DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Application
This communication is a Final Office Action in response to the Amendment, Remarks, and Arguments filed on the 19th day of May, 2025. Currently claims 21-26, 28-33, and 35-42 are pending. Claims 1-20, 27, and 24 have been cancelled. Claims 43-44 are new. No claims are allowed.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 21-26, 28-33, and 35-44 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-12, and 14-20 of U.S. Patent No. 11030663. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 21-26, 28-33, and 35-44 would be obvious over claims 1-5, 7-12, and 14-20 of U.S. Patent No. 11468529.
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 21-26, 28-33, and 35-44 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.
Under MPEP 2106 when considering subject matter eligibility under 35 U.S.C. § 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter (step 1). If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea) (step 2A prong 1), and if so, it must additionally be determined whether the claim is integrated into a practical application (step 2A prong 2). If an abstract idea is present in the claim without integration into a practical application, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself (step 2B).
In the instant case, claims 21-26, 28-33, and 35-44 are directed to a method, system and non-transitory storage medium. Thus, each of the claims falls within one of the four statutory categories (step 1). However, the claims also fall within the judicial exception of an abstract idea (step 2A). Independent claims 21, 28 and 35 are substantially similar in scope and language.
Under Step 2A Prong 1, the test is to identify whether the claims are “directed to” a judicial exception. Examiner notes that the claimed invention is directed to an abstract idea in that the instant application is directed to certain methods of organizing human activity specifically commercial interactions and behaviors and managing personal behavior and/or interactions between people (see MPEP 2106.04(a)(2)(II)) and mathematical concepts (see MPEP 2106.04(a)(2)(I)).
Examiner notes that the claim language below represents language directed to a method, computer-readable storage medium, and apparatus for receiving, by an application executing on a processor, data from a plurality of data sources at a plurality of lodging establishments, the data comprising a plurality of images depicting a client and audio data comprising speech of the client; analyzing, by the application, the received data, wherein the analyzing comprises: identifying, by the application, the client depicted in a first image of the plurality of images based on a facial recognition algorithm applied to the first image; and determining a concept in the speech of the client; determining, by the application based on the identification of the client depicted in the first image and the determination of the concept in the speech of the client, a first rating for the client; receiving, by the application from an external ratings service, an overall rating for the client, wherein the overall rating is based at least in part on one or more stays by the client at a first lodging establishment of the plurality of lodging establishments; updating, by the application based on: (i) the first rating, and (ii) the overall rating received from the external ratings service, the overall rating for the client; transmitting, by the application, the updated overall rating for the client to the external ratings service; receiving, by the application, a request from the client to reserve a stay at a second lodging establishment of the plurality of lodging establishments; determining, by the application based on the updated overall rating, a price for the stay; receiving, by the application, an indication of acceptance of the price for the stay; and reserving, by the application, a dwelling unit in the second lodging establishment for the stay at the price. Examiner notes that in the instant application, the claims are directed to a system and method for receiving information related to users that stay at a lodging such as a rating, storing the received information in order to generate an overall rating of the user and providing a reduced price for a second stay based on the overall rating of the user. This is substantially similar to the abstract idea identified in the 2019 PEG in grouping “b” in that the claims are directed to certain methods of organizing human activity such as interactions between people such as commercial interactions, behaviors or business relations. Examiner notes that hotel services and lodging companies have provided discounts to preferred customers based on the stored information of the user long before the inventions of computers. The claimed invention merely applies the judicial exception of managing reservations of lodging stays at a plurality of locations which amounts to a method of organizing human activity specifically commercial interactions and behaviors and managing personal behavior and/or interactions between people in a hotel or lodging setting and the steps of the claim involved organizing human activity, the claim recites an abstract idea consistent with the “organizing human activity” grouping set for in the MPEP 2106.04(a)(2)(II).
Examiner notes that the claimed invention incorporates the use of a “facial recognition algorithm” which amounts to a mathematical concept similar to that found in Digitech where the Federal Circuit has determined that “organizing information and manipulating information through mathematical correlations, Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350, 111 USPQ2d 1717, 1721 (Fed. Cir. 2014). The patentee in Digitech claimed methods of generating first and second data by taking existing information, manipulating the data using mathematical functions, and organizing this information into a new form. The court explained that such claims were directed to an abstract idea because they described a process of organizing information through mathematical correlations, like Flook's method of calculating using a mathematical formula. 758 F.3d at 1350, 111 USPQ2d at 1721”. Additionally, the instant application recites an “algorithm” used to process the image data and the Courts have been clear that “using an algorithm for determining the optimal number of visits by a business representative to a client, In re Maucorps, 609 F.2d 481, 482, 203 USPQ 812, 813 (CCPA 1979)”, amounts to a judicial exception in the form of a mathematical equation and the instant application applies the facial recognition algorithm and subsequent comparison to stored data to determine a specific lodging price based on the information received. The claims amount to using mathematical equations, relationships, or concepts in order to process the information and convert the information into user specific information for rating purposes which is similar to the mathematical concepts defined with grouping “I” of MPEP 2106.04(a)(2).
The conclusion that the claim recites an abstract idea within the groupings of the MPEP 2106.04(a)(2) remains grounded in the broadest reasonable interpretation consistent with the description of the invention in the specification. For example, [spec ¶ 3] the system determines an overall rating “based at least in part on the at least one positive attribute and the at least one negative attribute for the first stay at the first lodging establishment…A reduce prices for the second stay (at first establishment) may be determined based on the overall rating for the user above a threshold rating”. Accordingly, the Examiner submits claims 21, 28 and 35 recite an abstract idea based on the language identified in claims 21, 28 and 35, and the abstract ideas previously identified based on that language that remains consistent with the groupings of Step 2A Prong 1 of the MPEP 2106.04(a)(1).
If the claims are directed toward the judicial exception of an abstract idea, it must then be determined under Step 2A Prong 2 whether the judicial exception is integrated into a practical application. Examiner notes that considerations under Step 2A Prong 2 comprise most the consideration previously evaluated in the context of Step 2B. The Examiner submits that the considerations discussed previously determined that the claim does not recite “significantly more” at Step 2B would be evaluated the same under Step 2A Prong 1 and result in the determination that the claim does not integrate the abstract idea into a practical application.
The instant application fails to integrate the judicial exception into a practical application because the instant application merely recites words “apply it” (or an equivalent) with the judicial exception or merely includes instructions to implement an abstract idea. The instant application is directed to a method instructing the reader to implement the identified methods of organizing human activity such as interactions between people such as commercial interactions, behaviors or business relations. For instance, the additional elements or combination of elements other than the abstract idea itself include the elements such as a “processor circuit” and “facial recognition algorithm” recited at a high level of generality. These elements do not themselves amount to an improvement to the computer, to a technology or another technical field. This is consistent with Applicant’s disclosure which states:
[0048] Figure 9 illustrates an embodiment of an exemplary computing architecture 900 comprising a computing system 902 that may be suitable for implementing various embodiments as previously described. In various embodiments, the computing architecture 900 may comprise or be implemented as part of an electronic device. In some embodiments, the computing architecture 900 may be representative, for example, of a system that implements one or more components of the system 100. In some embodiments, computing system 902 may be representative, for example, of the data sources 101, client devices 110, ratings systems 120, and/or the host systems 140 of the system 100. The embodiments are not limited in this context. More generally, the computing architecture 900 is configured to implement all logic, applications, systems, methods, apparatuses, and functionality described herein with reference to Figures 1-8.
[0049] As used in this application, the terms "system" and "component" and "module" are intended to refer to a computer-related entity, either hardware, a combination of hardware and software, software, or software in execution, examples of which are provided by the exemplary computing architecture 900. For example, a component can be, but is not limited to being, a process running on a computer processor, a computer processor, a hard disk drive, multiple storage drives (of optical and/or magnetic storage medium), an object, an executable, a thread of execution, a program, and/or a computer. By way of illustration, both an application running on a server and the server can be a component. One or more components can reside within a process and/or thread of execution, and a component can be localized on one computer and/or distributed between two or more computers. Further, components may be communicatively coupled to each other by various types of communications media to coordinate operations. The coordination may involve the uni-directional or bi-directional exchange of information. For instance, the components may communicate information in the form of signals communicated over the communications media. The information can be implemented as signals allocated to various signal lines. In such allocations, each message is a signal. Further embodiments, however, may alternatively employ data messages. Such data messages may be sent across various connections. Exemplary connections include parallel interfaces, serial interfaces, and bus interfaces.
(App. Spec. ¶ 47-48). According, the claimed “processor” and “system” read in light of the specification can be “operated using any type of operating system such as “a computer-related entity, either hardware, a combination of hardware and software, software, or software in execution” and include an indiscriminate “computer” (e.g., processor, memory). Thus, the claimed structure amounts to appending generic computer elements to abstract idea comprising the body of the claim. The computing elements are only involved at a general, high level, and do not have the particular role within any of the functions but to be a generically claimed “processor”.
Similarly, reciting the abstract idea as software functions used to program a generic computer is not significant or meaningful: generic computers are programmed with software to perform various functions every day. A programmed generic computer is not a particular machine and by itself does not amount to an inventive concept because, as discussed in MPEP 2106.05(a), adding the words “apply it” (or an equivalent) with the judicial exception, or more instructions to implement an abstract idea on a computer, as discussed in Alice, 134 S. Ct. at 2360, 110 USPQ2d at 1984 (see MPEP § 2106.05(f)), is not enough to integrate the exception into a practical application. Further, it is not relevant that a human may perform a task differently from a computer. It is necessarily true that a human might apply an abstract idea in a different manner from a computer. What matters is the application, “stating an abstract idea while adding the words ‘apply it with a computer’” will not render an abstract idea non-abstract. Tranxition v. Lenovo, Nos. 2015-1907, -1941, -1958 (Fed. Cir. Nov. 16, 2016), slip op. at 7-8.
Here, the instructions entirely comprise the abstract idea, leaving little if any aspects of the claim for further consideration under Step 2A Prong 2. In short, the role of the generic computing elements recited in claims 21, 28 and 35, is the same as the role of the computer in the claims considered by the Supreme Court in Alice, and the claim as whole amounts merely to an instruction to apply the abstract idea on the generic computing system/platform. Therefore, the claims have failed to integrate a practical application (MPEP 2106.04 (d)). Under the MPEP 2106.05, this supports the conclusion that the claim is directed to an abstract idea, and the analysis proceeds to Step 2B.
While many considerations in Step 2A need not be reevaluated in Step 2B because the outcome will be the same. Here, on the basis of the additional elements other than the abstract idea, considered individually and in combination as discussed above, the Examiner respectfully submits that the claims 21, 28 and 35 does not contain any additional elements that individually or as an ordered combination amount to an inventive concept and the claims are ineligible.
With respect to the dependent claims, they have been considered and are not found to be reciting anything that amounts to being significantly more than the abstract idea.
The dependent claims are merely reciting further embellishments of the abstract idea and do not claim anything that amounts to significantly more than the abstract idea itself. For example, claims 22-26, 29-33, and 36-44 are directed to further embellishments of the business interactions managed by the system which has been identified as being representative of an abstract idea. Therefore, the dependent claims do not amount to claiming anything that is significantly more than the judicial exception.
Therefore, since there are no limitations in the claim that transform the abstract idea into a patent eligible application such that the claim amounts to significantly more than the abstract idea itself, the claims are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. See MPEP 2106.
Response to Arguments
Applicant's arguments filed with respect to the rejection under USC 101 have been fully considered but they are not persuasive.
Applicant submits “the pending claims are not directed to methods of organizing human activity or mathematical concepts” and “the claimed subject matter, if considered a judicial exception, integrates the judicial exception into a practical application, includes subject matter that imposes a meaningful limit on the judicial exception, and is more than a drafting effort designed to monopolize the judicial exception”. Examiner respectfully disagrees
The instant application is merely applying a model to detect a user’s behavior within a rented lodging, taking that information and updating a user’s rating and outputting that rating to the user to implement the abstract idea of facilitating a transaction related to a lodging. In the example, the analysis states that combining known algorithms to assist in the implementation of the abstract idea amounts to combining mathematical equations to the provide the instant application is more like the example’s Claim 2 which was identified as ineligible considering that the system is receiving inputs in the form of client information, receiving updates from the system in the form of ratings, and updating the stored rating. Furthermore, the instant application is more similar to that of Claim 2 in Example 47 in that the system is continuously receiving information, applying a model to the data to determine information, and outputting the result of the analysis using a algorithm. In that example, claim 2 goes further than the instant application is that the system is trained and the output is based on the trained information.
Examiner notes that the limitations of the claimed invention is more similar to the identified examples of identified abstract idea in grouping II The phrase "methods of organizing human activity" is used to describe concepts relating to: 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, and business relations); and managing personal behavior or relationships or interactions between people, (including social activities, teaching, and following rules or instructions). (See MPEP 2106.04(a)(2)(II).
An example of a case identifying a claim as reciting a fundamental economic practice is Bilski v. Kappos, 561 U.S. 593, 609, 95 USPQ2d 1001, 1009 (2010). The fundamental economic practice at issue was hedging or protecting against risk. The applicant in Bilski claimed "a series of steps instructing how to hedge risk," i.e., how to protect against risk. 561 U.S. at 599, 95 USPQ2d at 1005. The method allowed energy suppliers and consumers to minimize the risks resulting from fluctuations in market demand for energy. The Supreme Court determined that hedging is "fundamental economic practice" and therefore is an "unpatentable abstract idea." 561 U.S. at 611-12, 95 USPQ2d at 1010. Other examples of "fundamental economic principles or practices" include: i. mitigating settlement risk, Alice Corp. v. CLS Bank,573 U.S. 208, 218, 110 USPQ2d 1976, 1982 (2014), and iv. offer-based price optimization, OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015).
Other examples of subject matter where the commercial or legal interaction is advertising, marketing or sales activities or behaviors include: iii. offer-based price optimization, which pertains to marketing, OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63, 115 USPQ2d 1090, 1092 (Fed. Cir. 2015).
Furthermore, the claims are similar to the sub-grouping "managing personal behavior or relationships or interactions between people" include social activities, teaching, and following rules or instructions. Other examples of managing personal behavior recited in a claim include: ii. considering historical usage information while inputting data, BSG Tech. LLC v. Buyseasons, Inc., 899 F.3d 1281, 1286, 127 USPQ2d 1688, 1691 (Fed. Cir. 2018).
Under Step 2A Prong 1, the test is to identify whether the claims are “directed to” a judicial exception. Examiner notes that the claimed invention is directed to an abstract idea in that the instant application is directed to certain methods of organizing human activity specifically commercial interactions and behaviors and managing personal behavior and/or interactions between people (see MPEP 2106.04(a)(2)(II)) and mathematical concepts (see MPEP 2106.04(a)(2)(I)).
Examiner notes that the claim language below represents language directed to a method, computer-readable storage medium, and apparatus for receiving, by an application executing on a processor, data from a plurality of data sources at a plurality of lodging establishments, the data comprising a plurality of images depicting a client and audio data comprising speech of the client; analyzing, by the application, the received data, wherein the analyzing comprises: identifying, by the application, the client depicted in a first image of the plurality of images based on a facial recognition algorithm applied to the first image; and determining a concept in the speech of the client; determining, by the application based on the identification of the client depicted in the first image and the determination of the concept in the speech of the client, a first rating for the client; receiving, by the application from an external ratings service, an overall rating for the client, wherein the overall rating is based at least in part on one or more stays by the client at a first lodging establishment of the plurality of lodging establishments; updating, by the application based on: (i) the first rating, and (ii) the overall rating received from the external ratings service, the overall rating for the client; transmitting, by the application, the updated overall rating for the client to the external ratings service; receiving, by the application, a request from the client to reserve a stay at a second lodging establishment of the plurality of lodging establishments; determining, by the application based on the updated overall rating, a price for the stay; receiving, by the application, an indication of acceptance of the price for the stay; and reserving, by the application, a dwelling unit in the second lodging establishment for the stay at the price. Examiner notes that in the instant application, the claims are directed to a system and method for receiving information related to users that stay at a lodging such as a rating, storing the received information in order to generate an overall rating of the user and providing a reduced price for a second stay based on the overall rating of the user. This is substantially similar to the abstract idea identified in the 2019 PEG in grouping “b” in that the claims are directed to certain methods of organizing human activity such as interactions between people such as commercial interactions, behaviors or business relations. Examiner notes that hotel services and lodging companies have provided discounts to preferred customers based on the stored information of the user long before the inventions of computers. The claimed invention merely applies the judicial exception of managing reservations of lodging stays at a plurality of locations which amounts to a method of organizing human activity specifically commercial interactions and behaviors and managing personal behavior and/or interactions between people in a hotel or lodging setting and the steps of the claim involved organizing human activity, the claim recites an abstract idea consistent with the “organizing human activity” grouping set for in the MPEP 2106.04(a)(2)(II).
Examiner notes that the claimed invention incorporates the use of a “facial recognition algorithm” which amounts to a mathematical concept similar to that found in Digitech where the Federal Circuit has determined that “organizing information and manipulating information through mathematical correlations, Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350, 111 USPQ2d 1717, 1721 (Fed. Cir. 2014). The patentee in Digitech claimed methods of generating first and second data by taking existing information, manipulating the data using mathematical functions, and organizing this information into a new form. The court explained that such claims were directed to an abstract idea because they described a process of organizing information through mathematical correlations, like Flook's method of calculating using a mathematical formula. 758 F.3d at 1350, 111 USPQ2d at 1721”. Additionally, the instant application recites an “algorithm” used to process the image data and the Courts have been clear that “using an algorithm for determining the optimal number of visits by a business representative to a client, In re Maucorps, 609 F.2d 481, 482, 203 USPQ 812, 813 (CCPA 1979)”, amounts to a judicial exception in the form of a mathematical equation and the instant application applies the facial recognition algorithm and subsequent comparison to stored data to determine a specific lodging price based on the information received. The claims amount to using mathematical equations, relationships, or concepts in order to process the information and convert the information into user specific information for rating purposes which is similar to the mathematical concepts defined with grouping “I” of MPEP 2106.04(a)(2).
If the claims are directed toward the judicial exception of an abstract idea, it must then be determined under Step 2A Prong 2 whether the judicial exception is integrated into a practical application. Examiner notes that considerations under Step 2A Prong 2 comprise most the consideration previously evaluated in the context of Step 2B. The Examiner submits that the considerations discussed previously determined that the claim does not recite “significantly more” at Step 2B would be evaluated the same under Step 2A Prong 1 and result in the determination that the claim does not integrate the abstract idea into a practical application.
Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures "can be carried out in existing computers long in use, no new machinery being necessary." 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of "anonymous loan shopping" recited in a computer system claim is an abstract idea because it could be "performed by humans without a computer").
An example of a case in which a computer was used as a tool to perform a mental process is Mortgage Grader, 811 F.3d. at 1324, 117 USPQ2d at 1699. The patentee in Mortgage Grader claimed a computer-implemented system for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders, comprising a database that stores loan package data from the lenders, and a computer system providing an interface and a grading module. The interface prompts a borrower to enter personal information, which the grading module uses to calculate the borrower’s credit grading, and allows the borrower to identify and compare loan packages in the database using the credit grading. 811 F.3d. at 1318, 117 USPQ2d at 1695. The Federal Circuit determined that these claims were directed to the concept of "anonymous loan shopping", which was a concept that could be "performed by humans without a computer." 811 F.3d. at 1324, 117 USPQ2d at 1699. Another example is Berkheimer v. HP, Inc., 881 F.3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018), in which the patentee claimed methods for parsing and evaluating data using a computer processing system. The Federal Circuit determined that these claims were directed to mental processes of parsing and comparing data, because the steps were recited at a high level of generality and merely used computers as a tool to perform the processes. 881 F.3d at 1366, 125 USPQ2d at 1652-53.
Examiner notes that the claimed invention is more similar to the computer systems being used as a tool to perform the mental process like Mortgage Grader which is generating user specific offers based on input information, and Berkeimer which is parsing and comparing data.
Limitations that the courts have found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception include: Adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 (see MPEP § 2106.05(f)). Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field. Examiner notes that the claimed invention is more similar to the identified tools above in that the system “applying a trained model”.
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d)). The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93 an Electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) (optical character recognition). Examiner notes that the claimed invention is more similar to the Versata Dev. Group, Inc. and Content Extraction in that the system is merely applying known computer methods such as modeling and trained algorithms in order to access stored data for display.
Adding insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea such as a step of obtaining information about credit card transactions so that the information can be analyzed by an abstract mental process, as discussed in CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) (see MPEP § 2106.05(g)). Below are examples of activities that the courts have found to be insignificant extra-solution activity: Mere Data Gathering: Consulting and updating an activity log, Ultramercial, 772 F.3d at 715, 112 USPQ2d at 1754.
Generally linking the use of the judicial exception to a particular technological environment or field of use, e.g., a claim describing how the abstract idea of hedging could be used in the commodities and energy markets, as discussed in Bilski v. Kappos, 561 U.S. 593, 595, 95 USPQ2d 1001, 1010 (2010) or a claim limiting the use of a mathematical formula to the petrochemical and oil-refining fields, as discussed in Parker v. Flook, 437 U.S. 584, 588-90, 198 USPQ 193, 197-98 (1978) (MPEP § 2106.05(h)). Examples of limitations that the courts have described as merely indicating a field of use or technological environment in which to apply a judicial exception include: Limiting the abstract idea of collecting information, analyzing it, and displaying certain results of the collection and analysis to data related to the electric power grid, because limiting application of the abstract idea to power-grid monitoring is simply an attempt to limit the use of the abstract idea to a particular technological environment, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016); and Specifying that the abstract idea of monitoring audit log data relates to transactions or activities that are executed in a computer environment, because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer, FairWarning v. Iatric Sys., 839 F.3d 1089, 1094-95, 120 USPQ2d 1293, 1295 (Fed. Cir. 2016). Examine notes that the claimed invention is more similar to that of Electric Power Group and FairWarning in that the system is using a specific technological environment to apply the judicial exception.
The instant application fails to integrate the judicial exception into a practical application because the instant application merely recites words “apply it” (or an equivalent) with the judicial exception or merely includes instructions to implement an abstract idea. The instant application is directed to a method instructing the reader to implement the identified methods of organizing human activity such as interactions between people such as commercial interactions, behaviors or business relations. For instance, the additional elements or combination of elements other than the abstract idea itself include the elements such as a “processor circuit” or “facial recognition algorithm” recited at a high level of generality. These elements do not themselves amount to an improvement to the computer, to a technology or another technical field.
Similarly, reciting the abstract idea as software functions used to program a generic computer is not significant or meaningful: generic computers are programmed with software to perform various functions every day. A programmed generic computer is not a particular machine and by itself does not amount to an inventive concept because, as discussed in MPEP 2106.05(a), adding the words “apply it” (or an equivalent) with the judicial exception, or more instructions to implement an abstract idea on a computer, as discussed in Alice, 134 S. Ct. at 2360, 110 USPQ2d at 1984 (see MPEP § 2106.05(f)), is not enough to integrate the exception into a practical application. Further, it is not relevant that a human may perform a task differently from a computer. It is necessarily true that a human might apply an abstract idea in a different manner from a computer. What matters is the application, “stating an abstract idea while adding the words ‘apply it with a computer’” will not render an abstract idea non-abstract. Tranxition v. Lenovo, Nos. 2015-1907, -1941, -1958 (Fed. Cir. Nov. 16, 2016), slip op. at 7-8.
Here, the instructions entirely comprise the abstract idea, leaving little if any aspects of the claim for further consideration under Step 2A Prong 2. In short, the role of the generic computing elements recited in claims 21, 28 and 35, is the same as the role of the computer in the claims considered by the Supreme Court in Alice, and the claim as whole amounts merely to an instruction to apply the abstract idea on the generic computing system/platform. Therefore, the claims have failed to integrate a practical application (MPEP 2106.04 (d)). Under the MPEP 2106.05, this supports the conclusion that the claim is directed to an abstract idea, and the analysis proceeds to Step 2B.
Therefore, the claims stand rejected.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/Michael Young/ Examiner, Art Unit 3626