DETAILED ACTION
Status of Claims
1. This is a Final office action in response to communication received on 04/22/2026. Claims 1-9 are pending and examined herein.
Claim and Specification Objections
2. Specification: As-filed specification (hereinafter spec.) paragraph (hereinafter para.) [0005] recites “In one embodiment, the card benefits tracking provided by the issuer
comprise discounts, purchase protection, extended protection, price protection,
return protection, travel protection and, rental car insurance.”
Claim 3: It recites “wherein the card benefits tracking provided by the issuer comprise discounts, purchase protection, extended protection, price protection, return protection, travel protection and, rental car insurance” however a comma is misplaced and appears after recitation of and, i.e. “and,” which should be recited before recitation of and, i.e. “, and” – appropriate corrections are required. Thus, the above noted para. of the as-filed specification and claim 3 are objected to for the above noted deficiencies.
Claim Rejections - 35 USC § 101
3. 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 1-9 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. Next using the 2019 Revised Patent Subject Matter Eligibility Guidances (hereinafter 2019 PEG) the rejection as follows has been applied.
Under step 1, analysis is based on MPEP 2106.03, Claims 1-9 are a method. Thus, each claim 1-9, on its face, is directed to one of the statutory categories (i.e., useful process, machine, manufacture, or composition of matter) of 35 U.S.C. §101.
Under Step 2A Prong One, per MPEP 2106.04, prong one asks does the claim recite an abstract idea, law of nature, or natural phenomenon? In Prong One examiners evaluate whether the claim recites a judicial exception, i.e. whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim. While the terms "set forth" and "described" are thus both equated with "recite", their different language is intended to indicate that there are two ways in which an exception can be recited in a claim. For instance, the claims in Diehr, 450 U.S. at 178 n. 2, 179 n.5, 191-92, 209 USPQ at 4-5 (1981), clearly stated a mathematical equation in the repetitively calculating step, and the claims in Mayo, 566 U.S. 66, 75-77, 101 USPQ2d 1961, 1967-68 (2012), clearly stated laws of nature in the wherein clause, such that the claims "set forth" an identifiable judicial exception. Alternatively, the claims in Alice Corp., 573 U.S. at 218, 110 USPQ2d at 1982, described the concept of intermediated settlement without ever explicitly using the words "intermediated" or "settlement."
Next, per 2019 PEG, to determine whether a claim recites an abstract idea in Prong One, examiners are now to: (I) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (II) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 PEG. If the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I, analysis should proceed to Prong Two in order to evaluate whether the claim integrates the abstract idea into a practical application.
(I) An abstract idea as recited per abstract recitation of claims 1-9 [i.e. recitation with the exception of additional elements, which are first considered under step 2A prong two when claim(s) is/are reconsidered as a whole and exclusively under step 2B inquiries below, i.e. under step 2A prong one the Examiner considered claim recitation other than the additional elements (which once again are expressly noted below) to be the abstract recitation] (II) is that of informing a cardholder about the value of benefits by computing a benefit score associated with their credit card based on evaluation of card benefits and allowing the user to enroll in one or more additional benefit(s) which is certain methods of organizing human activity (but for its implementation in network based environment - which is considered further under prong two and step 2B analysis as set forth below).
The phrase "Certain methods of organizing human activity" applies to fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). Further, see MPEP 2106.04(a)(2) II. A-C.
Therefore, the identified limitations fall within the subject matter groupings of abstract ideas enumerated in Section I of 2019 PEG, thus analysis now proceeds to Prong Two in order to evaluate whether the claim integrates the abstract idea into a practical application.
Under Step 2A Prong Two, per MPEP 2106.04, prong two asks does the claim recite additional elements that integrate the judicial exception into a practical application? In Prong Two, examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception. If the additional elements in the claim integrate the recited exception into a practical application of the exception, then the claim is not directed to the judicial exception (Step 2A: NO) and thus is eligible at Pathway B. This concludes the eligibility analysis. If, however, the additional elements do not integrate the exception into a practical application, then the claim is directed to the recited judicial exception (Step 2A: YES), and requires further analysis under Step 2B (where it may still be eligible if it amounts to an ‘‘inventive concept’’).
Next, per 2019 PEG, Prong Two represents a change from prior guidance. The analysis under Prong Two is the same for all claims reciting a judicial exception, whether the exception is an abstract idea, a law of nature, or a natural phenomenon. Examiners evaluate integration into a practical application by: (I) Identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (II) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations laid out by the Supreme Court and the Federal Circuit.
Accordingly, the examiner will evaluate whether the claims recite one or more additional element(s) that integrate the exception into a practical application of that exception by considering them both individually and as a whole.
The claim elements in addition to the abstract idea, i.e. additional elements, as recited in claims 1-9 at least are computer program executed by a backend electronic device, and display of a customer electronic device (per claim 1) and a link on the customer device to enroll (per claim 6). Remaining claims either recite the same additional element(s) as already noted above or simply lack recitation of an additional element, in which case note prong one as set forth above.
As would be readily apparent to a person having ordinary skill in the art (hereinafter PHOSITA), the additional elements are generic computing devices. The additional elements are simply utilized as generic tools to implement the abstract idea or plan as "apply it" instructions (see MPEP 2106.05(f)). The additional elements are generic as they are described at a high level of generality, see at least as-filed Figs. 1, 5, and their associated disclosure. The processor executing the "apply it" instruction is further connected to one or more device merely sending/receiving data over a network, note receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014). Obtaining/retrieving data is considered insignificant extra solution activity (see MPEP 2106.05(g)). Further, the processor analyzes obtained/retrieved user card benefits tracking data to ascertain valuation score to allow user to make informed decision in using alternate merchant to earn benefits tracking and/or enroll in benefits tracking that provide additional benefit(s). Thus, the process is similar to collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group) - certain result here is a tailored content based on information about the user (Int. Ventures v. Cap One Bank ‘382 patent). The abstract idea is intended to be merely carried out in a technical environment such as collecting/retrieving and communicating/displaying data via a network where collected/retrieved data is analyzed to communicate via a link additional card benefit(s) as personalized suggestion(s) that a user may enroll in, however fail to contain meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment (see MPEP 2106.05(h)).
Accordingly, viewed as a whole, these additional claim element(s) do not provide any additional element that integrates the abstract idea (prong one), into a practical application (prong two) upon considering the additional elements both individually and as a combination or as a whole as they fail to provide: an additional element that reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field; or an additional element that implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim; or an additional element that effects a transformation or reduction of a particular article to a different state or thing; or an additional element that applies or uses the judicial exception, again, 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 as explained above.
Thus, the abstract idea of informing a cardholder about the value of benefits by computing a benefit score associated with their credit card based on evaluation of card benefits and allowing the user to enroll in one or more additional benefit(s) (prong one) is not integrated into a practical application upon consideration of the additional element(s) both individually and as a combination (prong two).
Therefore, under step 2A, the claims are directed to the abstract idea, and require further analysis under Step 2B.
Under step 2B, per MPEP 2106.05, as it applies to claims 1-9, the Examiner will evaluate whether the foregoing additional elements analyzed under prong two, when considered both individually and as a whole provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). The abstract idea of informing a cardholder about the value of benefits by computing a benefit score associated with their credit card based on evaluation of card benefits and allowing the user to enroll in one or more additional benefit(s) - has not been applied in an eligible manner. The claim elements in addition to the abstract idea are simply being utilized as generic tools to execute "apply it" instructions as they are described at a high level of generality. Additionally, the abstract idea is intended to be merely carried out in a technical environment, however fail to contain meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment (Id. or note step 2A prong two).
Regarding, insignificant solution activity such as data gathering or post solution activity such as displaying on interface, the Examiner relies on court cases and publications that demonstrate that such a way to gather data and display information is indeed well-understood, routine, or conventional in the industry or art, at least note as follows:
(i) receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network) [similarly here user's data is retrieved and based on analysis targeted promotions are to be transmitted/displayed over a network to an electronic device];
(ii) (a) Electronic recordkeeping, Alice Corp., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755; and (b) storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93 [similarly here card benefits tracking are electronically stored and retrieved for evaluation and scoring]; and
(iii) Affinity v DirecTV - "The court rejected the argument that the computer components recited in the claims constituted an “inventive concept.” It held that the claims added “only generic computer components such as an ‘interface,’ ‘network,’ and ‘database,’” and that “recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.” Id. at 1324-25 (citations omitted). The court noted that nothing in the asserted claims purported to improve the functioning of the computer itself or “effect an improvement in any other technology or technical field.” Mortgage Grader, 811 F.3d at 1325 (quoting Alice, 134 S. Ct. at 2359)." [similarly here as a post solution benefits tracking to enroll in are promoted to card users].
Therefore the claims here fail to contain any additional element(s) or combination of additional elements that can be considered as significantly more and the claims are rejected under 35 U.S.C. 101 for lacking eligible subject matter.
Claim Rejections - 35 USC § 103
4. 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-5 and 7-8 are rejected under 35 U.S.C. 103(a) as being unpatentable over Rehder et al. (Patent No.: US 11,315,179) referred to hereinafter as Rehder, in view of May Veronica Ebarle Grecsek et al. (Pub. No. US2014/0067503) referred to hereinafter as May, and Woodrick et al. (Pub. No.: US 2021/0142352) referred to hereinafter as Woodrick.
Examiner's Note: Recitation(s) denoted in […] is/are not disclosed by the primary reference, however such recitation is taught by additional reference(s) relied upon by the Examiner.
As per claim 1, Woodrick discloses a method, comprising: (a) retrieving, by a benefits tracking computer program executed by a backend electronic device, an identification of an active credit card issued to a cardholder (see Figs. 1, 3 "306" "314", 7A, 7B, and their associated disclosure; col 21 lines 31-62 note “the credit card recommendation system can identify benefits tracking of currently owned credit cards. For example, the credit card recommendation system can access a database of credit card characteristics, such as an estimated APR, annual fee, cash back, and rewards. The credit card recommendation system can make further determinations, such as credit utilization or balance utilization based on the balance on the credit card and the credit card credit limit”);
(b) retrieving, by the benefits tracking computer program, card benefits tracking for the active credit card from a card benefits tracking database (see Figs. 1, 7A, 7B, and their associated disclosure; col 21 lines 31-62);
(c) retrieving, by the benefits tracking computer program, cardholder benefit information for the cardholder (see Figs. 7A, 7B, and their associated disclosure; col 20 line 66-col 21 line 2; col 21 lines 54-62; col 22 lines 2-14 note “For example, the credit card recommendation system can determine an estimated new APR with possible savings based on current debt and estimated monthly spend. The credit card recommendation system can estimate balance transfer savings based on current APR paid and the APR on a new credit card. The credit card recommendation system can describe the new benefits tracking of the card and how they are different and/or better than currently owned cards, such as via contextual codes”), wherein the card holder benefit information comprises the card benefits used by the cardholder […] (see Figs. 7B, and its associated disclosure; col 22 lines 5-52);
(d) calculating, by the benefits tracking computer program, a benefits tracking value score based on the cardholder benefit information, wherein the benefits tracking value score comprises a list of the card benefits tracking for the active card, a value of each of the card benefits tracking (see Fig. 2, 6A, 6B, 7B and their associated disclosure; col 10 lines 40-64; col 13 lines 23-30; col 20 lines 44-60 note “FIG. 6A illustrates a user interface 600 for displaying credit cards ranked based on a score and displaying reward values for the credit cards, according to some embodiments. The graphical user interface 600 of FIG. 6A illustrates credit cards displayed in order of ranking based on scores for each of the credit cards. The user interface 600 displays Credit Card A, Credit Card B, and Credit Card C, from highest to lowest score. The user interface 600 explains that the credit cards were selected based on credit habits, approval odds, card value, estimated spending, and priority.
In some embodiments, the reward valuation can be dis-played on the user interface. For example, Credit Card A has a rewards valuation of $594, Credit Card B has a valuation of $1,004, and Credit Card Chas a valuation of $644. As displayed in the user interface 600, the order in which the credit cards are displayed may not necessarily be the same as certain characteristics, such as the reward valuation.”), [and an enrollment status for each of the card benefits tracking”; col 22 lines 2-39]; and
(e) displaying, by the benefits tracking computer program, the benefits tracking value score on an electronic device (see Fig. 7B and its associated disclosure; col 20 lines 44-60; col 21 lines 9-15).
Rehder suggests, see existing card benefits see Figs. 7A, 7B, and their associated disclosure and col 22 lines 5-52, however Rehder expressly does not teach […] and the card benefits not used by the cardholder.
May teaches […] and the card benefits not used by the cardholder (see [0030] "For example, one account feature provides premium trip cancellation coverage. If the account is used to pay for a purchase, such as an airline ticket, qualifying for the benefit of the coverage and the account does not already have this account feature, a notification is provided to the account holder to enroll in the account feature, with a fee or without a fee. In one embodiment, the account feature is added without the need for further input from the account holder. In another embodiment, the approval from the account holder is required to add the account feature. If the account has this feature for premium trip cancellation coverage, the qualifying purchase, such as the airline ticket, is to trigger a transaction to purchase insurance at a predefined fee in accordance with the account feature. In one embodiment, a notification is provided to the account holder about the insurance purchase. In one embodiment, the account holder is provided with a choice to approve or disapprove the insurance transaction triggered by the qualifying purchase."; [0081] "An alternate scenario is a non-transaction trigger associated with the payment form-factor, for example, as an overall valuable customer."; [0082] "In one embodiment, the triggers are also detected for the notification of benefits of account features that do not require an additional “for-fee” transaction. For example, the notification of benefits is to inform the account holder of the earning of reward points, rebate cash, discount, etc., triggered by qualifying transactions under loyalty programs."; also see [0055] “In one embodiment, the feature offer engine (113) is to identify events, transactions, etc., that lead to further transactions to invoke the benefit of the account features (e.g., 127, 128), or that lead to loyalty benefits, or rewards. The notification engine (117) is to inform the respective account holders of the opportunity for the transactions and/or the loyalty benefit or rewards.”; [0079] “In one embodiment, the transaction handler (103) is to monitor transactions to detect the trigger (303). Alternatively, a separate engine, such as the feature offer engine (113), is configured to access the transaction data (109) over the network (101) to detect the trigger (303). For example, the transactions can be monitored in real time for airline ticket purchase transactions; and for those transactions, they can be further compared to the list of account holders or accounts that have enrolled in the enhancement feature (e.g., 127).”; [0080] “In some embodiments, triggers (e.g., 303) are detected periodically from settled transactions.” [0083]” In one embodiment, the feature offer engine (113) is to selectively offer features based on a spending threshold and/or a type of spending. For example, when the aggregated spending in a period of time (e.g., previous 12 months) in account A (133) is above a threshold, or when the aggregated spending having the type of spending in the account (133) is above the threshold, the account (133) is offer the feature (127).”; [0084] “In one embodiment, if the spending requirement is not met, the feature (127) is to be removed from the account (133).)”.
Therefore it would be obvious to a PHOSITA before the effective filling date of the invention to modify foregoing suggestions of Rehder in view of the foregoing teachings of May with motivation to provide a better cardholder experience by providing a feature related notification that maybe useful to the card member as suggestions, see at least May [0030] and [0082]-[0083], thereby informing user of a benefit associated with their card that the user has not used.
Rehder suggests ranking cards based on valuation and presenting new card offers, see Figs. 7A, 7B, and their associated disclosure; and May suggests [0082]-[0084], however Rehder in view of May expressly does not teach (d*) [and an enrollment status for each of the card benefits tracking]. Woodrick teaches [and an enrollment status for each of the card benefits tracking] (see [0022] “In some cases, cardholders have some choice in payment card benefits tracking at the time of account creation, but thereafter lack practical options to change their payment card benefits tracking or to activate new benefits tracking on existing payment cards. Instead, card issuers typically issue a new payment card with different or additional benefits tracking to cardholders that desire them. In instances wherein payment cards are auto-debited as payment for various different consumer accounts, resetting all of the consumer accounts with the new payment account information is inconvenient. Tools allowing cardholders to change payment card benefits tracking on an existing card would be desired, and tools allowing issuers to reduce having to reissue cards would likewise be beneficial.”; [0123] “At step 832, one or more tiered bundles of payment card benefits tracking are identified to the individual cardholder, including but not limited to the exemplary tiered benefit bundles described above. At step 834, a plurality of payment card benefit options are presented for self-selection by the individual cardholder without being part of a bundle, allowing the user to custom create a bundle of benefits tracking. At step 836, or more add-on, fee-based payment card benefits tracking option are presented to the individual cardholder. At any of steps 830, 832, 834, 836 at least one merchant rewards or merchant loyalty program option may be presented to the individual cardholder as part of a bundle, a stand-alone option or an a la carte option with or without a fee.”; [0124] “At step 838, benefits tracking selected by the individual cardholder are accepted. At step 840, applicable fees are accepted, and may be processed through multi-party payment processing system and network to the individual cardholder's account. At step 842, the accepted individualized payment card benefit options from the individual cardholder are stored, and at step 844 the stored benefits tracking are applied to eligible payment card transactions made by the individual cardholder at a future time subsequent to acceptance.”; [0125] “The stored benefits tracking may be organized with a data structure such as a cardholder profile that is automatically updated as each cardholder accepts a benefit or benefits tracking at the respective times of acceptance. Messages may be updated for record keeping purposes by the payment system and confirmation messages may be auto-generated to the cardholder, with the selected benefits tracking uniquely being applied as profile rules to subsequent payment card transactions made by each respective cardholder where the payment card benefits tracking are applicable. The profile rules are automatically updated as benefits tracking are added are changed via the benefit assessment system such that the applicable benefits tracking are immediately available to cardholders after selections are made and accepted. Such automated updates of profile rules are output by the benefit assessment system for the processing of subsequent transactions, and improves operation of the payment card system by streamlining data operations in a reduced timeframe while avoiding error in applying the changeable benefits tracking of the cardholder as selections are made. Cardholder experience and goodwill are improved as cardholders may immediately enjoy the value of the benefits tracking chosen with assurance that the benefits tracking are correctly applied.” – thus cardholders can know the benefit(s) enrollment status and modify the benefit(s) by starting or stopping).
Therefore it would be obvious to a PHOSITA before the effective filling date of the invention to modify foregoing suggestions of Rehder in view of May in view of the foregoing teachings of Woodrick with motivation to provide a better cardholder experience by providing tools that allow cardholders to change payment card benefits tracking and would reduction in having to reissue cards by the issuer, see at least [0022] and [0125].
As per claim 2, Rehder in view of May and Woodrick teaches the claim limitations of claim 1. Rehder teaches wherein the step of retrieving, by the benefits tracking computer program, cardholder benefit information for the cardholder comprises: retrieving, by the benefits tracking computer program, card benefits tracking provided by an issuer of the active credit card (see col 8 lines 23-41); and retrieving, by the benefits tracking computer program, card benefits tracking provided by a third-party partner of the issuer (see col 2 lines 28-30; col 16 lines 28-38).
As per claim 3, Rehder in view of May and Woodrick teaches the claim limitations of claim 1. Rehder teaches wherein the card benefits tracking provided by the issuer comprise discounts, (see Figs. 6A, 7A, and their associated disclosure; col 15 lines 8-21) [purchase protection, extended protection, price protection, return protection travel protection and, rental car insurance].
Rehder expressly does not teach [purchase protection, extended protection, price protection, return protection travel protection and, rental car insurance].
Woodrick teaches [purchase protection, extended protection, price protection, return protection travel protection and, rental car insurance] (see [0001]; [0084]).
Therefore it would be obvious to a PHOSITA before the effective filling date of the invention to modify foregoing suggestions of Rehder in view of the foregoing teachings of Woodrick with motivation to provide numerous additional options to choose benefits tracking from which would provide greater chance of cardholders remaining with cardholder that provides extensive options to choose from, which would reduce cardholder attrition, see at least [0003] and [0084].
As per claim 4, Rehder in view of May and Woodrick teaches the claim limitations of claim 2. Rehder teaches wherein the card benefits tracking provided by the third-party partner comprise a third-party discount on a good or service provided by the third-party partner (see Fig. 6A and its associated disclosure; col 2 lines 28-30; col 14 line 62-col 15 line 21; col 16 lines 28-38).
As per claim 5, Rehder in view of May and Woodrick teaches the claim limitations of claim 1. Rehder teaches wherein the cardholder benefit information comprises reward points earned by the cardholder and information on card benefits tracking used by the cardholder (see Fig. 6A and its associated disclosure; col 2 lines 28-30; col 14 line 62-col 15 line 21; col 16 lines 28-38).
As per claim 7, Rehder in view of May and Woodrick teaches the claim limitations of claim 1. Rehder teaches wherein the value of each of the card benefits tracking is calculated by applying a rule (see col 11 lines 40-64; col 12 lines 48-67; col 16 lines 1-27 and lines 43-60).
As per claim 8, Rehder in view of May and Woodrick teaches the claim limitations of claim 1. Rehder teaches wherein the benefits tracking value score is based on a period of time (see col 12 lines 1-30).
5. Claim 6 is rejected under 35 U.S.C. 103(a) as being unpatentable over Rehder in view of May, Woodrick, and Ross et al. (Pub. No.: US 2013/0054333) referred to hereinafter as Ross.
As per claim 6, Rehder in view of May and Woodrick teaches the claim limitations of claim 1. Rehder in view of Woodrick expressly does not teach further comprising: displaying, by the benefits tracking computer program, a link on the customer electronic device to enroll in any unenrolled card benefits tracking.
Ross teaches further comprising: displaying, by the benefits tracking computer program, a link on the customer electronic device to enroll in any unenrolled card benefits tracking (see [0053]; [0057]; [0064]).
Therefore it would be obvious to a PHOSITA before the effective filling date of the invention to modify foregoing suggestions of Rehder in view of May and Woodrick in view of the foregoing teachings of Ross with motivation to conveniently allow users to enroll in rewards program, see at least Ross [0002] and [0057] .
6. Claim 9 is rejected under 35 U.S.C. 103(a) as being unpatentable over Rehder in view of May, Woodrick, and Nelsen (Pub. No.: WO 2019/033076).
As per claim 9, Rehder in view of May and Woodrick teaches the claim limitations of claim 1. Rehder teaches reviewing, by the benefits tracking computer program, past transactions for the cardholder (see Figs. 7A, 7B, and their associated disclosure; col 2 lines 37-40; col 12 lines 39-47).
Rehder in view of Woodrick expressly does not teach identifying, by the benefits tracking computer program, one of the past transactions with a merchant that is ineligible for one of the card benefits tracking; identifying, by the benefits tracking computer program, an alternate merchant with which the past transaction would have been eligible for the one of the card benefits tracking; and suggesting, by the benefits tracking computer program and with the benefits tracking value score, that the cardholder use the alternate merchant.
Nelsen teaches identifying, by the benefits tracking computer program, one of the past transactions with a merchant that is ineligible for one of the card benefits tracking; identifying, by the benefits tracking computer program, an alternate merchant with which the past transaction would have been eligible for the one of the card benefits tracking; and suggesting, by the benefits tracking computer program and with the benefits tracking value score, that the cardholder use the alternate merchant (see [0107] "The purchase tracking module or loyalty manager may inform the user that equity rewards may not be rewarded for the current transaction based on current loyalty selections. In some cases if the user is merely present within, at, or near a business the user is not loyal to, the notification may further include a loyalty-switch offer so that the user may begin to earn rewards and/or privileges associated with the transacting merchant."; [0108] "After presenting the loyalty-switch offer to the user, at 406B, the method 400B continues where the purchase tracking module queries the loyalty manager and/or user loyalties to determine if the user has switched loyalty to the transacting merchant. If the user does not switch loyalty to the transacting merchant and declines the loyalty-switch offer, the method 400B may proceed to 408B where the user earns no equity rewards for the transaction. Contrastingly, if the user does switch loyalty to the transacting merchant, the method 400B may proceed to 410B where the loyalty manager may update the user's loyalties at user loyalties of user accounts."; [0113]).
Therefore it would be obvious to a PHOSITA before the effective filling date of the invention to modify foregoing suggestions of Rehder in view of May and Woodrick in view of the foregoing teachings of Ross with motivation to actively inform or provide suggestions to users on how they can earn more by providing switch and/or enrollment offers to users by evaluating users’ historical data, see at least Nelsen [0107]-[0108].
Response to Applicant’s Remarks
7. The Examiner has withdrawn 112(a) and 112(b) rejections, and updated claims objection in view of filed claim amendments.
Regarding “E. Claim Rejection Under 35 U.S.C. § 101” the Applicant argues “Under Step 2A, Prong Two, the claims integrate any alleged judicial exception into a practical application”; “Once such "meaningful limitation" is found when the limitation "can employ the information provided by the judicial exception," as discussed in Example 46 provided with the October 2019 PEG ( emphasis added).”; “Here, the claims recite the use of the identification of an active credit card issued, the card benefits for the active credit card, and cardholder benefit information for the cardholder to calculate a benefits value score based on the cardholder benefit information, wherein the benefits value score comprises a list of the card benefits for the active card, a value of each of the card benefits, and an enrollment status for each of the card benefits. This information is then displayed to the cardholder. This provide a technical mechanism by which a customer can determine the value of the benefits provided by a certain credit card. Thus, 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.
In addition, on August 4, 2025, the Deputy Commissioner for Patents issued a memorandum entitled "Reminders on evaluating subject matter eligibility of claims under 35 U.S.C. 101." Notably, the reminders included the following:
Examiners are reminded that if it is a "close call" as to whether a claim is eligible, they should only make a rejection when it is more likely than not (i.e., more than 50%) that the claim is ineligible under 35 U.S.C. 101.20 A rejection of a claim should not be made simply because an examiner is uncertain as to the claim's eligibility. In order to make a rejection of a claim under any of the statutory bases (i.e., 35 U.S.C. 101, 102, 103, 112), unpatentability must be established by a preponderance of the evidence.
Memorandum at 5 ( emphasis added). Applicant respectfully submits that, when the claims are interpreted properly, this is not a close call, and the claims are directed to statutory subject matter.
For at least these reasons, Applicant respectfully submits that the claims are directed to statutory subject matter, and respectfully requests that this rejection be withdrawn.”
However, the Examiner respectfully disagrees. Indeed, the claims are squarely directed to the identified abstract idea based on Step 2A prong one and prong two analysis without significantly more based on Step 2B analysis. The rejection has been updated in view of filed claim amendments. The Examiner finds little to no correlation between the unique facts of the instant application and very short excerpts from Example 46 that the Applicant is arguing in view of against prong two analysis. The Examiner maintains that a proper analysis is conducted based on 2019 PEG, based on which upon reconsidering the claims in view of filed claim amendments, the Examiner ascertained under prong two, note “claim elements in addition to the abstract idea, i.e. additional elements, as recited in claims 1-9 at least are computer program executed by a backend electronic device, and display of a customer electronic device (per claim 1) and a link on the customer device to enroll (per claim 6). Remaining claims either recite the same additional element(s) as already noted above or simply lack recitation of an additional element, in which case note prong one as set forth above.
As would be readily apparent to a person having ordinary skill in the art (hereinafter PHOSITA), the additional elements are generic computing devices. The additional elements are simply utilized as generic tools to implement the abstract idea or plan as "apply it" instructions (see MPEP 2106.05(f)). The additional elements are generic as they are described at a high level of generality, see at least as-filed Figs. 1, 5, and their associated disclosure. The processor executing the "apply it" instruction is further connected to one or more device merely sending/receiving data over a network, note receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014). Obtaining/retrieving data is considered insignificant extra solution activity (see MPEP 2106.05(g)). Further, the processor analyzes obtained/retrieved user card benefits tracking data to ascertain valuation score to allow user to make informed decision in using alternate merchant to earn benefits tracking and/or enroll in benefits tracking that provide additional benefit(s). Thus, the process is similar to collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group) - certain result here is a tailored content based on information about the user (Int. Ventures v. Cap One Bank ‘382 patent). The abstract idea is intended to be merely carried out in a technical environment such as collecting/retrieving and communicating/displaying data via a network where collected/retrieved data is analyzed to communicate via a link additional card benefit(s) as personalized suggestion(s) that a user may enroll in, however fail to contain meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment (see MPEP 2106.05(h)).
Accordingly, viewed as a whole, these additional claim element(s) do not provide any additional element that integrates the abstract idea (prong one), into a practical application (prong two) upon considering the additional elements both individually and as a combination or as a whole as they fail to provide: an additional element that reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field; or an additional element that implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim; or an additional element that effects a transformation or reduction of a particular article to a different state or thing; or an additional element that applies or uses the judicial exception, again, 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 as explained above.
Thus, the abstract idea of informing a cardholder about the value of benefits by computing a benefit score associated with their credit card based on evaluation of card benefits and allowing the user to enroll in one or more additional benefit(s) (prong one) is not integrated into a practical application upon consideration of the additional element(s) both individually and as a combination (prong two).
Therefore, under step 2A, the claims are directed to the abstract idea, and require further analysis under Step 2B.”
Thus, contrary to the Applicant’s assertions upon giving the claims their broadest reasonable interpretation in light of the as-filed specification and analyzing them through a proper 2019 PEG based analysis, the Examiner determined that the claims here fail to integrate the abstract idea into practical application.
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and all the references on PTO-892 Notice of Reference Cited should be duly noted by the Applicant as they can be subsequently used during prosecution, at least note the following:
*Being provided initially
- US2022/0092627 see [0025] “An online, computer-implemented system and method of the disclosure provides a solution for selecting a payment card benefit feature that addresses these and other problems. The computer-implemented system and method of the disclosure allows cardholders to optimally select add-on benefit features to their credit, debit and prepaid cards based on the relevance of the benefit feature available to their actual use of the payment card, as well as to a correlation in cardholder demographics and historical transaction behavior relative to other similarly situated cardholders. The system and method of the disclosure likewise provides a payment card benefit feature selection solution allowing consumers to select payment card benefit features in view of the potential estimated value of the benefit feature set for the cardholder.
[0066] In addition to its use as a hub for display and interaction with cardholders concerning benefits, different benefit selection models are supported by the Feature Selection Engine 136 for enhanced cardholder engagement and flexibility. For example, a themed selection model may be implemented wherein a bundle of benefits is organized around a consumer affinity, such as travel or home assistance. The consumer than can select one or more of themed bundles for their payment card. A tiered selection model may also be implemented wherein issuers provide a base level of benefits and cardholders can top up or add to the base level of benefits in lieu of purchasing a benefit bundle with a richer set of benefits. A self-select model may also be implemented wherein cardholders are allowed to select a configurable number of individual benefits from a catalog curated by the issuer. A fee based model is also contemplated wherein consumers may further enhance their card by purchasing individual benefits to apply to their payment card.
[0082] Exemplary clusters such as those described above, and estimated benefit values associated with each cluster, provide a degree of objectivity to the benefit selection process that conventionally has not existed for most cardholders. Instead of subjective beliefs of cardholders regarding the relevance of benefits offered to their actual lifestyle (e.g., how often they travel, how often they purchase electronics, etc.) that may or may not be accurate, data driven assessments are provided to dispel any errors in thinking regarding how their payment cards are actually used and the direct application of benefits to actual cardholder use. The estimated values further provide a clear basis for cardholders to see the practical effect of the benefits offered for their actual lifestyle.
[0124] At steps 830, 832, 834 and 836 different types of individualized payment card benefit options are presented to the individual cardholder in view of the analyzed data of steps 810, 812, 814, 816 and 824. At step 830, one or more themed benefit bundles are identified to the individual cardholder, including but not limited to the exemplary themed benefit bundles described above. At step 832, one or more tiered bundles of payment card benefits are identified to the individual cardholder, including but not limited to the exemplary tiered benefit bundles described above. At step 834, a plurality of payment card benefit options are presented for self-selection by the individual cardholder without being part of a bundle, allowing the user to custom create a bundle of benefits. At step 836, or more add-on, fee-based payment card benefits option are presented to the individual cardholder. At any of steps 830, 832, 834, 836 at least one merchant rewards or merchant loyalty program option may be presented to the individual cardholder as part of a bundle, a stand-alone option or an a la carte option with or without a fee.”
- US12,147,998 col 24 lines 7-16 note "User device 110 may communicate the recommendation to the user while browsing activity is taking place. For instance, again with reference to FIG. 4D, advisor module 126 causes user interface module 121 to present notification 421D to the user while the user is browsing www.abcbagels.com, as illustrated in user interface 401F. As illustrated in FIG. 4D, notification 421D reminds the user that unused reward points are available at “Corner Bagel Shop,” which may be a competitive bagel shop and one of commercial entities 140."
*Previously provided
- Pub. No.: US2019/0114622 see [0003] note "The prior art discloses systems and methods which rate or rank credit cards based on user input using one of two approaches, either net annual rewards a holder is theoretically able to achieve, or an editorial rating system based on the knowledge of the reviewer. One drawback of these approaches is that they fail to take into account other attributes such as insurance coverage, interest rates and a plethora of other common or unique advantages that each card offers. Another drawback is that the rating systems and methods are typically inconsistent, periodically taking into account only one or other of the rewards or attributes."; [0034] note "extended warranty, price protection, purchase assurance, mobile device, satisfaction guarantee, baggage delay insurance, rental car collision damage insurance, rental car theft insurance, hotel burglary insurance, personal effects burglary insurance, lost luggage insurance, stolen luggage insurance, damaged luggage insurance, travel accident insurance and trip cancellation insurance. Output of the insurance generation engine 162 is an intermediate ranking 166 of each of the cards in respective ones of the insurance categories 164."
- Pub. No.: US202/00118155A1 see [0057] note "For example, a customer fit algorithm can be executed for each of the financial products or cards to generate, for example, a customer fit score. The score may be based on a point scale (e.g., 1-10, 1-100, etc.) or any other ranking system. Various customer fit algorithms may be applied, including algorithms based on a customer's transaction history 130, account status 128 (e.g., pending balance, zero balance, etc.), customer profile or demographics 138, current loyalty programs 140 of which the customer is associated, as well as the current cards 142 to which the customer has been issued. Any suitable customer fit algorithm may be performed. Alternatively, the card comparison module 116 can generate a benefit analysis based on the customer's prior transactions and/or based on the impact to the customer if the current activity of the customer remains similar. The benefit analysis can generate a benefit score which may provide an expected relative benefit to a current card 142 or an expected absolute benefit (e.g., $500 more in money back, 20000 more reward points, etc.) based on the analysis."; [0058]; [0112]
- Pub. No.: US2006/0271436 [0109] Each benefits tracking card comprises a card number and an expiration date. For example, a maximum period of 14 months is granted, after which, if not renewed, the card becomes invalid. The URL (or the link to the benefits tracking web site 60) is also written on the card in order to invite people to go online to either activate their benefits tracking card and to become a member 40 or to validate and use their cards if they are already members 40. Optionally, a customer service phone number can be provided by the benefits tracking card. The benefits tracking card numbers or codes represent represents a piece of data for allowing members' profiles to be stored in databases and to be reached by the fundraising organization 20, the central organization 10 or the partnering merchants 30.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIPEN M PATEL whose telephone number is (571)272-6519. The examiner can normally be reached Monday-Friday, 08:30-17:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Waseem Ashraf can be reached on (571)270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DIPEN M PATEL/Primary Examiner, Art Unit 3621
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