DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
Claims 1-18 are cancelled and claims 19-38 are newly added. Claims 19-38 filed April 2, 2025 are pending.
Double Patenting
3. 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).
4. 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).
5. 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.
6. 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.
7. Claims 19-38 are rejected on the ground of provisional nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent 8,566,167, claims 20-40 of U.S. Patent 10,902,448, and claims 19-38 of U.S. Patent 12,277,572. In fact, the ‘167, ‘448, and ‘572 patents are more detailed and more specific and encompasses almost all of the elements of the broader, current ‘626 application as seen below.
8. This is an obviousness nonstatutory double patenting rejection because although the conflicting claims are not identical, they are not patentably distinct from each other because the claimed limitations from the present application and U.S. Patents 8,566,167, 10,902,448, and 12,277,572 above are significantly similar and the claimed features seem to be identical with various obvious alternate methods. The omission of an element with a corresponding loss of function is an obvious expedient. See In re Karlson, 136 USPQ 184 and Ex parte Rainu, 168 USPQ 375. For these reasons, claims 19-38 of the instant application are not identical to claims 1-18 of U.S. Patent 8,566,167, claims 20-40 of U.S. Patent 10,902,448, and claims 19-38 of U.S. Patent 12,277,572, but they are not patentably distinct.
Claim Rejections - 35 USC § 101
9. 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.
10. Claims 19-38 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), an abstract idea without significantly more.
11. Step 1 Statutory Category: Claims 19-38 are directed to a system, all of which are statutory classes of invention.
12. Step 2A – Prong 1: Judicial Exception Recited: Nevertheless, independent claim 19 recites an abstract idea of using data points collected from a customer to provide customer specific offerings. These claims fall under certain methods of organizing human activity, and within certain methods of organizing human activity, the claims specifically fall under commercial or legal interactions.
The independent claim 19 recites the following limitations which fall under commercial
or legal interactions:
…
weight a plurality of data points according to a scoring algorithm that
quantifies a relevance to customer behavior,
weight a plurality of offers according to historical performance data and
customer preferences,
determine an offer, to be provided to a customer, according to the weighted
data points and the weighted offers, wherein the system dynamically adjusts offers according to real-time customer behavior, across in-store and online environments, using an adaptive recommendation
algorithm,
and generate a view of the customer behavior according to the weighted data points; and
…
receive a shopping recap,
provide a digital receipt to the customer,
provide the customer with an incentive according to in-store activity of the
customer and on-line activity of the customer, wherein the incentive is automatically redeemable, if the customer purchases a product associated with the incentive,
link the incentive to a rewards program account associated with the customer, and send follow-up communications to the customer post-purchase, wherein:
…
…
… configured to manage customer interactions and facilitate secure communications with the...
According to the MPEP 2106.04(a)(2), "Commercial interactions" or "legal interactions" include agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. Clearly, using data points collected from a customer to provide customer specific offerings falls under sales activities or behaviors, therefore it would fall under commercial or legal interactions, which falls under certain methods of organizing human activity. If the claim limitations, under the broadest reasonable interpretation, covers performance of the limitations as a commercial or legal interaction, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
13. Step 2A – Prong 2: Practical Application: This judicial exception is not integrated into a practical application because the claim as a whole merely describes the concept of using data points collected from a customer to provide customer specific offerings using generally recited computer elements such as a database, processing devices, data processing engine, first computing device, distributed environment, and local area network or wide area network. These additional elements of a processing devices, computing device, servers, data storage units, network components, and client terminal in these steps are recited at a high-level of generality such that it amounts to more than mere instructions to apply the exception using a generic computer component, and are merely invoked as tools for using data points collected from a customer to provide customer specific offerings. Accordingly, these elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Simply implementing the abstract idea on a generic computing environment is not a practical application of the abstract idea, and does not take the claim out of the Commercial or Legal Interactions subgrouping of Certain Methods of Organizing Human Activity grouping. The claims are directed to an abstract idea.
14. Step 2B – Inventive Concept: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered individually and as an ordered combination, they do not add significantly more (also known as “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of a processing devices, computing device, servers, data storage units, network components, and client terminal to perform these steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot integrate into a practical application nor provide an inventive concept. Accordingly, these additional elements, do not change the outcome of the analysis, when considered individually and as an ordered combination as there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The claims are not patent eligible.
15. Regarding dependent claim 20, although the claim recites a generally recited computing device and graphical user interface, this claim merely narrows the abstract idea of using data points collected from a customer to provide customer specific offerings, however this claim neither integrates into a practical application nor contains additional elements which amount to significantly more than the abstract idea.
16. Regarding dependent claims 21-22, 26, 33-35, and 37-38, although the claims recite a generally recited first computing device, these claims merely narrow the abstract idea of using data points collected from a customer to provide customer specific offerings, however these claims neither integrate into a practical application nor contain additional elements which amount to significantly more than the abstract idea.
17. Regarding dependent claim 23, although the claim recites a generally recited computing device and retailer POS device, this claim merely narrows the abstract idea of using data points collected from a customer to provide customer specific offerings, however this claim neither integrates into a practical application nor contains additional elements which amount to significantly more than the abstract idea.
18. Regarding dependent claim 24, although the claim recites a generally recited computing device and different computing device, this claim merely narrows the abstract idea of using data points collected from a customer to provide customer specific offerings, however this claim neither integrates into a practical application nor contains additional elements which amount to significantly more than the abstract idea.
19. Regarding dependent claims 25 and 27-30, these claims merely narrow the abstract idea of using data points collected from a customer to provide customer specific offerings, however these claims neither integrate into a practical application nor contain additional elements which amount to significantly more than the abstract idea.
20. Regarding dependent claims 31 and 36, although the claims recite a generally recited smart phone application, these claims merely narrow the abstract idea of using data points collected from a customer to provide customer specific offerings, however these claims neither integrate into a practical application nor contain additional elements which amount to significantly more than the abstract idea.
21. Therefore, the limitations of the inventions, when viewed individually and in ordered combination, are directed to ineligible subject matter.
Examiner Notes
22. Claims 19-38 are novel and unobvious over the prior art. In order to advance prosecution, the Examiner suggests filing a terminal disclaimer to obviate the double patenting rejection. The Examiner suggests clarifying the difference between processing devices, computing device, and client terminal. The Examiner suggests incorporating claims 23 and 31 together into the independent claim. The Examiner suggests incorporating more hardware from the Specification and any unique arrangements of hardware, unique hardware, or unique ways the hardware is communicating. The aforementioned claim suggestions, in combination together, is suggested to help advance prosecution forward, although further search, examination, and consideration is required.
23. Claims 19-38 are novel and unobvious over the prior art, however there remains a pending 35 U.S.C. 101 rejection. After further search and consideration, the most pertinent U.S. prior art was found to be Okerlund (US 2013/0080239), Bezos et al (US 7,337,133), Froseth et al (US 2002/0004749), Aloni et al (US 2008/0021772), Katz (US 2012/0191515), and Sim (US 7,788,141). Sim (US 7,788,141) is directed for tracking purchases. Katz (US 2012/0191515) is directed to connecting consumers for providing shopping advice. Aloni et al (US 2008/0021772) is directed to a loyalty incentive program using transaction cards. Froseth et al (US 2002/0004749) is directed to customized food selection, ordering, and distribution system. Bezos et al (US 7,337,133) is directed to an internet-based customer referral system. Okerlund (US 2013/0080239) is directed to a system for incentives. Andrews et al (Propositional Research Framework for the Conceptual and Technological Adoption of Digital Coupons in the US, NPL) is found to be the most pertinent NPL prior art, and is directed to fast-speed image recognition.
24. However, both the most pertinent U.S. prior art and the most pertinent NPL prior art do not disclose the limitations of:
determine an offer, to be provided to a customer, according to the weighted data points and the weighted offers, wherein the system dynamically adjusts offers according to real-time customer behavior, across in-store and online environments, using an adaptive recommendation algorithm;
provide the customer with an incentive according to in-store activity of the customer and on-line activity of the customer, wherein the incentive is automatically redeemable, if the customer purchases a product associated with the incentive.
25. No prior art cited here or in any previous Office Action neither fully anticipates nor supports a conclusion of obviousness with respect to the subject matter present in the independent claims, either alone or in combination. The limitations lacking in the prior art, in combination with the other limitations clearly claimed in the application, are novel and unobvious.
Conclusion
26. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Andrews et al (Propositional Research Framework for the Conceptual and Technological Adoption of Digital Coupons in the US, NPL) is found to be the most pertinent NPL prior art.
27. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FAWAAD HAIDER whose telephone number is (571)272-7178. The examiner can normally be reached Mon-Fri 8 AM to 5 PM.
28. 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.
29. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Florian Zeender can be reached on 571-272-6790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FAWAAD HAIDER/Primary Examiner, Art Unit 3627
Prosecution Insights