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 .
Response to Amendment
This Action is in response to the Amendment filed September 25, 2025. Claims 1, 15 and 20 are amended. Claims 1-21 are pending and have been examined. As of the date of this communication, no Information Disclosure Statements (IDS) have been filed on behalf of this case.
Claim Rejections - 35 USC § 112
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 1-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain 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, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claims 1, 15 and 20 the limitation “generating data characterizing a candidate pool comprising the selected first number of candidates and the selected second number of candidates in accordance with the target trait characteristics” is not supported by the original disclosure. The specification states that the “target trait characteristic for selecting candidates from the population can include a condition on the trait. For example, using the example where the trait is age and the population includes a pool of job applicants, the target trait characteristic can specify that 80% of those interviewed be adult, and 20% be minors” [0035]. This does not describe generating data characterizing a candidate pool comprising the selected first number of candidates and the selected second number of candidates. Accordingly, the limitation is directed to impermissible new matter. Claims 2-14, 21 and 16-19 by being dependents of Claims 1 and 15 respectively are also rejected.
In claim 21 the limitation “receiving feedback on the selected first number of candidates or the selected second number of candidates” is not supported by the original disclosure. The specification states that user “feedback regarding the selected first number of candidates can be received” [0009]. This does not describe receiving feedback on a selected second number of candidates. Accordingly, the limitation is directed to impermissible new matter.
In claim 21 the limitation “retraining at least one of the first model or the second model based on the received feedback” is not supported by the original disclosure. The specification states that user “feedback regarding the selected first number of candidates can be received. The first model can be retrained using the user feedback and the selected first number of candidates” [0009]. This does not describe that a second model based on the received feedback can be retrained. Accordingly, the limitation is directed to impermissible new matter.
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 1-21 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Specifically, claims 1-21 are directed toward at least one judicial exception without significantly more. In accordance with MPEP 2106, the rationale for this determination is explained below:
Representative claim 1 is directed towards a method, claim 15 is directed towards a system, claim 20 is directed towards a non-transitory computer readable medium, which are statutory categories of invention.
Although, claim 1 is directed toward a statutory category of invention, the claim is nonetheless, directed towards an abstract idea. The limitations that set forth this abstract idea recite: segmenting the population into at least a first subpopulation and a second subpopulation based at least in part on the respective trait, the segmenting such that all members of the first subpopulation are part of a first class of the two or more classes, and all members of the second subpopulation are part of a second class of the two or more classes; selecting, from the first subpopulation and using, a first number of candidates from the first subpopulation, the first number of candidates selected according to the target trait characteristic, using a first training population in which all members of the first training population are part of the first class of the two or more classes; and selecting, from the second subpopulation and using, a second number of candidates from the second subpopulation, the second number of candidates selected according to the target trait characteristic, using a second training population in which all members of the second training population are part of the second class of the two or more classes; and generating data characterizing a candidate pool comprising the selected first number of candidates and the selected second number of candidates in accordance with the target trait characteristics. These limitations fall under the Mental Processes grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test, because they encompass steps that are practically performed in the human mind by observation, judgment and evaluation, including the use of pen and paper. See MPEP 2106.04(a)(2) III).
This judicial exception is not integrated into a practical application because, when analyzed as a whole under prong two of step 2A of the Alice/Mayo test (See MPEP 2106.04(d)), the additional elements provided by the claim are recited at a high level of generality and amount to insignificant extra-solution activity and merely applying the abstract idea by computer. In particular the claim recites the additional element of: receiving data characterizing a population and a target trait characteristic for selecting candidates from the population, the population including members and each member of the population including a respective trait classifiable into one of two or more classes. This amounts to insignificant extra-solution activity because such activity is necessary data gathering. See MPEP 2106.05(g). Additionally, the limitation referring to a first model, the first model trained; a second model, the second model trained, is merely using a computer as a tool to perform the abstract idea. See MPEP 2106.05(f). Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Simply adding insignificant extra-solution activity and implementing the abstract idea on a generic computer is not a practical application of the abstract idea. The additional elements 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 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). 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. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional limitations amount to insignificant extra-solution activity and applying the abstract idea on a computer. Viewing these limitations individually, the receiving, data characterizing a population and a target trait characteristic for selecting candidates from the population, the population including members and each member of the population including a respective trait classifiable into one of two or more classes is used only for necessary data gathering. The courts have recognized automating mental tasks and receiving or transmitting data over a network to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner or as insignificant extra-solution activity, as they are here. See MPEP 2106.05(d)II; Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1321, 120 USPQ2d 1353, 1362 (Fed. Cir. 2016); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015). Moreover, the limitations generically referring to a first model, a second model, a processor and memory (claim 15), also, do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment1. Viewing these limitations as a combination, the identified additional elements used to perform the various steps amounts to no more than merely applying the exception using generic computer, and insignificant extra-solution activity, which do not provide an inventive concept. Therefore, the limitations of the claim as a whole, when viewed individually and as an ordered combination, do not amount to significantly more than the abstract idea.
Likewise, dependent claims 2-14, 21 do not recite any limitations that would remedy the deficiencies outlined above as they do not add any elements which integrate the abstract idea into a practical application or constitute significantly more. While they may slightly narrow the abstract idea by further describing it, they do not make it less abstract and are rejected accordingly. Further still, claims 15-20 suffer from substantially the same deficiencies as outlined with respect to claim 1-14, 21 and are also rejected accordingly.
Response to Arguments
Applicant's filed arguments have been fully considered but have not been found persuasive.
A. Applicant’s argument regarding the 35 U.S.C. § 101 rejection that the claims are not merely directed towards an abstract idea, but at a minimum, provide an improvement to a computer-implemented process for selecting candidates using models. The Examiner respectfully disagrees. Selecting candidates/target members is an abstract idea in and of itself; and merely using a computer-implemented model to perform the selecting does not integrate the abstract idea into a practical application. Furthermore, simply generating data based on a selected first number and second number of candidates that are selected based on an application of their respective first and second models, does not provide an improvement to said models. As such, the proffered claim limitations but for the use of a computer model/tool are capable of being performed in the human mind, including using pen and paper. See MPEP 2106.04(a)(2), subsection III.
Applicant contends that the claims as amended favor eligibility because taken as a whole perform functions that are not merely generic and are both novel and non-obvious. The Examiner respectfully disagrees. As even newly discovered judicial exceptions are still exceptions, despite their novelty. For example, the mathematical formula in Parker v. Flook, 437 U.S. 584, 591-92, 198 USPQ 193, 198 (1978), the laws of nature in Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 73-74, 101 USPQ2d 1961, 1968 (2012), and the isolated DNA in Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116, 106 USPQ2d 1972, 1978 (2013) were all novel, but were considered by the Supreme Court to be judicial exceptions. See MPEP 2106.04.I.
Based on the foregoing, the claims as a whole, in view of Alice, do not connote an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer itself; and the claims do not move beyond a general link of the use of the abstract idea to a particular technological environment. Therefore, the 35 U.S.C. § 101 rejection is 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Errol CARVALHO whose telephone number is (571) 272-9987. The Examiner can normally be reached on M-F 9:30-7:00 Alt Fri.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached on 571-270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/E CARVALHO/
Primary Examiner, Art Unit 3622
1 See, Alice Corp. Pty Ltd. v. CLS Bank lnt'l, 134 S. Ct. 2347, 2360 (2014) (noting that none of the hardware recited “offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment,’ that is, implementation via computers” (citing Bilski, 561 U.S. at 610, 611)).
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