digital coupon token receiving a coupon authorization request message from merchant computer requesting authorization of a coupon transaction, the coupon authorization request message including authorization data comprising the VCN and a transaction date, identifying the coupon data based on one or more of the retrieved VCN or the unique coupon program ID;determining that the coupon value is less than an amount held in a prepaid purse associated with the coupon token, the transaction date is within the date restriction, performing a fraud analysi to determine that the coupon transaction satisfies a predetermined authorization criterion; and based on the satisfaction of the predetermined authorization criterion, transmitting a coupon authorization response message to the merchant computer authorizing a coupon transaction for the coupon value.
McFarren discloses generating and using tokenized versions of VCN numbers during transactions with a transaction processing system. McFarren discloses data mapping table stored thereon, the data mapping table including token-to-virtual card number (VCN) mapping data, the request message including a digital token, and using the digital token, retrieving a VCN from the data mapping table.
VanDeburg discloses coupon redemption via credit card processing network involving authorization requests wherein the coupon data including a product SKU restriction, the request message including product SKU data, and further teaches determining that the product SKU data matches the product SKU restriction.
Byrd discloses a system for processing coupons including receiving an authorization request formatted using ISO 8583 standard with a coupon identifier (unique coupon program ID) encoded in a custom data field, and retrieving coupon data from a database based on the unique coupon program ID.
Howe discloses processing discounts via credit card processing network where an SKU for a purchased product is included in a custom data field of an authorization request formatted using ISO 8583 standard used to determine associated pricing information/rules associated with the particular item.
Dobson discloses based on analyzing the VCN, determining a fraud score, comparing the fraud score to a predetermined threshold score; and determining that the fraud score is within the threshold score
Wane discloses digitizing paper coupons and loading them into a mobile wallet via scanning a coupon barcode with a mobile device and generating a token representing the coupon and transmitting it to the mobile wallet for subsequent redemption.
Mann discloses receiving a selection from the user computing device via the communications interface to link the digital coupon token to a transaction card, and automatically processing the digital coupon token for a transaction associated with the transaction card.
Gratry discloses generating virtual card numbers that are linked to specific coupons so that a consumer can redeem the coupon and the system uses the VCN and existing transaction processing network to validate, control, and authorize the redemption of the offer/voucher.
Sampey discloses generating virtual card numbers that are linked to specific coupons so that a consumer can redeem the coupon and the system uses the VCN and existing transaction processing network to validate, control, and authorize the redemption of the offer/voucher.
Ramanathan discloses tokenizing coupons to enable efficient redemption at a POS.
“Why are Travel Management Companies (TMCs) Switching To Virtual Payments?” discloses generating VCNs for transactions and controlling transactions/redemptions.
As per claims 1, 7, and 13, the closest prior art of record taken either individually or in combination with other prior art of record fails to teach or suggest the specific combination of limitations/requirements presently recited. Specifically, although the prior art discloses SKU product restrictions for coupon redemption (VanDeburg, Howe), discloses encoding an SKU for a purchased product in a custom data field of an authorization request to enforce pricing rules (Howe), discloses authenticating coupon redemption using unique coupon program IDs (Byrd, Wane), including where an SKU for a purchased product is included in a custom data field of an authorization request (Byrd), discloses processing coupon redemption via credit card processing network using VCNs and VCN data and transaction date included in authorization requests (Gilman, Gratry, Sampey), using tokenized versions of VCN numbers during transactions with a transaction processing system use of including token-to-virtual card number (VCN) mapping data and wherein an authorization request message includes the digital token (McFarren, Gratry, Ramanathan), determining fraud analysis to determine satisfaction of predetermined authorization criterion (Gilman, Dobson), including use of fraud models/scoring and associated thresholds (Dobson) – there is no teaching or suggestion absent Applicants’ own disclosure to combine the specific combination of features presently recited other than with impermissible hindsight.
Claims 2, 4, 8, 10, 14, and 16 depend upon claims 1, 7, or 13 and have all the limitations of claims 1, 7 or 13, and therefore similarly recite novel and non-obvious subject matter.
Conclusion
No claim is allowed
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 JAMES M DETWEILER whose telephone number is (571)272-4704. The examiner can normally be reached on Monday-Friday from 8 AM to 5 PM ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Waseem Ashraf can be reached at telephone number (571)-270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES M DETWEILER/Primary Examiner, Art Unit 3621
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