DETAILED ACTION
This Office action is in reply to application no. 19/037,129, filed 25 January 2025. Claims 1-20 are pending and are considered below.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. These claims are directed to computer systems or software, but include a step not performed by a computer at all, specifically that a “commercial transaction involves [a] merchant supplying a physical product to [an] account holder”. There is no nexus between this and the claimed system or software, rendering the claims indefinite.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 19 and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because they are directed to a “computer program product”. The broadest reasonable interpretation of a computer program product includes software per se, and there is nothing in the originally-filed application that explicitly requires it to include hardware. Software per se is a list of instructions, which is neither a process, machine, manufacture nor a composition of matter. To overcome this rejection, the Examiner suggests structuring the claim as a Beauregard claim, e.g. “one or more non-transitory computer readable media comprising”, followed by the claim as drafted.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claims 1-18 are directed to statutory categories of invention, as each is directed to a method (process) or server (machine); claims 19 and 20 are not, as explained above.
The claim(s) recite(s) one step of data gathering (receiving transaction data), two steps of transmitting data (sending data characterizing an incentive at two points during the process), two steps of nondescriptly making determinations (determining a membership classification and determining a membership interchange fee), and a step of creating information (generating an incentive), plus details about what the data represents to people.
First, as all this relates to management of incentives, it recites a fundamental business practice and a commercial interaction, each of which is among the “certain methods of organizing human activity” deemed abstract. Second, in the absence of computers, these are steps which can be performed mentally or with paper records.
A store manager can gather data about individual account holder’s purchases, can create incentives verbally or by writing them on a paper, can make determinations mentally and can send information to others verbally or by sending written messages on paper. None of this presents any practical difficulty and none requires any technology beyond a pen and paper.
This judicial exception is not integrated into a practical application because aside from the bare inclusion of generic, networked computers and nondescript use of AI, nothing is done beyond what was set forth above, which does not go beyond generally linking the abstract idea to the technological environment of generic, networked, AI-enabled computers. See MPEP § 2106.05(h).
As the claims only manipulate data pertaining to financial transactions, customer incentives and the like, they do not improve the “functioning of a computer” or of “any other technology or technical field”. See MPEP § 2106.05(a). They do not apply the abstract idea “with, or by use of a particular machine”, MPEP § 2106.05(b), as the below-cited Guidance is clear that a generic computer is not the particular machine envisioned.
They do not effect a “transformation or reduction of a particular article to a different state or thing”, MPEP § 2106.05(c). First, such data, being intangible, is not a particular article at all. Second, the claimed manipulation is neither transformative nor reductive; as the courts have pointed out, in the end, data are still data.
They do not apply the abstract idea “in some other meaningful way beyond generally linking [it] to a particular technological environment”, as the lack of technical and algorithmic detail in the claims is so as not to go beyond such a general linkage.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional claim limitations, considered individually and as an ordered combination, are insufficient to elevate an otherwise-ineligible claim.
Taking claims 10 and 19 together, they include a computer system and software; based on the steps performed (e.g. sending information to other systems) the computer must implicitly be connected to a network. These elements are recited at a high degree of generality and the specification is clear, ¶ 117, that “any type of general purpose microprocessor” will suffice, which encompasses a generic computer.
It only performs generic computer functions of nondescriptly manipulating information and sharing information with persons and/or other devices. Generic computers performing generic computer functions, without an inventive concept, do not amount to significantly more than the abstract idea.
The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. In light of Recentive1, the use of known machine-learning techniques where the only purported improvement lies in the type of data being manipulated is not, per se, sufficient.
The claim limitations when considered in ordered combination – that is, a generic computer performing a possibly-chronological sequence of abstract steps while using known machine-learning techniques – does nothing more than when they are analyzed individually. The other independent claims are simply different embodiments but are likewise directed to a generic computer performing, essentially, the same process.
The dependent claims further do not amount to significantly more than the abstract idea: claims 2, 4-8, 11 and 13-17 are simply further descriptive of the type of information being manipulated, and claims 3, 9, 12, 18 and 20 simply recite further, abstract manipulation of data.
The claims are not patent eligible. For further guidance please see MPEP § 2106.03 – 2106.07(c) (formerly referred to as the “2019 Revised Patent Subject Matter Eligibility Guidance”, 84 Fed. Reg. 50, 55 (7 January 2019)).
Conclusion
As no rejection is made herein under 35 U.S.C. § 102 or 103, a brief review of the state of the art at the relevant time (the present claims have priority to February 2014) is in order. Murphy et al. (U.S. Publication No. 2014/0129423, filed 4 November 2012) disclose a transaction cost recovery system [title] in which an “acquirer” (third party credit card processor) may “deduct a transaction cost” from a payment, which may be called a “processing network fee” or “interchange”. [0007] Information about a “membership level” is maintained. [Pg. 2, table 3]
Eldon et al. (WIPO Publication No.2007/090605) disclose a system for identifying fraudulent customers [title] that uses a “neural network” trained on “historical transaction data”. [pg. 5, lines 6-7] It may summarize customers based on a “behaviour profile” [pg. 6, line 17] and may provide a website for “donating [to] charity”. [pg. 14, line 15]
Turley et al. (U.S. Patent No. 8,725,553, filed 29 July 2009) disclose a value determining system [title] that includes “interchange revenue” among the inputs to the determination. [Col. 1, lines 16-17] But none of these, alone or if combined, teach or suggest every limitation of the claims of the present invention, in particular the detail as to how the entire transaction is performed and managed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT C ANDERSON whose telephone number is (571)270-7442. The examiner can normally be reached M-F 9:00 to 5:30.
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/SCOTT C ANDERSON/ Primary Examiner, Art Unit 3694
1 Recentive Analytics, Inc. v. Fox Corp. et al., 134 F.4th 1205, 1216 (Fed. Cir. 2025)
