DETAILED ACTION
This communication is a Final Office Action on the merits in response to communications received on 12/18/2025. Claims 1, 8, and 15 have been amended. Therefore, claims 1, 3-8, 10-15 and 17-20 are pending and have been addressed below. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Previous Claim Rejections - 35 USC § 112
1. The Examiner respectfully withdraws the previous rejections under 35 USC 112 for written description, per the amendments filed. The claims no longer recite a weighted similarity score.
Claim Rejections - 35 USC § 101
2. 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.
3. Claims 1, 3-8, 10-15, and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
4. Under Step 1 of the two-part analysis from Alice Corp, the claim(s) recite a process (i.e., a series of acts or steps) – see claim 8, a machine (i.e., a concrete thing, consisting of parts, or of certain devices and combination of devices) – see claim 1, and a manufacture (i.e., an article that is given a new form, quality, property, or combination through man-made or artificial means) – see claim 15. Thus, each of the claims fall within one of the four statutory categories.
7. Under Step 2A – Prong One of the two-part analysis from Alice Corp, the claimed invention recites an abstract idea.
8. Claim 1 which is representative of claims 8 and 15 recites:
“matching… based on a similarity between the currently displayed content;”, “in response to receiving…a request to establish with the match”, “such that a first user and a second user are able to interact with both the displayed content”, “in response to the first user interacting…generating, based on the similarity between the currently displayed content and the currently displayed content, one or more automated comments or questions;” “in response to the first user selecting a comment or question of the one or more automated comments or questions”.
The limitations as drafted under their broadest reasonable interpretation recite an abstract idea for matching users based on interactions with content and facilitating interactions between the users encompasses concepts such as a commercial interactions (i.e., advertising, sales/marketing activities, business relations), managing personal behavior or relationships or interactions between people (i.e., social activities, teaching, and following rules or instructions) which is subject matter that falls within the certain methods of organizing human activity grouping, as discussed in MPEP 2106.04(a)(2).
Applicant’s Specification emphasizes in at least ¶ 0007: The present invention provides a system and method for deriving personal information to be used in the matching of persons seeking to be matched for social activities is described herein. The system and method provides at least one scoring of information derived from at least one user based on inputted information in response to imagery provided to the user.
Consistent with disclosure, the series of steps that recite “matching” and “generating” in the context of the claim cover facilitating business relations and social activities because collecting and comparing known information about the current content each user is viewing in order to determine if a proposed match should notified and preparing questions/comments necessary for interacting between users are tasks and/or activities performed by match-maker services and advertising companies. Also, the “receiving” step in the context of the claim covers managing personal behavior or interactions between people because the step involves a user responding to a request following a proposed match. Therefore, the limitations recite subject matter that may be reasonably characterized as falling within the certain methods of organizing human activity grouping. As such, the claim recites an abstract idea.
6. Under Step 2A – Prong Two of the two-part analysis from Alice Corp, this judicial exception is not integrated into a practical application because the additional elements of: “a system, “a social network”, “a first manager resident in a non-transitory memory of a first mobile device of the two or more mobile devices”, “a display of the first mobile device;”, “a second manager resident in a non-transitory memory of a second mobile device of the two or more mobile devices”, “a display of the second mobile device;”, “an attribute matching engine, including a memory coupled to a processor, the memory comprising instructions, wherein when executed by the processor, the instructions implement:”, “at least one of a first graphical user interface of the first mobile device or a second graphical user interface of the second mobile device”, “a communication session”, “establishing a communication session, the communication session comprising a first overlay on the currently displayed content on the first graphical user interface of the first mobile device and a second”, “automatically expanding the size of the first overlay with respect to the currently displayed content on the first graphical user interface;”– see claims 1 and 8, “a non-transitory computer-readable medium comprising instructions that when executed by a processor” – see claim 15, are all recited at a high-level of generality in light of the Specification. Since the disclosure describes the additional elements in general terms without describing the particulars, the additional elements may be broadly but reasonably construed as generic computing components merely being used to perform the judicial exception. As such, the recited additional elements add the words “apply it” with the judicial exception or mere instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea as discussed in MPEP 2106.05 (f)
The other additional elements of “monitoring currently displayed content, wherein the currently displayed content …is determined at least in part on header information”, “monitoring currently displayed content, wherein the currently displayed content …is determined at least in part on header information”, “causing to be displayed…a notification;”, “receiving a state of a first current service…and a second current service…”, “storing the state of the first current service and the second current service”, “detecting a termination”, “restoring…the state of the first current service…and the second current service”, “providing the one or more automated comments or questions as a selection”, “automatically transmitting the selected comment or question” add extra-solution activity to the judicial exception, (i.e., data gathering/transmission), as discussed in MPEP 2106.05 (g)
The other additional elements of “for establishing interaction between two or more mobile devices” are limitations recited in the preamble that merely indicate a field of use or particular technological environment in which to apply the judicial exception, as discussed in MPEP 2106.05 (h)
Thus, the additional claim elements are not indicative of integration into a practical application, because the claims do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field.
7. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea and the claims are directed to an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above with respect to integration of the abstract idea into a practical application, the additional element(s) of: “a system, “a social network”, “a first manager resident in a non-transitory memory of a first mobile device of the two or more mobile devices”, “a display of the first mobile device;”, “a second manager resident in a non-transitory memory of a second mobile device of the two or more mobile devices”, “a display of the second mobile device;”, “an attribute matching engine, including a memory coupled to a processor, the memory comprising instructions, wherein when executed by the processor, the instructions implement:”, “at least one of a first graphical user interface of the first mobile device or a second graphical user interface of the second mobile device”, “a communication session”, “establishing a communication session, the communication session comprising a first overlay on the currently displayed content on the first graphical user interface of the first mobile device and a second”, “automatically expanding the size of the first overlay with respect to the currently displayed content on the first graphical user interface;”– see claims 1 and 8, “a non-transitory computer-readable medium comprising instructions that when executed by a processor” – see claim 15 amount to no more than mere instructions to apply the exception which does not integrate the judicial exception into a practical application or provide an inventive concept.
The other additional elements of: “monitoring currently displayed content, wherein the currently displayed content …is determined at least in part on header information”, “monitoring currently displayed content, wherein the currently displayed content …is determined at least in part on header information”, “causing to be displayed…a notification;”, “receiving a state of a first current service…and a second current service…”, “storing the state of the first current service and the second current service”, “detecting a termination”, “restoring…the state of the first current service…and the second current service”, “providing the one or more automated comments or questions as a selection”, “automatically transmitting the selected comment or question” were previously considered as insignificant extra-solution activity. At Step 2B, the evaluation of the insignificant extra-solution activity consideration takes into account whether or not the extra-solution activity is well-known, routine, and conventional.
As discussed in MPEP 2106.05 (d)(II), the Symantec, TLI Communications, OIP Techs, Alice court decisions held that “receiving or transmitting data over a network”, “sending messages over a network”, “presenting offers and gathering statistics” are well-understood, routine and conventional when they are claimed in a generic manner. As such, the limitations remain as insignificant extra solution activity even upon reconsideration, and do not amount to significantly more. Even when considered in combination, the additional elements represent mere instructions to apply an exception which cannot provide an inventive concept. Thus, the claim(s) are ineligible at Step 2B
8. Claims 3-7, 10-14, 17-20 are dependent of claims 1, 8 and 15.
For example, claims 3, 10, and 17 recite “wherein the notification comprises an alert on at least one of the first and second mobile devices”, claims 4, 11, and 18 recites “the alert comprises a flashing border around the currently displayed content”, claims 5, 12, and 19 recite “wherein the similarity is based at least in part on a weight on the nature of the currently displayed content on the respective devices”, claims 6, 13, and 20 recite “wherein the similarity is based at least in part on a rating provided by a first user associated with the first mobile device and a second user associated with the second mobile device”, claims 7 and 14 recite “wherein the similarity is based at least in part on discrete input provided by a first user associated with the first mobile device and a second user associated with the second mobile device” all serve to further describe the information or data recited in the abstract idea and merely narrow how the abstract idea may be performed. The dependent claims recite additional limitations that further describe the computer components and additional limitations that are no more than mere instructions to apply the exception using a generic computer components. Accordingly, when viewed individually and in combination the dependent claims do not provide an inventive concept or integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Response to Arguments
9. Applicant’s arguments filed 19 December 2025 have been fully considered but they are not persuasive.
With Respect to Rejections Under 35 USC 101
Applicant argues “Applicant notes that the Office has not indicated that the limitation of "overlay on the currently displayed content on the second graphical user interface of the second mobile device such that a first user associated with the first mobile device and a second user associated with the second mobile device are able to interact with both the displayed content and the communication session" recites an abstract idea. Applicant takes this as indicating that the limitation of "overlay on the currently displayed content on the second graphical user interface of the second mobile device such that a first user associated with the first mobile device and a second user associated with the second mobile device are able to interact with both the displayed content and the communication session." does not recite an abstract idea.” The Examiner respectfully disagrees.
The Examiner asserts the last Office Action, i.e., pgs. 6-7 non-final, identified these limitations as additional elements under Prong Two of the analysis and explained why they do not integrate the judicial exception into a practical application. Here, the reply merely concedes the limitations do not recite an abstract idea but the overlay step as recited in the claim does not confer eligibility. Recitation, as in this case, of the collection, organization, and overlaying information on a generic display device is abstract absent a "specific improvement to the way computers [or other technologies] operate." Enfish, 822 F.3d at 1336. For these reasons, the rejections under 101 are being maintained.
Applicant further argues “Applicant further notes that the newly added limitations of "storing the state of the first current service and the second current service," "detecting a termination of the communication session;" and "restoring, as a function of detecting the termination of the communication session, the state of the first current service to the first mobile device and the second current service to the second mobile device" do not recite any abstract ideas. This is the case at least because these limitations do not fall within the categories of "mathematical concepts," "certain methods of organizing human activity," or "mental processes." This is the case at least because storing and restoring the states of services running on mobile devices do not recite mathematical concepts and do not touch on methods of organizing human activity.
Additionally, the quoted limitations do not recite a mental process as they cannot be performed in the human mind or by a human using pen and paper. For example, storing the state of a service and restoring it to a mobile device are not something that a human can do in their head or with pen and paper. This is the case because of the amount of data that would need to be stored in order to store and restore the services. Additionally, a human cannot restore a service to a mobile device using their mind or pen and paper. Applicant further notes the USPTO Memo "Reminders on evaluating subject matter eligibility user 35 U.S.C. 101" which states:"[t]he mental process grouping is not without limits. Examiners are reminded not to expand this grouping in a manner that encompasses claim limitations that cannot practically be performed in the human mind." The Examiner respectfully disagrees.
Contrary to the remarks, the claimed invention remains ineligible under Step 2A-Prong One. Here, the response does not address any of the limitations that were previously identified as reciting an abstract idea. The focus of the claimed invention is for matching users based on interactions with the same content and facilitating interactions between the users. The background of the Specification in [¶ 0002-0007] makes clear and discusses the claimed invention involves commercial interactions, i.e., dating applications/services, and managing social activities or interactions between users which is subject matter that falls within the certain methods of organizing human activity grouping. The newly added limitations for storing and restoring the states of services were considered under Prong Two of the analysis. These limitations are not mental processes but have been considered additional elements that add insignificant extra-solution activity to the judicial exception. The combination of these additional elements with the claimed invention do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract. For these reasons, the rejections under 101 are being maintained.
Applicant further argues “Applicant asserts that, at least as amended, claim 1 incorporates the allegedly abstract ideas into a practical application. A claim reciting an abstract idea is not "directed to" the abstract idea where the claim integrates the abstract idea into a practical application. "A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception." MPEP§2106.04(d). This is the case where the claim reflects an improvement in technology. Id.” The Examiner respectfully disagrees.
Here, the response does not indicate any improvements in technology to be considered. See MPEP 2106.05(a) It is important for applicant to note although the extent of preemption is a consideration in the analysis, the absence of complete preemption is not dispositive. See, e.g., Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility."). "[Q]uestions on preemption are inherent in and resolved by the § 101 analysis," which the Examiner has applied. The Applicants makes conclusory statements that do not alter or change the previous analysis. For these reasons, the rejections under 101 are being maintained.
Applicant further argues “The Office characterizes the following limitations as "extra-solution activity": "monitoring currently displayed content, wherein the currently displayed content ... is determined at least in part on header information", "monitoring currently displayed content, wherein the currently displayed content ... is determined at least in part on header information", "causing to be displayed...a notification;", "providing the one or more automated comments or questions as a selection", "automatically transmitting the selected comment or question." Office Action, Page 7. Applicant respectfully traverses. The MPEP describes three considerations for an examiner to consider do determine whether a limitation is insignificant extra-solution activity:"(1) whether the extra-solution activity is well known, (2) whether the limitation is significant (i.e. it imposes meaningful limits on the claim such that it is not nominally or tangentially related to the invention), and (3) whether the limitation amounts to necessary data gathering and outputting, (i.e., all uses of the recited judicial exception require such data gathering or data output). MPEP 2106.05(g). Additionally, the MPEP describes "extra-solution activity" as "activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim." Id.
As a first matter, the limitation "wherein the currently displayed content ...is determined at least in part on header information" is not extra-solution activity. This is the case at least because it is not "incidental to the primary process." This is the case at least because the determining the "currently displayed content" is integral to the matching of users in the claim (as can be seen by the limitation of "matching the first mobile device with the second mobile device based on a similarity between the currently displayed content of the first mobile device and the currently displayed content of the second mobile device"). Furthermore, this approach to determining "currently displayed content" has not been established as "well known" by the Office; in fact the use of the header information to determine the currently displayed content. The limitation imposes specific limitations on the claim as it proscribes a particular way of gathering the "currently displayed content." Additionally, this limitation amounts to more than just "necessary data gathering and outputting." This is the case because this limitation describes a particular method of the data gathering that is suited to mobile devices. For at least these reasons, Applicant respectfully asserts that "wherein the currently displayed content ...is determined at least in part on header information" is not extra- solution activity.” The Examiner respectfully disagrees.
Contrary to the remarks, the claimed invention remains ineligible under Step 2A-Prong Two of the analysis. In the instant case, the steps for monitoring and determining at least in part on header information as recited in the claims are activities that add insignificant extra-solution activity. See MPEP 2106.05(g) An example of pre-solution activity is a step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered information by a series of steps in order to detect whether the transactions were fraudulent. As, such, the steps of “monitoring” and “determining” amount to pre-solution activity and merely perform the necessary data gathering operations to aid in performing the judicial exception. It is important to note that selecting a particular data source or type of data, i.e., header, to used for matching does not alter the analysis. The Applicant also makes conclusory remarks that the steps are not well-known. The Examiner previously reconsidered these additional elements on [pg. 10, non-final], and cited one or more court decisions discussed from MPEP 2106.05(d)(II) that discuss the well-understood, routine, and conventional nature of these additional elements. For these reasons, the rejections under 101 are being maintained.
Applicant further argues “One way that a claim can satisfy Step 2, Prong 1 is for the claims as a whole to focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery". McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). Regarding improvements to technology, the court in McRO found a claim for automatically animating lip synchronization and facial expressions of three-dimensional animated characters did not invoke generic processes and machinery, thus favoring patentability conventional. Id. Specifically stating, "the claims are limited to rules with specific characteristics. As the district court recognized during claim construction, "the claims themselves set out meaningful requirements for the first set of rules." Id.” The Examiner respectfully disagrees.
In the instant case, the claims recite result-oriented functions and are not directed to any technological improvement for performing those functions, thus relying upon McRO is inapposite. In McRO, the claim limitations at issue were "limited rules" which "improved technological result[s]." 837 F.3d at 1316. See SAP Am., Inc., 890 F.3d at 1021 (explaining that the claims in McRO, besides being directed to physical display improvements, also avoided abstraction by adequate specificity as to how to achieve the improvements). The rules recited within Applicant’s claims simply narrow how the abstract idea is to be performed but do not improve the manner in which the mobile devices operate or their functionality. For these reasons, the rejections under 101 are being maintained.
Applicant further argues “Applicant respectfully asserts that the limitations of "storing the state of the first current service and the second current service," "detecting a termination of the communication session;" and "restoring, as a function of detecting the termination of the communication session, the state of the first current service to the first mobile device and the second current service to the second mobile device" relate to a "specific means or method that improve the relevant technology." The Examiner respectfully disagrees.
Contrary to the remarks, the claimed invention remains ineligible under Step 2A-Prong Two of the two-part analysis. In the present rejection, these additional elements add insignificant extra-solution to the judicial exception and do not alter the analysis. As best understood by restoring the application to the state just prior to establishing a communication session, a user can continue where they left off. For example, the user can return to the game. These additional elements as recited limitations seek to improve a user’s experience rather than providing improvements to functioning of a computer itself or any other technology as required by the guidance. See MPEP 2106.05(a) For these reasons, the rejections under 101 are being maintained.
Applicant further argues “This application improves the automated matching of users by using games instead of static profiles. For example, see paragraph [0033] of the instant specification which says "Rather than a user merely searching profiles of potential candidates, the games and activities within the social networking environment may provide for real-life and impromptu information to be revealed. Thus, users may be provided with additional information above and beyond that of a prepared profile when making connection decisions." The Examiner respectfully disagrees.
Contrary to the remarks, the claimed invention remains ineligible under Step 2A Prong One of the analysis. The passages from [¶ 0033] have been reproduced below:
In an embodiment of the present invention, the system 200 can facilitate social interaction games that include communication via voice, video, text, picture messaging, or any combinations thereof. Embodiments may include games or activities without voice, with voice, with video, without video, with images, without images, with only text, for example. More specifically, multi-player games, such as Words with Friends®, Word Streak with Friends®, Tic-Tac-Toe, and Yahtzee®, for example, may be played between user of the system and include intra-player communications supported by the present invention. Although players of the games may be matched together based on traditional criteria and inputted user attributes, it will be understood that users may further define more narrow subgroups of users for a particular game. For example, a user may opt to only play with candidates from the same city, state, zip code, for example, to interact with someone reasonably proximate to themselves.
The Specification [¶ 0033] makes clear the claimed invention facilitates social interaction games but does not provide any improvements or specific technical details related to how the users are matched. At best, the specification reveals the games allow users to be further matched in real-time with other users based on different location filters but none of the conclusory statements from the Applicant are not considered improvements in gaming or social networking technology. For these reasons, the rejections under 101 are being maintained.
Applicant further argues “Even more specifically, these limitations allow for services (e.g., games) to be paused and resumed automatically so that the communication sessions between matched users do not interfere with the services. For example, see paragraph [0034] of the instant specification, which says "[a]ccordingly, upon termination of the communication session, system 200 may restore the application based upon the state of the service (e.g., game, activity) at the time of suspension." The Examiner respectfully disagrees.
Contrary to the remarks, the claimed invention remains ineligible under Step 2A-Prong Two of the two-part analysis. The passages from [¶ 0034] have been reproduced below: In operation, the system 200 illustrated in Figure 2 may facilitate suspension of a game or activity application upon commencement of a communication session. Accordingly, upon termination of the communication session, system 200 may restore the application based upon the state of the service (e.g., game, activity) at the time of suspension. In operation, the state can be transferred to the communication system thus enabling a user the ability to continue to interact with the system or other users within the activity environment. Similarly, game play may continue with the communication session being semi-continuous as between at least two participants and may be provided as an overlay to the game play.
The Specification [¶ 0034] makes clear the claimed invention facilitates suspension and restoration of a game but does not provide any improvements or specific technical details related to techniques. At best, the specification reveals by restoring the application to the state just prior to establishing a communication session, a user can continue where they left off. For example, the user can return to the game. These additional elements add generic computing functionality to the claims as they seek to improve a user’s experience rather than provide improvements to functioning of a computer itself or any other technology as required by the guidance. See MPEP 2106.05(a). For these reasons, the rejections under 101 are being maintained.
Applicant further argues “Furthermore, the limitation of "wherein the currently displayed content on the display of the first mobile device is determined at least in part on header information" relate to a "specific means or method that improve the relevant technology." As described in the specification, at least one improvement to the relevant technology is "enhanc[ing] traditional social networking systems by providing various gamification and matching." Specification, Paragraph [0031]. This is the case at least for games because "games and activities can particularly add to the basic review of a profile. Rather than a user merely switching profiles of potential candidates, the games and activities within the social networking environment may provide for real-life and impromptu information to be revealed." Id. By being able to determine the "currently displayed content" using "header information" of the data being displayed on a mobile device, this limitation of claim 1 provides a clear improvement to the technology by allowing for matching algorithms to take into account the content that is currently being displayed on a device.” The Examiner respectfully disagrees.
Contrary to the remarks, the claimed invention remains ineligible under Step 2A Prong Two of the two-part analysis. In the instant case, steps for being able to determine the "currently displayed content" using "header information" of the data being displayed on a mobile device do not automatically lead towards eligibility. There are no technical details regarding the determine step or the type of headers or header information being used. In fact, the Specification [¶ 0041] only recites header information once at a high-level of generality and in a results-oriented manner. The findings from the disclosure confirm the generic nature of determine the "currently displayed content" using "header information" do not provide improvements to the technology as disputed by Applicant. For these reasons, the rejections under 101 are being maintained.
Applicant further argues “Finally, the limitation of "overlay on the currently displayed content on the second graphical user interface of the second mobile device such that a first user associated with the first mobile device and a second user associated with the second mobile device are able to interact with both the displayed content and the communication session" likewise relates to a "specific means or method that improve the relevant technology." This limitation allows for users to continue to interact with the services (e.g., games) while the communication session with the match is in session.
The alternative would require that a user have to only be playing e.g. a game, or only be participating in the communication session. This allows users greater flexibility and thus represents an improvement in the functioning of user interfaces. This is evidence in the Specification of the current application, which says:"[t]n operation, the state can be transferred to the communication system thus enabling a user the ability to continue to interact with the system or other users within the activity environment. Similarly, game play may continue with the communication session being semi-continuous as between at least two participants and may be provided as an overlay to the game play." Specification, paragraph [0034]. Accordingly, and for at least the above-described reasons, Applicant respectfully submits that representative claim 1 as amended integrates the alleged abstract idea into a practical application and therefore is not directed to an abstract idea. Therefore, pursuant to Step 2A of the § 101 analysis prescribed in Alice, claim 1 as amended recites patentable subject matter. Applicant respectfully requests that this rejection be withdrawn.” The Examiner respectfully disagrees.
Contrary to the remarks, the claimed invention remains ineligible under Step 2A – Prong Two of the analysis. The step of “overlay” in the claim is insufficient to confer eligibility. The courts have previously held claims directed to displaying two different information sets sequentially are abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) Here, at best the Applicant’s reply provides benefits for overlaying information on the user interface, however, these benefits are not technical improvements in user interface functionality. The cited passages from the Specification have been considered but do not discuss improvements related to user interfaces. For these reasons, the rejections under 101 are being maintained.
Applicant further argues “Applicant submits that claim 1 contains limitations amounting to an inventive concept representing "significantly more" than the alleged judicial exceptions under step 2B. MPEP 2106.05(II). Claims directed to an abstract idea contain an inventive concept and thus are patent eligible when the claim limitations involve more than performance of well-understood, routine, and conventional activities previously known to the industry. Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). Paragraph [0031] describes at least one of the inventive concepts of this application, saying: the present invention provides system 200 that enhances traditional social networking systems by providing various gamification and matching
between to people not by how attributes correspond to each other, but how two people interpret/perform/arrive at the same data from an outside input to enhance connecting individuals]. Games and activities can particularly add to the basic review of a profile. Rather than a user merely switching profiles of potential candidates, the games and activities within the social networking environment may provide for real-life and impromptu information to be revealed. Thus, users may be provided with additional
information above and beyond that of a prepared profile when making
connection decisions. Applicant respectfully asserts that the limitations of claim 1 related to matching users based on the "currently displayed content" on their mobile devices clearly are directed to this inventive concept. Additionally, Applicant notes that the limitations related to storing and restoring the states of services as well as the previously discussed limitation on creating graphical user interface overlays are additionally directed to this inventive concept as they help realize a system where users can engage with services and communication sessions with matches synchronously and asynchronously. Applicant respectfully submits that the Section 101 rejection should be withdrawn because the claimed invention results in a practical application.”
Contrary to the remarks, the claimed invention remains ineligible under Step 2B. The present rejection under Step 2B meets the evidentiary requirements in making a 101 rejection. See MPEP 2106.07(a)(III) The Examiner cites to relevant court decisions that note the well-known, routine, and conventional nature of the additional elements. It is well-settled that placing an abstract idea in the context of a computer, i.e., social networking system, does not "improve" the computer or convert the idea into a patent-eligible application of that idea. See Alice, 134 S. Ct. at 2358. Here, the remarks are attempting to limit the claimed invention to enhancing social network systems, however, the social network system is merely the environment being used to implement the abstract idea. Also, matching users based on the content they are viewing as opposed to matching using profile information does not render the claimed invention any less abstract or provide an inventive concept. For these reasons, the rejections under 101 are being maintained.
Conclusion
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 EHRIN PRATT whose telephone number is (571)270-3184. The examiner can normally be reached 8-5 EST Monday-Friday.
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/EHRIN L PRATT/Examiner, Art Unit 3629
/JESSICA LEMIEUX/Supervisory Patent Examiner, Art Unit 3626