DETAILED CORRESPONDENCE
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This non-final first office action on merits is in response to the Patent Application filed on 24 February 2025. Claims 1-18 are pending and considered below.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. This application is a continuation of U.S. Patent Application 17/314,271, filed May 7, 2021, now issued patent 12,265,986 which is a continuation of U.S. Patent Application 16/746,883, filed January 19, 2020 (now U.S. Patent No. 11,004,104), which is a continuation of U.S. Patent Application 15/008,787, filed January 28, 2016 (now U.S. Patent No. 10,552,861), which is a continuation- in-part of U.S. Patent Application 14/262,149, filed April 25, 2014, which is a continuation-in- part of U.S. Patent Application 13/835,372, filed March 15, 2013, which in turn claimed the benefit of Provisional Application No. 61/763,462, filed February 11, 2013, all of which are hereby incorporated by reference in their entireties.
Therefore, the instant invention is afforded a priority date of 11 February 2013.
Claim Rejections - 35 USC § 101
Under the requirements of the 2019 PEG Revised Step 2A Prongs One and Two and MPEP 2106 the analysis of the instant invention is determined to be directed to a judicial exception and further directed to a practical application and technical improvement and therefore the instant invention is determined to be eligible under the requirements of the statute.
Under the requirements of Revised Step 2A Prong One and as well MPEP 2106 the instant invention is determined to be directed to an abstract idea or judicial exception similar to commercial or legal interactions including agreements in the form of contracts, legal obligations and advertising marketing or sales activities or behaviors.
Under the requirements of Revised Step 2A Prong Two and as well MPEP 2106 the instant invention is determined to be directed to a practical application directed to the coordination and delivery of data across multiple disparate technically related systems as well as the segregation of benefits with respect to the applications of benefits to transactions. Examiner acknowledges Applicants amendments to the claims which include elements as derived from written description paragraphs [49]-[54] which include detailed transaction processing methods which include coordination of remote and transactional systems with respect to enabling the application of benefits to transactions while the transaction is occurring and the provision of benefits relevant to a determination of benefit eligibility.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined 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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,265,986. Although the claims at issue are not identical, they are not patentably distinct from each other because as noted below in BOLD the claims are similar and thus subject to rejection under the requirements of the statute.
Instant invention 19/061345
Claims 1, 7, and 13. A computer-implemented method comprising:
storing, by one or more processors and in one or more databases, (i) a first set of benefits available to a user for a plurality of eligible items that are not individually identified, and ii) a second set of benefits available to the user for individually identified eligible items;
receiving, by the one or more processors and from a first remote system, transaction data comprising a plurality of transaction items and associated with a first transaction, and a first identifier associated with the user;
determining, by the one or more processors and based on accessing the first set of benefits and the second set of benefits in the one or more databases using the first identifier, that at least one of the first set of benefits or the second set of benefits applies to at least one transaction item of the plurality of transaction items;
generating, by the one or more processors and based on applying the at least one of the first set of benefits or the second set of benefits to the at least one transaction item, a first benefit amount;
adjusting, by the one or more processors and in the one or more databases, at least one of the first set of benefits or the second set of benefits based on the first benefit amount;
receiving, by the one or more-processors and from a second remote system, information associated with a second transaction, the information comprising:
i) a total of eligible purchases, and
ii) a second identifier associated with the user, wherein the second identifier enables access to the first set of benefits and not the second set of benefits;
determining, by the one or more processors and based on the second identifier, that the first set of benefits applies to the second transaction;
generating, by the one or more processors, a second benefit amount based on determining that the first set of benefits applies to the second transaction;
adjusting, by the one or more processors and in the one or more databases, the first set of benefits based on the second benefit amount; and
transmitting, by the one or more processors, the second benefit amount to the second remote system for application during the second transaction.
Examiner Note: The non-blackened claim limitations above are disclosed by Claim 23 of the issued and related patent 12,265,986 and therefore are as well subject to the Double Patenting issue.
Issued Patent 12,265,986
1. A computer-implemented method comprising:
storing, by one or more processors and in one or more databases, (i) a first set of benefits available to a user for a plurality of eligible items that are not individually identified, and ii) a second set of benefits available to the user for individually identified eligible items;
receiving, by the one or more processors and from a remote system, transaction data comprising a plurality of transaction items, and a single identifier associated with the user;
determining, by the one or more processors and based on accessing the first set of benefits and the second set of benefits in the one or more databases using the single identifier, that at least one of the first set of benefits or the second set of benefits applies to at least one transaction item of the plurality of transaction items;
generating, by the one or more processors and based on applying the at least one of the first set of benefits or the second set of benefits to the at least one transaction item, a benefit amount;
adjusting, by the one or more processors and in the one or more databases, at least one of the first set of benefits or the second set of benefits based on the benefit amount;
generating, by the one or more processors, a transaction treatment instruction associated with the benefit amount based on whether the first set of benefits or the second set of benefits were applied to the at least one transaction item; and
transmitting, by the one or more processors, the benefit amount and the transaction treatment instruction to the remote system for application during a transaction associated with the transaction data.
Reasons for Allowance
Claims 1-18 are allowed over the prior art.
The following is the Examiner’s statement of reasons for allowance:
The closest prior art includes the combination of Lanford (20100057554), Taylor et al. (20130339167); and Muthugopalakrishnan et al. (20120066049).
Lanford and Taylor do not teach multiple identifiers associated with a single user. Additionally, while Muthugopalakrishnan teaches multiple identifiers being associated with a single user, Muthugopalakrishnan is limited to the concept that two identifiers for a user can be used to link to a shared set of benefits. In the claims not only are multiple identifiers associated with one group of benefits, one identifier is associated with multiple benefits. The first identifier is used to access three sets of benefits, one associated only with a first identifier, one associated only with a second identifier, and one also associated with a third identifier (discount benefits). The net result is that a user can be associated with different identifiers, and the selection of identifier leads to a different set of benefits being accessed. Yet these benefits are also shared between identifiers.
None of the closet prior art references teach an ability to provide all three types of benefits in a single transaction with the presentation of a single identifier to the server, nor does any reference teach this particular ordering of benefits application. Moreover, the combination of references does not seem sufficient to justify a combination to cover all the limitations of the independent claims as it would be hindsight reasoning to combine the individual elements disclosed in the prior-art in order to achieve Applicant's claimed invention.
Therefore the instant invention is determined allowable over the previously cited to combination of Lanford, Taylor and Muthugopalakrishnan.
Claims 1, 7, and 13. A computer-implemented method comprising:
storing, by one or more processors and in one or more databases, (i) a first set of benefits available to a user for a plurality of eligible items that are not individually identified, and ii) a second set of benefits available to the user for individually identified eligible items;
receiving, by the one or more processors and from a first remote system, transaction data comprising a plurality of transaction items and associated with a first transaction, and a first identifier associated with the user;
determining, by the one or more processors and based on accessing the first set of benefits and the second set of benefits in the one or more databases using the first identifier, that at least one of the first set of benefits or the second set of benefits applies to at least one transaction item of the plurality of transaction items;
generating, by the one or more processors and based on applying the at least one of the first set of benefits or the second set of benefits to the at least one transaction item, a first benefit amount;
adjusting, by the one or more processors and in the one or more databases, at least one of the first set of benefits or the second set of benefits based on the first benefit amount;
receiving, by the one or more-processors and from a second remote system, information associated with a second transaction, the information comprising:
i) a total of eligible purchases, and
ii) a second identifier associated with the user, wherein the second identifier enables access to the first set of benefits and not the second set of benefits;
determining, by the one or more processors and based on the second identifier, that the first set of benefits applies to the second transaction;
generating, by the one or more processors, a second benefit amount based on determining that the first set of benefits applies to the second transaction;
adjusting, by the one or more processors and in the one or more databases, the first set of benefits based on the second benefit amount; and
transmitting, by the one or more processors, the second benefit amount to the second remote system for application during the second transaction.
Moreover, the missing claimed elements from the combination of Lanford, Taylor and Muthugopalakrishnan are not found in a reasonable number of references. Yet even if the missing claimed elements were found in a reasonable number of references, a person of ordinary skill in the art at the time the invention was made would not have been motivated to include these missing elements in the combination of Lanford, Taylor and Muthugopalakrishnan because a person of ordinary skill in the art at the time of Applicant's invention would not find a motivation for such a combination.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. Please see attached References Cited form 892.
See Tiku et al. (20120303430) for disclosures related to the collection of data from users across a wide range of traveling and the processing of the transactions to determine if any rewards are available for the transaction. See at least paras. [83]-[113].
See Yoder et al. (20120059702) for disclosures related to the implementation of triggers with respect to the analysis of collected data with respect to transaction data, such as records of transactions made via credit accounts, debit accounts, prepaid accounts, bank accounts, stored value accounts and the like, is processed to provide information for various services, such as reporting, benchmarking, advertising. See at least paras. [33]-[71].
See Thomas et al. (20110295670) for disclosures related to the implementation of an individualized discount and reward server which operates linked databases coordinating transaction related to customers purchase activities and associated retailer account and providing customized offers. See at least paras. [101]-[148].
See Dickelman (20110071892) for disclosures related to the collection of a wide range of transactions and related provision of rewards based upon customer activities as related to a wide range of purchases. See at least paras. [33]-[60].
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/DAVID J STOLTENBERG/Primary Examiner, Art Unit 3685