DETAILED ACTION
Notice of Pre-AIA or AIA Status
This 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/29/2026 has been entered.
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 1-13 and 15 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) 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 had possession of the claimed invention.
Regarding claim 1, these claims recite the limitation “based on a determination that the client device is a mobile device, generate a first item display interface for display on the client device, the first item display interface comprising an item view with a size scaled to be larger than a minimum size limit associated with a display of the mobile device; and based on a determination that the client device is a desktop device, generate a second item display interface for display on the client device, the second item display interface comprising an item view with a size scaled to be larger than a minimum size limit associated with a display of the desktop device”. However, there is no disclosure of a minimum size limit in the specification, nor is there any discussion of scaling an item view size to be larger than any such minimum size limit. Paragraph 0169 appears to be the only section of the specification that discusses scaling, and while size scaling is briefly mentioned, there are no specifics with regard to such size scaling. The only specific examples that are given are with regard to changing of the layout. Therefore, the limitation above is considered impermissible new matter and must be removed in the response to this Office Action. All dependent claims inherit this rejection through dependency from claim 1.
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.
Based upon consideration of all of the relevant factors with respect to the claim as a whole, claims 1-13 and 15 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception without significantly more and is NOT integrated into a practical application. In particular, the rationale for finding is explained below:
Regarding claims 1-13 and 15, the claims are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
The Claims 1-13 and 15 are directed to a process and/or machine, however 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. Claims 1-13 and 15 are directed to sending and receiving data to analyze purchase data, pricing, user profile, and market data to send targeted advertisements which is practically the definition of marketing points. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because based upon consideration of all of the relevant factors with respect to the claim as a whole, claims 1-13 and 15-20 are determined to be directed to an abstract idea by analyzing the individual elements and the combination as explained below:
Independent Claim 1 which is representative of Independent Claim 16, will be the basis of the following 101 analysis.
STEP 1: Representative claim 1 is directed toward an apparatus, which is a statutory category of invention.
STEP 2a – Prong One: Per MPEP 2106, the claims must be determine if they contain an abstract idea.
Independent Claim 1 recites, in part,
obtain an item from a plurality of items;, (sending and receiving data, processing data and storing data, and/or electronic recordkeeping to perform the abstract idea),
calculate at least one similarity score between a user attribute profile vector of a plurality of users and an item attribute vector of the item by: obtaining the item attribute vector of the item comprising attribute values that are applicable to the item; obtaining the user attribute profile vector comprising attribute values associated with properties of user action history associated with the plurality of users; comparing the attribute values that are applicable to the item to attribute values in the user attribute profile vector; (sending and receiving data, processing data and storing data, and/or electronic recordkeeping to perform the abstract idea of math), and
update the at least one similarity score based on a user action; (sending and receiving data, processing data and storing data, and/or electronic recordkeeping to perform the abstract idea),
obtain a targeting constraint for the item indicating a desired threshold similarity score; (sending and receiving data, processing data and storing data, and/or electronic recordkeeping to perform the abstract idea),
select at least one targeted user from the plurality of users by comparing the targeting constraint for the item and the at least one similarity score; determine a size a type of a client device associated with the at least one selected targeted user; (sending and receiving data, processing data and storing data, and/or electronic record keeping to perform the abstract idea), and
based on a determination that the client device is a mobile device, generate a first item display interface for display on the client device, the first item display interface comprising an item view with a size scaled to be larger than a minimum size limit associated with a display of the mobile device; and based on a determination that the client device is a desktop device, generate a second item display interface for display on the client device, the second item display interface comprising an item view with a size scaled to be larger than a minimum size limit associated with a display of the desktop device. (sending and receiving data, processing data and storing data, and/or electronic recordkeeping to perform the abstract idea)
These limitations set forth a concept of sending and receiving data to analyze purchase data, pricing, user profile, and market data to send targeted advertisements which is practically the definition of marketing. This concept falls within the methods of organizing human activity, commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations) grouping identified by MPEP 2106. As such, the claims are determined to recite an abstract idea.
STEP 2a – Prong Two: Per MPEP 2106, the additional elements of the claims must be considered for whether they integrate the abstract idea into a practical application. The claims describe the additional element of:
a computing apparatus,
at least one processor,
at least one memory
However the additional elements are recited at an extreme level of generality and is interpreted as a generic computing device, and its incorporation amounts to implementing the abstract idea on a computer. Per MPEP 2106, simply implementing an abstract idea on a generic computer is not a practical application of the abstract idea. Figures 1-4 and their related text and Paragraphs 0070, 0071, 0190-0196 of the specification (US Patent Application Publication No. 2021/0256547 A1 – hereinafter specification and/or disclosure) detail any combination of a generic computer system program to perform the method. The claims recite the additional elements of a computing apparatus and/or a processor. However, these limitations simply generally link the use of the judicial exception to a particular technological environment. Per the 2019 PEG, such a general linking does not constitute a practical application of the abstract idea. There are no further additional elements. Therefore, as the additional elements of the claims do not integrate the abstract idea into a practical application, the claims are determined to be directed to an abstract idea.
Accordingly, these 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. (MPEP 2106.05(f) Mere Instructions To Apply An Exception).
STEP 2b: Per MPEP 2106, the additional elements of the claims must be considered against for whether they constitute significantly more than the abstract idea. As previously noted, the claims describe the additional element of a computer. However, implementing an abstract idea on a generic computer does not add significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. As such, these elements do not provide an inventive concept and do not constitute significantly more. As previously noted, the claims recite the additional element of receiving information from a client executing on a device and transmitting information to a user via a client application. However, per MPEP 2106, receiving and transmitting data over a network is a well-known, routine, and conventional computer functionality (Symantec), and processing that data network is a well-known, routine, and conventional computer functionality (Versata Dev. Group, Inc. v. SAP Am), and storing data and electronic recordkeeping is a well-known, routine, and conventional computer functionality (Alice Corp).
As such, this limitation does not constitute significantly more either individually or with the above computing devices. There are no further additional elements. Therefore, when considered individually and as an ordered combination, the additional elements of the independent claims do not amount to significantly more than the judicial exception. Thus the independent claims are not patent eligible.
Dependent Claims 2-13 and 15 further describe the abstract idea, and do not set forth further additional elements.
Conclusion: Accordingly, because the Applicant's claims reflect claims the Courts have determined to be abstract ideas, the Applicant’s claims likewise are directed to abstract ideas. Therefore, claims 1-13 and 15 either alone and/or as an ordered combination of elements are therefore not drawn to eligible subject matter as they are directed to an abstract idea. Therefore, as the dependent claims remain directed to an abstract idea and as the additional elements of the dependent claims do not constitute a practical application, the dependent claims or the claims as a whole are not patent eligible.
Novel/Non-Obvious Subject Matter
Claims 1-13 and 15 as currently written are novel/non-obvious over prior art. However, the rejections under 35 U.S.C. 112a and 35 U.S.C. 101 are currently pending and represent a barrier to allowability. Examiner notes that any amendments made to the claims in an attempt to correct pending rejections could drastically alter the claim scope and could open up the possibility of prior art being applied in a future action.
Response to Arguments
Applicant argues “Applicant's amended claims are not directed to an "abstract idea" under Step 2A, but rather are rooted in a technical solution that improves the operation of a display interface (i.e., first item and second item display interface) across different computing devices (i.e., mobile or client device). . See [00169] and [00172] of the as-filed Specification” and “At least these additional claim elements are rooted in a technical solution improving platform efficiency and enabling scaling of items within the constraints of a device's display area”. However, Paragraphs 00169 and 00172 do not state do not mention anything about improved platform efficiency. Rather, there is no guarantee that such benefits will occur, as paragraph 00172 states that less data may be transferred should a user find what they’re looking for initially. However, if a user does not find what they are looking for, no platform efficiency is guaranteed to take place.
Applicant argues “the independent claims do not recite "purchase data," "pricing," or "market data," as asserted by the Office”. However, the rejection above never states that the independent claim language contains such limitations. Rather, the rejection states claims 1-13 and 15 contain these limitations. Claim 1 is analyzed separately later in the rejection.
Applicant argues “Applicant submits that none of the elements in the claims recite what is required for a method of organizing human activity”. However, the claims clearly recite targeted item delivery, which is advertising, marketing or sales activities or behaviors, which clearly falls within Certain Methods of Organizing Human Activity.
Applicant argues “The claims provide improvements to systems by, among other things, generating display interfaces based on a determined type of a client device, thereby preserving network resources and reducing the number of computational steps when the indication of the item is provided to a user by generating a display that is consistent with the client device”, “The claimed combination of elements solves these issues by using the limited display area based on a type of the client device more efficiently by displaying relevant items to the user, reducing bandwidth, computational resources, and power consumption”, and “because the display area is changed based on the "size and layout of the client device," the amount of computational resources is managed more efficiently”. However, as explained above, power consumption and network resources are not guaranteed to improve in any way. Further, reducing the number of computational steps, bandwidth, and resources is not described in the specification as improvements envisioned at the time of filing. Finally, changing the display based on a type of device does not actually improve the functioning of the device, as the hardware or functionality present in the device does not actually change.
Applicant cites Core Wireless and argues “the claims are directed to improvements to a display interface, and not merely "item targeting." In particular, the claims tailor the presentation of items based on display constraints of the client device, including scaling item views based on respective "size limits associated with the display," as recited in amended claim 1. This directly affects how information is presented to the user and how the interface operates on devices with differing display characteristics”. However, the instant claims are still not directed towards the interface itself, but rather towards a method and system of “item targeting”. The abstract idea identified in Int. Ventures v. Cap One Bank ‘382 patent is analogous here, which is “Tailoring content based on information about the user”. In this particular case, the information about the user also includes what type of device is being used. The content presented to the user in the instant claim language is indeed tailored based on this information about the user, and therefore, Core Wireless is still believed to not be analogous, while Int. Ventures v. Cap One Bank ‘382 patent is ore on point.
Applicant argues “the Office improperly isolates the claimed hardware elements from the remainder of the claim and characterizes them at a high level of generality, without considering how those elements cooperate with the recited functional limitations. As explained herein, the claims do not merely recite generic computer components performing routine functions; rather, they require specific interactions (e.g., determining a client device type and generating a device-specific item display interface having an item view scaled relative to a minimum size limit associated with the display of that device). These limitations operate together to provide device-adaptive interface generation tied to display constraints, which directly impacts how information is processed and presented”. However, according to paragraph 0172 of the instant specification, “The computing apparatus 200 may improve the user experience by improving the utilization of the limited display space”. How a user experiences an environment and whether that experience is improved is relative to each particular person. Therefore, there is no guarantee that such benefits will occur. Further, paragraph 0172 further states “Additionally, since the user 101 may find relevant items more easily and more quickly, the power consumption and amount of transferred data to/from the client device 100 may be reduced. For example, if relevant items are ordered to be within the first item views 1301 in the item display interface 1300, the item views 1301 of less relevant items may not need to be displayed or loaded by the client device 100. Thus, the amount of transferred data may be reduced, since data, such as pictures, about less relevant items does not need to be transferred to the client device 100”. Once again, even if a user is targeted particular data, that data may not end up being sufficient and there is no guarantee that more items will not need to be transferred or loaded. Since the benefits disclosed in paragraph 0172 can’t be guaranteed, they do not fundamentally improve the computer technology or a technical field.
“When properly considered as an ordered combination, these limitations reflect significantly more than the mere use of a generic computing device to implement an abstract idea. Instead, they "improve the user experience by improving the utilization of the limited display space," and enable users to find relevant items "more easily and more quickly," which in turn reduces "power consumption and amount of transferred data to/from the client device." See Specification at [00172]. This demonstrates a concrete improvement in the functioning of the interface and the efficiency of the underlying computing platform”. However, as explained above, there is no actual improvement to power consumption or amount of data transferred, and the improvement to determining relevancy of items to a user is merely an improvement to the abstract idea. In the SAP decision (See SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163, 127 USPQ2d 1597, 1599 (Fed. Cir. 2018)), the courts found that an improvement made to the abstract idea is not patent eligible. SAP v. Investpic: Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because there are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms. Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non- abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract.
Applicant cites BASCOM and argues “The claimed arrangement integrates the targeting of items to users with the generation of device-specific interfaces, including scaling of item views based on the client device, thereby improving computational efficiency by aligning both content selection and display processing with device-specific constraints. Accordingly, claim 1 reflects a specific improvement in the operation of user interfaces across devices, rather than merely implementing an abstract idea on a generic computer system”. However, the fact pattern followed by the courts in BASCOM was entirely different than the present case. In BASCOM, while the computing elements were determined to be merely generic computer, network, and internet components, the eligibility of BASCOM was in the non-conventional non-generic arrangement of those components, as outlined by the specification. The courts specifically pointed to the specification to show how the unconventional arrangement of the invention improved filtering. Unlike BASCOM, the present disclosure does not explain how the generic computer components of the independent claim language form an unconventional arrangement.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL BEKERMAN whose telephone number is (571)272-3256. The examiner can normally be reached 9PM-3PM EST M, T, TH, F.
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/MICHAEL BEKERMAN/Primary Examiner, Art Unit 3621
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