DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 4, 2025 has been entered.
Status of Claims
Claims 1-6 and 18-20 have been amended; claims 14-16 have been canceled, and claims 21-23 have been added in the response filed September 4, 2025.
Claims 1-13 and 17-23 are pending.
Claim 23 is withdrawn.
Claims 1-13 and 17-22 are rejected.
Explanation for restriction begins on page 3.
Detailed objections and rejections begin on page 8.
Response to Arguments begins on page 40.
Election/Restrictions
The general policy of the Office is not to permit the applicant to shift to claiming another invention after an election is once made and/or action given on the elected subject matter. Note that the applicant cannot, as a matter of right, file a request for continued examination (RCE) to obtain continued examination on the basis of claims that are independent and distinct from the claims previously claimed and examined (i.e., applicant cannot switch inventions by way of an RCE as a matter of right, see MPEP § 819 and 821.03).
Newly submitted claim 23 is directed to an invention that are independent or distinct from the respective inventions originally claimed for the following reasons:
With respect to claim 23, original claims 17-20 and newly submitted claims 17 and 23 are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j).
In the instant case, original claims 17-20 recite a gift product customization system comprising a first computing device connected to a network, the first computing device comprising a first user interface configured to convey a series of questions or prompts to a user and a second user interface configured to receive user input responsive to the series of questions or prompts. The system also comprises a processor device configured to use the user input to generate a product name, a product description, at least one product color palette recommendation, at least one presentation recommendation, and at least one expenditure recommendation. The first computing device is further configured to communicate each of the product name, the product description, the at least one product color palette recommendation, the at least one presentation recommendation, and the at least one expenditure recommendation to a user, wherein the first user interface is selected from the group consisting of a display coupled to a touch sensitive input means and an audio device configured to emit sounds and receive voice input. A second computing device connected to the network is configured to communicate a set of instructions for creating the gift product based on user selections among each of the recommendations, the second user interface is selected from the group consisting of a display coupled to a touch sensitive input means and an audio device configured to emit sounds and receive voice input, or the second computing device comprises at least one of a screen configured to display the set of instruction and a printer configured to print the set of instructions.
In contrast, newly submitted claims 17 and 23 recite a gift product customization system, comprising a solid state storage device comprising a computer readable storage medium, the computer readable storage medium comprising an odyssey map representing possible paths in a decision tree defined by a data structure, and the data structure comprising one or more data structure nodes on the computer readable storage medium wherein each data structure node is an immutable atomic object encoded in JavaScript Object Notation (JSON) as a JSON file in the data structure. Each data structure node comprises ID, a value, and a type, and further comprises a parentid associating the node with an overarching concept common to all variants of that node, wherein connections between the data structure nodes are recorded in a routing table identifying each node as a current, through, or next node. The information for each data structure node is recorded as the JSON file including the ID, type, value, and one or more edges to one or more corresponding other nodes.
Newly submitted claims 17 and 23 do not recite a first user interface configured to convey a series of questions or prompts to a user and a second user interface configured to receive user input responsive to the series of questions or prompts, nor use the user input to generate a product name, a product description, at least one product color palette recommendation, at least one presentation recommendation, and at least one expenditure recommendation. Newly submitted claims 17 and 23 also do not recite communicating the product name, description, customization recommendation, and expenditure recommendations to the user via the user device; nor receiving a user selection via the user interface for each of a product customization and an expenditure amount. Newly submitted claims 17 and 23 further do not recite that the interfaces are selected from the group consisting of a display coupled to a touch sensitive input means and an audio device configured to emit sounds and receive voice input, nor that the second computing device comprises at least one of a screen configured to display the set of instruction and a printer configured to print the set of instructions.
On the other hand, original claims 17-20 do not recite a solid state storage device comprising a computer readable storage medium, the computer readable storage medium comprising an odyssey map representing possible paths in a decision tree defined by a data structure, the data structure comprising one or more data structure nodes on the computer readable storage medium wherein each data structure node is an immutable atomic object encoded in JavaScript Object Notation (JSON) as a JSON file in the data structure. Original claims 17-20 also does not recite that each data structure node comprises ID, a value, and a type, and further comprises a parentid associating the node with an overarching concept common to all variants of that node, wherein connections between the data structure nodes are recorded in a routing table identifying each node as a current, through, or next node, and wherein information for each data structure node is recorded as the JSON file including the ID, type, value, and one or more edges to one or more corresponding other nodes.
Looking at the limitations of each of these claims, it is apparent that the scope of original claims 17-20 does not fall within the scope of newly submitted claim 23, nor does the scope of newly submitted claim 23 fall within the scope of original claims 17-20, because the limitations of original claims 17-20 recites unique features that newly submitted claim 23 does not, and the limitations of newly submitted claim 23 recite unique features that original claims 17-20 does not. Therefore, the claims have materially different design, mode of operation, function, or effect; the inventions as claimed do not encompass overlapping subject matter, and there is nothing of record to show them to be obvious variants. Thus, newly submitted claim 23 is independent and distinct from original claims 17-20.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 23 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 of the other invention.
Examiner notes that while current claim 17 has undergone substantial amendments and does not overlap in scope with original claim 17 on its own, claims 18-22 overcome this deficit because amended claims 17-22 together teach the limitations of original claim 17. Therefore, claim 17 is not subject to a restriction. If current claim 17 were to recite the elements of original claim 17, claim 23 would no longer be subject to a restriction.
Claim Objections
Claim 19 is objected to because of the following informalities:
“collect, via an input means of the first computing device, the plurality of user inputs to be stored on computer readable storage medium” should read “collect, via an input means of the first computing device, the plurality of user inputs to be stored on the computer readable storage medium”
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 2-3 and 19 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention.
Claim 2 recites “a self-referential nodes table” and Claims 3 and 19 recite “a self-referential table.” There is no support in the Specification for a self-referential nodes table nor a self-referential table. Therefore, the claims recite new matter, and the claims are rejected.
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 1-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claims recite an abstract idea. This judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
The steps for determining eligibility under 35 U.S.C. 101 can be found in the MPEP § 2106.03-2106.05.
Under Step 1, the claims are directed to statutory categories. Specifically, the method, as claimed in claims 1-9, is directed to a process.
While the claims fall within statutory categories, under Step 2A, Prong 1, the claimed invention recites the abstract idea of product customization recommendations. Specifically, claim 1 recites the abstract idea of:
retrieving an identified odyssey map data structure, the odyssey map data structure comprising a first table comprising meta data about templates for presentation, a second table that groups data of a plurality presentation steps, and a third table defining relationships between nodes of the odyssey map data structure based on an identification of a node as a current node, through node, or next node;
receiving a plurality of inputs representative of factors affecting product selection, each input of the plurality of inputs received via a template selected for display;
routing to a next step to be displayed based on identification of the next node in the odyssey map data structure by reference to the third table and based on the received plurality of inputs, wherein the plurality of inputs includes one or more selections, each selection associated with one or more corresponding nodes traversed along a route in the odyssey map data structure by defined by the relationships in the third table;
referencing an identifier, value, and type attributes of at least one node to present prompts and affirmations via the template selected for display;
generating, a product name, a product description, and at least one of a product customization option or a product configuration recommendation option, by referencing the ID, value, and type attributes of the at least one node;
communicating each of the product name, the product description, and the at least one of the product customization option or the product configuration option;
receiving a selection for the product customization;
combining at least one input of the plurality of inputs collected and at least one selection into one or more informational snippets that incorporate previously provided information to generate a set of instructions for creating the product; and
transmitting the set of instructions for creating the product, to display the set of instructions for matching the product to an intended goal.
Under Step 2A, Prong 1, it is necessary to evaluate whether the claim recites a judicial exception by referring to subject matter groupings articulated in the guidance. When considering MPEP §2106.04(a), the claims recite an abstract idea. For example, claim 1 recites the abstract idea of product customization recommendations, as noted above. This concept is considered to be a certain method of organizing human activity. Certain methods of organizing human activity are defined in the MPEP as including “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).” MPEP §2106.04(a)(2) subsection II. In this case, the abstract idea recited in claim 1 is a certain method of organizing human activity because combining at least one input of the plurality of inputs collected and at least one selection into one or more informational snippets that incorporate previously provided information to generate a set of instructions for creating the product; and transmitting the set of instructions for creating the product, to display the set of instructions for matching the product to an intended goal are marketing and sales activities. Thus, claim 1 recites an abstract idea.
The recited limitations of claim 1 recite an abstract idea because they are considered to be mental processes. As described in the MPEP, mental processes are “concepts performed in the human mind (including an observation, evaluation, judgment, opinion)”. MPEP §2106.04(a)(2) subsection III. In this case, retrieving an identified odyssey map data structure, the odyssey map data structure comprising a first table comprising meta data about templates for presentation, a second table that groups data of a plurality presentation steps, and a third table defining relationships between nodes of the odyssey map data structure based on an identification of a node as a current node, through node, or next node; receiving a plurality of inputs representative of factors affecting product selection, each input of the plurality of inputs received via a template selected for display; referencing an identifier, value, and type attributes of at least one node to present prompts and affirmations via the template selected for display; and receiving a selection for the product customization are types of observation. Additionally, routing to a next step to be displayed based on identification of the next node in the odyssey map data structure by reference to the third table and based on the received plurality of inputs, wherein the plurality of inputs includes one or more selections, each selection associated with one or more corresponding nodes traversed along a route in the odyssey map data structure by defined by the relationships in the third table; generating, a product name, a product description, and at least one of a product customization option or a product configuration recommendation option, by referencing the ID, value, and type attributes of the at least one node; communicating each of the product name, the product description, and the at least one of the product customization option or the product configuration option; combining at least one input of the plurality of inputs collected and at least one selection into one or more informational snippets that incorporate previously provided information to generate a set of instructions for creating the product; and transmitting the set of instructions for creating the product, to display the set of instructions for matching the product to an intended goal are types of judgement. Thus, claim 1 recites an abstract idea.
Under Step 2A, Prong 2, if it is determined that the claims recite a judicial exception, it is then necessary to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of that exception. See MPEP §2106.04(d). In this case, claim 1 includes additional elements such as a computer, a hardware processor subsystem of a processor device, a solid state storage device, a product customization system comprising a user interface communicatively coupled to a networked user device comprising the processor device, an application for display of an encapsulation, the encapsulation comprising one of the presentation steps, the hardware processor subsystem transmitting to a remote computing device, and a screen of the remote computing device.
Although reciting additional elements, the additional elements do not integrate the abstract idea into a practical application because they merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a computer as a tool to perform the abstract idea. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. Similar to the limitations of Alice, claim 1 merely recites a commonplace business method (i.e., product customization recommendations) being applied on a general purpose computer. See MPEP §§2106.04(d) and 2106.05(f). Thus, the claimed additional elements are merely generic elements and the implementation of the elements merely amounts to no more than an instruction to apply the abstract idea using a generic computer. Since the additional elements merely include instructions to implement the abstract idea on a generic computer or merely use a generic computer as a tool to perform an abstract idea, the abstract idea has not been integrated into a practical application. As such, claim 1 is directed to an abstract idea.
Under Step 2B, if it is determined that the claims recite a judicial exception that is not integrated into a practical application of that exception, it is then necessary to evaluate the additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). See MPEP §2106.05.
In this case, as noted above, the additional elements recited in independent claim 1 are recited and described in a generic manner merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea.
Even when considered as an ordered combination, the additional elements of claim 1 do not add anything that is not already present when they considered individually. In Alice, the court considered the additional elements “as an ordered combination,” and determined that “the computer components ... ‘ad[d] nothing ... that is not already present when the steps are considered separately’ and simply recite intermediated settlement as performed by a generic computer.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1983-84 (2014). (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Also see MPEP §2106.05(f). Similarly, when viewed as a whole, claim 1 simply conveys the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B, there are no meaningful limitations in claim 1 that transforms the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
As such, claim 1 is ineligible.
Dependent claims 2-9 do not aid in the eligibility of independent claim 1. For example, claims 2-3 and 5-9 merely further define the abstract limitations of claim 1. Also, claim 4 merely provides further embellishments of the abstract limitations recited in independent claim 1.
Additionally, it is noted that claim 2 includes additional elements of a self-referential nodes table; claim 3 includes additional elements of one or more logic circuits executing the application and a self-referential table; claim 5 include further additional elements of each node is an immutable atomic object encoded in JavaScript ObjectNotation (JSON) as a JSON file; claim 6 recites further additional elements of a digital page with a theme and layout defined in a JSON file; claim 7 includes further additional elements of a screen and printing the set of instructions; claim 8 includes further additional elements of a touch- sensitive device and a server; and claim 9 includes further additional elements of an audio device, the audio device configured to emit sounds and receive voice input and a server. However, these additional elements do not integrate the abstract idea into a practical application because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea. These additional elements are merely generic elements and are likewise described in a generic manner in Applicant’s specification. Additionally, the additional elements do not amount to significantly more because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea.
Furthermore, it is noted that claim 4 does not include further additional elements. Therefore, the claims do not integrate the abstract idea into a practical application because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea. The claims also do not amount to significantly more than the abstract idea because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea.
Thus, dependent claims 2-9 are also ineligible.
Claims 10-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claims recite an abstract idea. This judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
The steps for determining eligibility under 35 U.S.C. 101 can be found in the MPEP § 2106.03-2106.05.
Under Step 1, the claims are directed to statutory categories. Specifically, the non-transitory computer-readable medium, as claimed in claims 10-16, is directed to an article of manufacture.
While the claims fall within statutory categories, under Step 2A, Prong 1, the claimed invention recites the abstract idea of product customization. Specifically, claim 10 recites the abstract idea of:
retrieve an odyssey map data structure defining possible paths between nodes of a plurality of nodes, each node being a data object in the data structure to identify one or more templates associated, based on meta data in the odyssey map data structure, with at least one node for presenting interactive elements to a user;
display in response to a plurality of questions in a corresponding template of the one or more templates presented, a page with a prompt to input a plurality of respective user inputs that are representative of factors affecting product selection, wherein each user input of the plurality of respective user inputs is associated with one or more corresponding nodes traversed in the data structure, wherein the data structure defines a route connecting the corresponding nodes in the data structure, wherein two or more user inputs of the plurality of respective user inputs are each natural language inputs responsive to respective natural language prompts, wherein a second user input depends on a first user input, wherein each user input is associated with a human readable value of at least one node of the plurality of nodes, and wherein at least one of the respective natural language prompts depends on a previous user input;
responsive to receiving a user input, change information presented within the corresponding template after identifying a next node by referencing the data structure;
render data contents of a node being traversed in the data structure based on the two or more user inputs received after identifying the next node in a routing table, each node including an ID and a type attribute;
generate a name, a description, and a present a prompt to input, at least one configuration recommendation based on one or more user inputs of the plurality of respective user inputs;
transmit each of the name, the description, and the at least one configuration recommendation;
record a user selection for the configuration, the selection associated with the one or more corresponding nodes traversed along a path in the data structure, wherein the path is based on the plurality of respective user inputs and wherein the data structure defines a sequential relationship between the corresponding nodes;
combine, by referencing the data structure on the computer readable storage medium at a conclusion of a traversal, at least one user input of the plurality of respective user inputs and at least one user selection into one or more informational snippets that incorporate previously provided information, to generate a set of instructions for creating a product;
responsive to a user confirmation, transmit the set of instructions; and
display the set of instructions for matching the product to an intended goal.
Under Step 2A, Prong 1, it is necessary to evaluate whether the claim recites a judicial exception by referring to subject matter groupings articulated in the guidance. When considering MPEP §2106.04(a), the claims recite an abstract idea. For example, claim 10 recites the abstract idea of product customization, as noted above. This concept is considered to be a certain method of organizing human activity. Certain methods of organizing human activity are defined in the MPEP as including “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).” MPEP §2106.04(a)(2) subsection II. In this case, the abstract idea recited in claim 10 is a certain method of organizing human activity because following instructions is managing personal behavior, and generate a name, a description, and a present a prompt to input, at least one configuration recommendation based on one or more user inputs of the plurality of respective user inputs and combine, by referencing the data structure on the computer readable storage medium at a conclusion of a traversal, at least one user input of the plurality of respective user inputs and at least one user selection into one or more informational snippets that incorporate previously provided information, to generate a set of instructions for creating a product is a sales activity. Thus, claim 10 recites an abstract idea.
The recited limitations of claim 10 also recite an abstract idea because they are considered to be mental processes. As described in the MPEP, mental processes are “concepts performed in the human mind (including an observation, evaluation, judgment, opinion)”. MPEP §2106.04(a)(2) subsection III. In this case, retrieve an odyssey map data structure defining possible paths between nodes of a plurality of nodes, each node being a data object in the data structure to identify one or more templates associated, based on meta data in the odyssey map data structure, with at least one node for presenting interactive elements to a user; and record a user selection for the configuration, the selection associated with the one or more corresponding nodes traversed along a path in the data structure, wherein the path is based on the plurality of respective user inputs and wherein the data structure defines a sequential relationship between the corresponding nodes are types of observation.
Additionally, display in response to a plurality of questions in a corresponding template of the one or more templates presented, a page with a prompt to input a plurality of respective user inputs that are representative of factors affecting product selection, wherein each user input of the plurality of respective user inputs is associated with one or more corresponding nodes traversed in the data structure, wherein the data structure defines a route connecting the corresponding nodes in the data structure, wherein two or more user inputs of the plurality of respective user inputs are each natural language inputs responsive to respective natural language prompts, wherein a second user input depends on a first user input, wherein each user input is associated with a human readable value of at least one node of the plurality of nodes, and wherein at least one of the respective natural language prompts depends on a previous user input; responsive to receiving a user input, change information presented within the corresponding template after identifying a next node by referencing the data structure; render data contents of a node being traversed in the data structure based on the two or more user inputs received after identifying the next node in a routing table, each node including an ID and a type attribute; generate a name, a description, and a present a prompt to input, at least one configuration recommendation based on one or more user inputs of the plurality of respective user inputs; transmit each of the name, the description, and the at least one configuration recommendation; combine, by referencing the data structure on the computer readable storage medium at a conclusion of a traversal, at least one user input of the plurality of respective user inputs and at least one user selection into one or more informational snippets that incorporate previously provided information, to generate a set of instructions for creating a product; responsive to a user confirmation, transmit the set of instructions; and display the set of instructions for matching the product to an intended goal are types of judgement. Thus, claim 10 recites an abstract idea.
Under Step 2A, Prong 2, if it is determined that the claims recite a judicial exception, it is then necessary to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of that exception. See MPEP §2106.04(d). In this case, claim 10 includes additional elements such as a non-transitory computer readable medium embodying instructions executable by a computing device of a configuration system which when executed cause the computing device to perform, a computer readable storage medium of a solid state storage device coupled to a processor of the configuration system, a data object encoded in JavaScript Object Notation (JSON) as a JSON file; display via user interface comprising a visual interface or an audio interface; a digital page; a first user interface of the computing device; digitally receiving; each node encoded in a respective JSON file; digitally transmit, to the first user interface of the computing device or to a second user interface of the computing device; a remote computing device through a networked computing device; and a screen of the remote computing device.
Although reciting additional elements, the additional elements do not integrate the abstract idea into a practical application because they merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a computer as a tool to perform the abstract idea. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. Similar to the limitations of Alice, claim 10 merely recites a commonplace business method (i.e., product customization) being applied on a general purpose computer. See MPEP §§2106.04(d) and 2106.05(f). Thus, the claimed additional elements are merely generic elements and the implementation of the elements merely amounts to no more than an instruction to apply the abstract idea using a generic computer. Since the additional elements merely include instructions to implement the abstract idea on a generic computer or merely use a generic computer as a tool to perform an abstract idea, the abstract idea has not been integrated into a practical application. As such, claim 10 is directed to an abstract idea.
Under Step 2B, if it is determined that the claims recite a judicial exception that is not integrated into a practical application of that exception, it is then necessary to evaluate the additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). See MPEP §2106.05.
Here, as noted above, the additional elements recited in claim 10 are recited and described in a generic manner merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea.
Even when considered as an ordered combination, the additional elements of claim 10 do not add anything that is not already present when they considered individually. In Alice, the court considered the additional elements “as an ordered combination,” and determined that “the computer components ... ‘ad[d] nothing ... that is not already present when the steps are considered separately’ and simply recite intermediated settlement as performed by a generic computer.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1983-84 (2014). (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Also see MPEP §2106.05(f). Similarly, when viewed as a whole, claim 10 simply conveys the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B, there are no meaningful limitations in claim 10 that transforms the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
As such, claim 10 is ineligible.
Dependent claims 11-13 do not aid in the eligibility of independent claim 10. For example, claims 11-13 merely provide further embellishments of the abstract limitations recited in independent claim 10.
Additionally, it is noted that claims 11-12 do not include further additional elements. Therefore, the claims do not integrate the abstract idea into a practical application because the
claims merely amount to an instruction to apply the abstract idea using a generic computer or merely use a computer as a tool to perform the abstract idea. The claims also do not amount to significantly more than the abstract idea because the claims merely amount to an instruction to apply the abstract idea using a generic computer or merely use a computer as a tool to perform the abstract idea.
Furthermore, it is noted that claims 13 includes further additional elements of a screen. However, these additional elements do not integrate the abstract idea into a practical application because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a computer as a tool to perform the abstract idea. These additional elements are merely generic elements and are likewise described in a generic manner in Applicant’s specification. Additionally, the additional elements do not amount to significantly more because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a computer as a tool to perform the abstract idea.
Thus, dependent claims 11-13 are also ineligible.
Claims 19-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claims recite an abstract idea. This judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
The steps for the eligibility analysis can be found in the MPEP §2106.
Under Step 1, the claims are directed to statutory categories. Specifically, the system, as claimed in claims 19-22, is directed to a machine.
While the claims fall within statutory categories, under Step 2A, Prong 1, the claimed invention recites the abstract idea of product customization. Specifically, claim 19 recites the abstract idea of:
(claim 17)
an odyssey map representing possible paths in a decision tree defined by a data structure, the data structure comprising one or more data structure nodes, wherein each data structure node is in the data structure;
(claim 18)
convey a series of questions or prompts in one or more templates identified in the data structure, wherein each template is associated, based on meta data in the data structure, with at least one data structure node for presenting interactive elements;
in response to a user confirmation, transmit the set of instructions for creating the gift product based on user selections among each of the recommendations, wherein the instructions comprise a goal; and
display the set of instructions to match the gift product to an intended goal;
(claim 19)
receive a plurality of user inputs responsive to the series of questions or prompts, wherein each user input of the plurality of user inputs is respectively associated with the one or more data structure nodes traversed in the data structure, wherein the data structure defines a sequential relationship indicative of a traversal order between the data structure nodes, wherein two or more user inputs of the plurality of user inputs are each responsive to respective questions or respective prompts of the series, wherein a second user input depends on a first user input, wherein at least one user input of the plurality of user inputs is a natural language user input, wherein each user input is associated with at least one data structure node of the one or more data structure nodes, and wherein at least one of the respective prompts or questions depends on a previous user input;
responsive to receiving a user input, identify a next data structure node by referencing the data structure;
collect the plurality of user inputs to be stored; and
receive one or more selections respectively associated with the one or more data structure nodes in the data structure to sequentially traverse the one or more data structure nodes within the data structure based on corresponding relationships between the data structure nodes defined, wherein sequentially traversing the one or more data structure nodes comprises iteratively identifying the next data structure node, each data structure node including an ID and a type attribute.
Under Step 2A, Prong 1, it is necessary to evaluate whether the claim recites a judicial exception by referring to subject matter groupings articulated in the guidance. When considering the 2019 PEG, the claims recite an abstract idea. For example, claim 19 recites the abstract idea of product customization, as noted above. This concept is considered to be a certain method of organizing human activity. Certain methods of organizing human activity are defined in the MPEP as including “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).” MPEP §2106.04(a)(2) subsection II. In this case, the abstract idea recited in claim 19 is a certain method of organizing human activity because receive a plurality of user inputs responsive to the series of questions or prompts, wherein each user input of the plurality of user inputs is respectively associated with the one or more data structure nodes traversed in the data structure, wherein the data structure defines a sequential relationship indicative of a traversal order between the data structure nodes, wherein two or more user inputs of the plurality of user inputs are each responsive to respective questions or respective prompts of the series, wherein a second user input depends on a first user input, wherein at least one user input of the plurality of user inputs is a natural language user input, wherein each user input is associated with at least one data structure node of the one or more data structure nodes, and wherein at least one of the respective prompts or questions depends on a previous user input is managing personal behavior in the form of following instructions. Furthermore, in response to a user confirmation, transmit the set of instructions for creating the gift product based on user selections among each of the recommendations, wherein the instructions comprise a goal are marketing and sales activities. Thus, claim 19 recites an abstract idea.
The recited limitations of claim 19 also recite an abstract idea because they are considered to be mental processes. As described in the MPEP, mental processes are “concepts performed in the human mind (including an observation, evaluation, judgment, opinion)”. MPEP §2106.04(a)(2) subsection III. In this case, an odyssey map representing possible paths in a decision tree defined by a data structure, the data structure comprising one or more data structure nodes wherein each data structure node is in the data structure; convey a series of questions or prompts in one or more templates identified in the data structure, wherein each template is associated, based on meta data in the data structure, with at least one data structure node for presenting interactive elements; in response to a user confirmation, transmit the set of instructions for creating the gift product based on user selections among each of the recommendations, wherein the instructions comprise a goal; display the set of instructions to match the gift product to an intended goal; responsive to receiving a user input, identify a next data structure node by referencing the data structure; and collect the plurality of user inputs to be stored are types of judgement. Additionally, receive a plurality of user inputs responsive to the series of questions or prompts, wherein each user input of the plurality of user inputs is respectively associated with the one or more data structure nodes traversed in the data structure, wherein the data structure defines a sequential relationship indicative of a traversal order between the data structure nodes, wherein two or more user inputs of the plurality of user inputs are each responsive to respective questions or respective prompts of the series, wherein a second user input depends on a first user input, wherein at least one user input of the plurality of user inputs is a natural language user input, wherein each user input is associated with at least one data structure node of the one or more data structure nodes, and wherein at least one of the respective prompts or questions depends on a previous user input; collect the plurality of user inputs to be stored; and receive one or more selections respectively associated with the one or more data structure nodes in the data structure to sequentially traverse the one or more data structure nodes within the data structure based on corresponding relationships between the data structure nodes defined, wherein sequentially traversing the one or more data structure nodes comprises iteratively identifying the next data structure node, each data structure node including an ID and a type attribute are types of observation. Thus, claim 19 recites an abstract idea.
Under Step 2A, Prong 2, if it is determined that the claims recite a judicial exception, it is then necessary to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of that exception. In this case, claim 18 includes additional elements such as (claim 17) a gift product customization system, comprising: a solid state storage device comprising a computer readable storage medium, the computer readable storage medium comprising a data structure, wherein each data structure node is an immutable atomic object encoded in JavaScript Object Notation (JSON) as a JSON file in the data structure; (claim 18) a first computing device connected to a network, the first computing device comprising: a first user interface; a second computing device connected to the network; transmit via the network to a third computing device, the third computing device comprising a screen; and (claim 19) a second user interface configured to: digitally receive; wherein each user input is associated with a human readable value of at least one data structure node; an input means of the first computing device; a self-referential table of the data structure; and each data structure node encoded in a respective JSON file.
Although reciting additional elements, the additional elements do not integrate the abstract idea into a practical application because they merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a computer as a tool to perform the abstract idea. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. Similar to the limitations of Alice, claim 19 merely recites a commonplace business method (i.e., product customization recommendation) being applied on a general purpose computer. See MPEP §§2106.04(d) and 2106.05(f). Thus, the claimed additional elements are merely generic elements and the implementation of the elements merely amounts to no more than an instruction to apply the abstract idea using a generic computer. Since the additional elements merely include instructions to implement the abstract idea on a generic computer or merely use a generic computer as a tool to perform an abstract idea, the abstract idea has not been integrated into a practical application. As such, claim 19 is directed to an abstract idea.
Under Step 2B, if it is determined that the claims recite a judicial exception that is not integrated into a practical application of that exception, it is then necessary to evaluate the additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).
In this case, as noted above, the additional elements recited in claim 19 are recited and described in a generic manner merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea.
Even when considered as an ordered combination, the additional elements of claim 19 do not add anything that is not already present when they considered individually. In Alice, the court considered the additional elements “as an ordered combination,” and determined that “the computer components ... ‘ad[d] nothing ... that is not already present when the steps are considered separately’ and simply recite intermediated settlement as performed by a generic computer.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1983-84 (2014). (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Similarly, when viewed as a whole, claim 18 simply conveys the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B, there are no meaningful limitations in claim 19 that transforms the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
As such, claim 19 is ineligible.
Dependent claims 20-22 do not aid in the eligibility of claim 19. For example, claims 20 and 22 merely further define the abstract limitations of claim 19. Additionally, claim 21 merely provide further embellishments of the abstract limitations recited in claim 19.
Additionally, it is noted that claim 20 includes further additional elements of a screen configured to display and a printer configured to print; and claim 22 includes further additional elements of wherein the second computing device comprises at least one of a screen configured to display the set of instruction and a printer configured to print the set of instructions. However, these additional elements do not integrate the abstract idea into a practical application because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a computer as a tool to perform the abstract idea. These additional elements are merely generic elements and are likewise described in a generic manner in Applicant’s specification. Additionally, the additional elements do not amount to significantly more because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a computer as a tool to perform the abstract idea.
Furthermore, it is noted that claim 21 does not include further additional elements. Therefore, the claims do not integrate the abstract idea into a practical application because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a computer as a tool to perform the abstract idea. The claims also do not amount to significantly more than the abstract idea because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a computer as a tool to perform the abstract idea.
Thus, dependent claims 20-22 are also ineligible.
Claim Rejections - 35 USC § 103
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 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.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Davies (US 20200186355 A1, herein referred to as Davies), in view of Smith et. al. (US 7343328 B1, herein referred to as Smith).
Claim 17:
Davies discloses:
A system comprising {Davies: fig 21 computer system}:
a solid state storage device comprising a computer readable storage medium {Davies: [0721] one or more computer readable media could take the form of one or more physical computer readable media such as semiconductor or solid state memory},
the computer readable storage medium comprising a data structure {Davies: [0721] methods described above may be implemented by a computer program (i.e., data structure). The computer program may include computer code arranged to instruct a computer to perform the functions of one or more of the various methods described above. The computer program may be provided to an apparatus, such as a computer, on one or more computer readable media},
the data structure comprising one or more data structure nodes on the computer readable storage medium {Davies: [0068] persisting at least one data transmission on the at least one data service module on multiple data storage nodes in the data store},
wherein each data structure node is an immutable atomic object encoded in JavaScript Object Notation (JSON) as a JSON file in the data structure {Davies: [0004] ACID (atomicity, consistency, isolation, and durability) is a consistency model for databases that states that each database transaction must succeed if the entire transaction be rolled back (atomicity), cannot leave the database in an inconsistent state (consistency), cannot interfere with each other (isolation); and must persist, even when the servers restart (durability); [0068] persisting at least one data transmission on the at least one data service module on multiple data storage nodes in the data store; [0594] provided by JavaScript Object Notation (JSON) documentation}.
Although disclosing a computer system that comprises computer readable storage media with data structures and nodes that can be encoded atomically and persistently through a JSON document, Davies does not disclose:
A gift product customization system comprising:
storage comprising an odyssey map representing possible paths in a decision tree defined by a data structure.
Davies does disclose that a decision tree can be created by an operator so that a customer can choose the offers they would like (Davies: [0623]).
However, Smith teaches:
A gift product customization system {Smith: figs 1, 4; [Col. 11, ln. 59-60] gift finder assists customers to find a particular product of interest or offer gift suggestions}, comprising:
storage comprising an odyssey map representing possible paths in a decision tree defined by a data structure {Smith: fig 1, decision tree 14; [Col. 2, ln. 55-56] decision tree 14 (i.e., odyssey map) is a binary tree structure (i.e., data structure); [Col. 3, ln. 42-43] implemented using the database structure},
the data structure comprising one or more data structure nodes {Smith: [Col. 2, ln. 56-58] a binary tree structure (i.e., data structure) having a root node 16, a plurality of intermediate nodes 18, and a plurality of leaf nodes 20.}.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the decision tree as taught by Smith in the transaction system of Davies to give the shopper an enjoyable, fast-paced experience (Smith: [Col. 4, ln. 35-36]).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Davies (US 20200186355 A1, herein referred to as Davies), in view of Smith et. al. (US 7343328 B1, herein referred to as Smith), in further view of Fingerer et. al. (US 20110252348 A1, herein referred to as Fingerer).
Claim 18:
Davies and Smith teach the system of claim 17. Davies nor Smith disclose:
a first computing device connected to a network, the first computing device comprising:
a first user interface configured to convey a series of questions or prompts in one or more templates identified in the data structure of the solid state storage device, wherein each template is associated, based on meta data in the data structure, with at least one data structure node for presenting interactive elements;
a second computing device connected to the network, the second computing device configured to, in response to a user confirmation, transmit via the network to a third computing device, a set of instructions for creating a gift product based on user selections among each of the recommendations, wherein the instructions comprise a goal; and
the third computing device comprising a screen configured to display the set of instructions to match the gift product to an intended goal.
Davies does disclose a data structure on the solid state storage device (Davies: [0721]).
However, Smith teaches:
a first computing device connected to a network {Smith: fig 1, device 34 connected to network 28}, the first computing device comprising:
a first user interface configured to convey a series of questions or prompts associated with at least one data structure node for presenting interactive elements {Smith: fig 1, shoppers browser on device 34; [Col. 12, ln. 24-44] system first prompts her to select the type of gift she wishes to give. The choices under this selection include: Hot products Gadget gurus Multi-purpose Household basics Combo kits Nothing in particular. Thereafter, the shopper is prompted to choose an interest of the recipient; [Col. 2, ln. 55-56] decision tree 14 (i.e., odyssey map) is a binary tree structure (i.e., data structure); [Col. 3, ln. 42-43] implemented using the database structure};
a second computing device connected to the network, the second computing device configured to transmit via the network to a third computing device, a gift product based on user selections among each of the recommendations, wherein the gift comprises a goal {Smith: fig 1, product finder server 10 and expert system 12 connected to network 28; [Col. 9, ln. 46-52] the shopper was able to indicate that the intended gift recipient wanted to build screen windows (i.e., goal). To accommodate this kind of input, a presently preferred data structure includes a projects database 86. This database contains a list of projects with recommended products and/or recommended product classes and attribute combinations.}; and
the third computing device configured to match the gift product to an intended goal {Smith: [Col. 9, ln. 30-34] Using product class and product attribute information, the expert system can select products that match some of the criteria supplied by the shopper during the interactive dialogue.}.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the decision tree as taught by Smith in the transaction system of Davies to give the shopper an enjoyable, fast-paced experience (Smith: [Col. 4, ln. 35-36]).
Davies nor Smith disclose:
questions or prompts in one or more templates identified, wherein each template is associated, based on meta data;
in response to a user confirmation, transmit a set of instructions for a gift product based on user selections among each of the recommendations, wherein the instructions comprise a goal; and
a screen configured to display the set of instructions to match the gift product to an intended goal.
However, Fingerer teaches:
questions or prompts in one or more templates identified, wherein each template is associated, based on meta data {Fingerer: [0046] floral arrangement creation engine system 102 may provide a plurality of bouquet template choices to a user; [0047] each bouquet template selection may have information associated with the template identifying a number and location of each type of flower in the bouquet template (i.e., metadata); [0055] floral arrangement creation engine system 102 may receive a template selection from the user selecting one of the templates presented in 404; [0056] floral arrangement creation engine system 102 may provide one or more line flower choices for a user.};
in response to a user confirmation, transmit a set of instructions for creating a gift product based on user selections among each of the recommendations{Fingerer: fig 6, instructions; [0028] user may create and purchase (i.e., confirm) a floral arrangement using the floral arrangement creation engine system 102. Floral arrangement creation engine system 102 may communicate the user's floral arrangement to the floral arranger system 108. In an exemplary embodiment, a florist may create the actual floral arrangement from actual flowers using the information received by the floral arranger system 108};
a screen configured to display the set of instructions to match the gift product to an intended goal {Fingerer: fig 6, instructions; [0074] the floral arrangement creation engine system 102 may interact with a user via a GUI 600 displayed on the user computer; [0053] may also correspond to particular themes, such as Valentine's Day, graduation, wedding, or an anniversary}.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the templates and instructions as taught by Fingerer in the transaction system of Davies and Smith to offer the ability for a novice to customize a bouquet, arrangement or centerpiece (Fingerer: [0004]).
Eligible Subject Matter
When considering each of the limitations, the Examiner has concluded that claims 17-18 alone are eligible under 35 U.S.C. 101. Specifically, the claims recite a statutory category of invention, namely a system (i.e., a machine). With respect to independent claim 17, the eligible features include:
A gift product customization system, comprising:
a solid state storage device comprising a computer readable storage medium, the computer readable storage medium comprising a data structure, the data structure comprising one or more data structure nodes on the computer readable storage medium wherein each data structure node is an immutable atomic object encoded in JavaScript Object Notation (JSON) as a JSON file in the data structure.
Claims 17-18 do not recite an abstract idea. Although the claim involves an abstract idea regarding an odyssey map as part of a data structure and conveying prompts to a user, the claim is directed to the non-abstract technological structure of the system. Therefore, claims 17-18 alone are eligible under 35 U.S.C. 101.
Overcoming Prior Art
Claims 1-13 and 19-22 are rejection under 35 U.S.C. 101, set forth in this Office action. However, claims 1-13 and 19-22 overcome the prior art. For a detailed explanation of overcoming prior art, see pages 18-22 of the Office Action dated August 29, 2022.
Response to Arguments
With respect to the traversal of the restriction, Applicant’s arguments have been considered and are persuasive with respect to claim 1. However, newly added claim 23 is subject to a restriction for the reasons explained starting on page 3.
With respect to the rejections under 35 U.S.C. 101, Applicant’s arguments have been considered but are not persuasive with respect to claims 1-13 and 17-22.
With respect to pages 8-10 of the Remarks, Applicant argues “[r]epresentative claim 10 does not recite ‘certain methods of organizing human activity’ or a mental process as asserted” because “claim 10 recites specific computer operations over a specialized data structure - retrieving an odyssey map whose nodes are immutable atomic JSON files, identifying templates via metadata, iteratively identifying a next node using a routing table, rendering node data, and synthesizing informational snippets for transmission/display. These are structural and operational computer limitations, not a mere recitation of [abstract ideas].” Applicant also argues “Claims 18-20, as previously presented, and as currently amended, incorporate that same technological structure and add system-level interfaces and processing that operate over the claimed odyssey map. In particular, the claims recite sequential traversal of JSON-encoded nodes via a self-referential table, ID/type-based node selection, dynamic prompting dependent on prior inputs, and generation/communication of structured outputs. These recitations are technological system operations, not ‘following instructions’ or ‘sales activity.” However, Examiner respectfully disagrees with Applicant’s characterization of the Subject Matter Eligibility Analysis.
Under Step 2A 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. MPEP 2106.04, subsection II(A)(1). In other words, if the claim describes an abstract idea, it recites an abstract idea under Step 2A Prong One.
As explained in the MPEP at § 2106.04(a), key concepts were extracted and synthesized in order to identify groupings of abstract ideas. One of those groupings was “certain methods of organizing human activity,” which is defined to include “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),” which can include certain activity between a person and a computer.
Here, claims recite certain methods of organizing human activity because the claim recites generating a set of instructions for creating a product and displaying those instructions to match the product to an intended goal. These claim features are marketing and sales activities. “Marketing activities” is a broad phrase that encompasses activities that are related to marketing, which includes any strategies that a business employs to encourage customers to buy goods or services. “Sales activities” is a broad phrase that encompasses activities that are related to sales, which includes any steps taken to move customers through a sales process. Generating and displaying instructions for creating a product is moving a customer through a sales process.
Furthermore, the claims recite managing personal behavior because the claims recite instructions for traversing a path in a decision tree. This is managing personal behavior because it is following rules or instructions. Therefore, the claims recite certain methods of organizing human activity.
Another abstract idea grouping is “mental processes,” which is defined to include limitations that can practically be performed in the human mind or with a physical aid, including, for example, observations, evaluations, judgments, and opinions. The MPEP at § 2106.04(a)(2), section III(c) explains that a claim that requires a computer may still recite a mental process. If the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept, then the claim is considered to recite a mental process. The only claims that do not recite mental processes are claims that “do not contain limitations that can practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitations.” See MPEP at § 2106.04(a)(2), section III(a).
In this case, the claims recite a mental process because the claim recites observations and judgements. Absent the computing elements, a human can practically retrieve an odyssey map comprising a decision tree, traverse the nodes of the tree, present and answer prompts, and combine and present instructions for creating a product with or without a physical aid. Thus, the computing elements recited are merely used to perform the abstract idea in a computer environment. While the claims do recite additional elements such as immutable atomic JSON files amongst other computing components, the recitation of these additional elements in each independent claim are generic and encompass “existing computers long in use, no new machinery being necessary.” Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972). The presence of additional elements does not negate the presence of an abstract idea simply because the additional elements are performing the claimed functions. Rather, the functionality of the additional elements needs to be evaluated to determine whether a human can perform the functions as claimed. In this case, a human can perform the observation and judgement functions as claimed, absent the computing elements. Therefore, the claims recite a mental process.
With respect to pages 10-12, Applicant argues that claims 10 and 18-20 recite “additional elements [that], taken as a whole, meaningfully limit any alleged exception to a particular data-structure mediated solution implemented on a computer, and therefore integrate (rather than merely apply) the exception.” However, Examiner respectfully disagrees.
The MPEP at §§ 2106.04(d)1 and 2106.05(a) provides guidance on how to evaluate whether claims recite an improvement in the functioning of a computer or an improvement to other technology or technical field. For example, the MPEP states “the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.” The MPEP further states that “[t]he specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art,” and that, “conversely, if the specification explicitly sets forth an improvement but in a conclusory manner…the examiner should not determine the claim improves technology.” That is, the claim includes the components or steps of the invention that provide the improvement described in the specification.
For example, in Enfish, the specification provided teaching that the claimed invention achieves benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements. Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). Additionally, in Core Wireless the specification noted deficiencies in prior art interfaces relating to efficient functioning of the computer. Core Wireless Licensing v. LG Elecs. Inc., 880 F.3d 1356 (Fed Cir. 2018). With respect to McRO, the claimed improvement, as confirmed by the originally filed specification, was “…allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters…’” and it was “…the incorporation of the claimed rules, not the use of the computer, that “improved [the] existing technological process” by allowing the automation of further tasks”. McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, (Fed. Cir. 2016).
In this case, Applicant’s claims do not reflect an improvement to the functioning of a computer or other technology. Rather, the claims focus “on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool”. Id citing Enfish at 1327, 1336. This is reflected in paragraphs [0002]-[0006] of Applicant’s specification, which describe Applicant’s claimed invention is directed toward solving abstract problems such as producing a customized gift product that is flexible enough to allow an order fulfiller to exhibit creativity in matching the product to the purchaser's purpose and emotion(s) intended to be conveyed. Although the claims include computer technology, such elements are merely peripherally incorporated in order to implement the abstract idea. This is unlike the improvements recognized by the courts in cases such as Enfish, Core Wireless, and McRO.
Unlike the precedential cases, neither the specification nor the claims of the instant invention identify such a specific improvement to computer capabilities. The instant claims are not directed to improving “the existing technological process” but are directed to improving the commercial and mental task of recommending product customizations to a user being applied on a generic computer. The claimed process is not providing any improvement to another technology or technical field as the claimed process is not, for example, improving the processor and/or computer components that operate the system. Rather, the claimed process is utilizing different data while still employing the same processor and/or computer components to apply the commercial and mental process of recommending product customizations to a computer. As such, the claims do not recite specific technological improvements, and the rejection is maintained in this aspect.
With respect to pages 12-13 of the Remarks, Applicant argues “the claims as an ordered combination recite non-conventional arrangements that amount to significantly more.” However, Examiner respectfully disagrees.
An “inventive concept” is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself. Alice Corp. Pty. Ltd. v. CLS Bank Int'l., 573 U.S. 208 at 27-18, 110 USPQ2d at 1981 (2014). Furthermore, the 2019 PEG states “if an examiner had previously concluded under revised Step 2A that, e.g., an additional element was insignificant extra-solution activity, they should reevaluate that conclusion in Step 2B. If such reevaluation indicates that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that an inventive concept is present and that the claim is thus eligible.”
In the instant case, Examiner does not evaluate the claims to determine whether the claims recite well-understood, routine, and conventional activity because the instant claims are not determined to recite insignificant extra-solution activity. However, similar to Alice, each step of the claims “does no more than require a generic computer to perform generic computer functions,” and the recited hardware is “purely functional and generic.” Id. 573 U.S. at 225-26, 110 USPQ2d at 1984-85. Each additional element in the instant claims is recited at a high level of generality, and the combination of a non-transitory computer readable medium embodying instructions executable by a computing device of a configuration system which when executed cause the computing device to perform, a computer readable storage medium of a solid state storage device coupled to a processor of the configuration system, a data object encoded in JavaScript Object Notation (JSON) as a JSON file; display via user interface comprising a visual interface or an audio interface; a digital page; a first user interface of the computing device; digitally receiving; each node encoded in a respective JSON file; digitally transmit, to the first user interface of the computing device or to a second user interface of the computing device; a remote computing device through a networked computing device; and a screen of the remote computing device for claim 10 and (claim 17) a gift product customization system, comprising: a solid state storage device comprising a computer readable storage medium, the computer readable storage medium comprising a data structure, wherein each data structure node is an immutable atomic object encoded in JavaScript Object Notation (JSON) as a JSON file in the data structure; (claim 18) a first computing device connected to a network, the first computing device comprising: a first user interface; a second computing device connected to the network; transmit via the network to a third computing device, the third computing device comprising a screen; and (claim 19) a second user interface configured to: digitally receive; wherein each user input is associated with a human readable value of at least one data structure node; an input means of the first computing device; a self-referential table of the data structure; and each data structure node encoded in a respective JSON file for claim 19 does no more than apply the commercial and mental task of recommending product customizations to a generic computer. Therefore, the claims do not amount to significantly more than the abstract idea, and the rejection is maintained in this aspect.
With respect to pages 12-13 of the Remarks, Applicant argues “FOA's reasoning treats ‘product customization’ and ‘following instructions’ as if they were recited by the claims. They are not.” However, Examiner respectfully disagrees.
As explained above, the claims do recite these abstract ideas because the claims recite “display in response to a plurality of questions in a corresponding template of the one or more templates presented … a prompt to input a plurality of respective user inputs that are representative of factors affecting product selection,” “generate a name, a description, and a present a prompt to input, at least one configuration recommendation based on one or more user inputs of the plurality of respective user inputs,” “combine … at least one user input of the plurality of respective user inputs and at least one user selection into one or more informational snippets that incorporate previously provided information, to generate a set of instructions for creating a product,” and “display the set of instructions … for matching the product to an intended goal.” Therefore, the claims do recite product customization and following instructions, or abstract ideas.
With respect to page 13 of the Remarks, Applicant argues “FOA maps limitations such as referencing a routing table, traversing JSON-encoded nodes with ID/type, and re-rendering templates based on persisted state to ‘observation’ or ‘judgment.’ (FOA at pp. 10-12, 19-21.) But those operations cannot practically be performed in the human mind - they depend on machine-resident data structures, persistent identifiers, and table-driven traversal - and therefore are not ‘mental processes’ under the 2025 Memo.” However, Examiner respectfully disagrees.
As previously explained, the MPEP at § 2106.04(a)(2), section III(c) explains that a claim that requires a computer may still recite a mental process. If the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept, then the claim is considered to recite a mental process. Here, the traversal of a decision tree is a mental process. The fact that it is occurring on a generic computer using generic computing elements such as JSON encoding does not relieve the claims of the fact that the claim recites a mental process. In fact, a decision tree can be traversed by the human mind – humans are capable of making “if-then” decisions with or without pen and paper. Therefore, the claims recite mental processes.
With respect to pages 13-14 of the Remarks, Applicant argues “When viewed holistically, the typed odyssey map, self-referential/routing tables, and template-metadata associations define how the computer itself operates to achieve deterministic traversal and synthesis, which is a practical application” and “analysis must address the claim as a whole, not a piecemeal inventory of elements.” However, Examiner respectfully disagrees with Applicant’s characterization of the analysis.
An odyssey map, tables, and metadata are not technological. Rather, they are abstract methods for organizing or describing data. Claiming these tables to be self-referential does not absolve the claims because there is no support in the specification for such a table. Even taking this element in combination with the rest of the computing elements, including the solid state storage, JSON files, and immutable atomic objects, these elements in combination do no more than apply the abstract idea to a generic computer. These elements in combination do not improve how the computer operates; they merely a means to achieving the abstract idea on a computer. Therefore, the claims are being viewed holistically and do not integrate the abstract idea into a practical application.
With respect to page 14 of the Remarks, Applicant argues “claims [18-20] . . . tie the metadata-driven template/UI layer to the self-referential routing layer and to the JSON node schema, producing stateful, reproducible machine outputs (instruction sets/snippets). That is a particular way to achieve the result and reflects an improvement to the technical field of data-driven UI traversal and synthesis, not a mere automation of a manual process.” However, Examiner respectfully disagrees.
The claims do not recite a metadata-driven template/UI layer, self-referential routing layer, nor machine outputs connected in a way to go beyond applying an abstract idea to a generic computer. The display of a template, routing, and instruction sets/snippets are all abstract concepts that are using a generic GUI and JSON encoding to achieve the result of presenting instructions. Therefore, the claims are reciting an abstract idea applied to a generic computer.
Additionally on page 14 of the Remarks, Applicant argues “the FOA's conclusory ‘generic computer’ characterization and over-broad abstraction to ‘sales/following instructions’ do not satisfy the >50% probability standard articulated in the 2025 Memo.” However, Examiner respectfully disagrees. Applicant provides this and the above assertions with no statistical support nor case law supporting their analysis to arrive at this conclusion. Examiner, on the other hand, has provided examples from the MPEP and case law to support their analysis. Therefore it is more likely that the preponderance of the evidence standard is satisfied for Examiner’s analysis than Applicants, and the rejection is maintained.
With respect to the rejections under 35 U.S.C. 103, Applicant’s arguments have been considered but are not persuasive with respect to claim 17.
With respect to pages 16-19 of the Remarks, Applicant argues “the combination of cited references fails to teach or suggest at least the bolded claim features.” However, Examiner respectfully disagrees.
Davies discloses a system with computer readable storage media that can take the physical form of a solid state memory (Davies: [0721]). The memory comprises a computer program (i.e., data structure) that includes computer instructions that uses an atomic model, which is persistent (i.e., immutable) for each node (Davies: [0004], [0068]). The model also incorporates JavaScript ObjectNotation into the computer program (Davies: [0594]).
Although Davies discloses that there are nodes included in the data structure, Davies does not disclose that the computer system is a gift customization system nor that storage comprises an odyssey map representing paths in a decision tree that is defined by a data structure. However, Smith teaches a gift finder system that helps customers find particular products of interests for an intended recipient (Smith: figs 1, 4; [Col. 11, ln. 59-60]). The system incorporates a decision tree (i.e., odyssey map) as a binary tree structure (i.e., data structure) which is stored in the memory (Smith: fig 1; [Col. 2, ln. 55-56], [Col. 3, ln. 42-43]). The binary tree structure has a root node, plurality of intermediate nodes, and a plurality of leaf nodes (Smith: [Col. 2, ln. 56-58]). Smith is merely relied on to demonstrate that it is predictable for one having ordinary skill in the art to use the Davies persistent atomic model system in the context of product customization, and modifying Davies to include the elements of Smith would be obvious because it would give the shopper an enjoyable, fast-paced experience (Smith: [Col. 4, ln. 35-36]). Therefore, the references do teach claim 17, and the rejection is maintained.
Conclusion
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/KATHERINE A BARLOW/ Examiner, Art Unit 3688
/KELLY S. CAMPEN/ Supervisory Patent Examiner, Art Unit 3691