DETAILED ACTION
Status of the Claims
The following is a Final Office Action in response to the remarks filed 30 January 2026.
Claims 39-58 are pending have been examined.
The present application, which has priority to before March 16, 2013, is being examined under pre-AIA provisions.
Response to Arguments
Applicant’s remarks regarding the double patenting rejection have been considered but are not persuasive. As such, the rejection has not been overcome.
Applicants argue that the 35 U.S.C. 101 rejection under the Alice Corp. vs. CLS Bank Int’l be withdrawn; however the Examiner respectfully disagrees. The Examiner notes that in order to be patent eligible under 35 U.S.C. 101, the claims must be directed towards a patent eligible concept, which, the instant claims are not directed. Contrary to Applicants’ assertion that the claims are not a mathematical concept or a certain method of organizing human activity, the Examiner notes that generating a community rating for content items based upon maintained rating information associated with the content which is an abstract idea of certain methods of organizing human activities (i.e. marketing activities or managing user ratings/reviews) as well as the abstract idea of performing computations in accordance with a mathematical formula on that data (calculating the community rating) is a function that marketing teams, critics, advertisers, commercials, etc. have traditionally performed/provided for consumers. The enumerated groupings provided by the USPTO are not an exhaustive list, and the claims need not recite a specific formula to be considered a mathematical concept, contrary to Applicant’s assertions. The recitation of a mathematical formula is one (1) of the mathematical concepts identified as an abstract idea in MPEP § 2106.04(a)). It is important to note that a mathematical concept need not be expressed in mathematical symbols, because “[w]ords used in a claim operating on data to solve a problem can serve the same purpose as a formula.” In re Grams, 888 F.2d 835, 837 and n.1, 12 USPQ2d 1824, 1826 and n.1 (Fed. Cir. 1989). See, e.g., SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163, 127 USPQ2d 1597, 1599 (Fed. Cir. 2018) (holding that claims to a ‘‘series of mathematical calculations based on selected information’’ are directed to abstract ideas); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350, 111 USPQ2d 1717, 1721 (Fed. Cir. 2014) (holding that claims to a ‘‘process of organizing information through mathematical correlations’’ are directed to an abstract idea); and Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1280, 103 USPQ2d 1425, 1434 (Fed. Cir. 2012) (identifying the concept of ‘‘managing a stable value protected life insurance policy by performing calculations and manipulating the results’’ as an abstract idea) MPEP § 2106.04(a)(2)(I). Here, a mathematical concept need not expressly recite an actual formula, contrary to Applicant’s assertions. As such, this argument is not persuasive, and the rejection not overcome.
The Examiner again notes that the claims are also drawn to organizing human activities, while some may be based upon a mathematical concept. The Examiner notes that the generating a community rating for content items based upon maintained rating information associated with the content which is an abstract idea of organizing human activities is an abstract idea of organizing human activities. The claims quite literally organize a community of user ratings which is an advertising, marketing or sales activities or behavior; business relation; and a method of managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). The entirety of the specification is discussing how to enable publishers to market their content in [0005] which is, again, quite literally. advertising, marketing or sales activities or behavior; business relation while some of the limitations may involve a mathematical concept being performed on the organized human activities (i.e. an overall rating which is a basic arithmetic of an average or mean etc.). As such, this argument is not persuasive, and the rejection not overcome.
Next, the claims are not directed to a practical application of the concept. The claims do not result in improvements to the functioning of a computer or to any other technology or technical field. They do not effect a particular treatment for a disease. They are not applied with or by a particular machine. They do not effect a transformation or reduction of a particular article to a different state or thing. And they are not applied in some other meaningful way beyond generally linking the use of the judicial exception (i.e., generating community rating based upon user opinions) to a particular technological environment (i.e., over the internet or with the use of generic computing components). Here, again as noted in the previous rejection, mere instructions to apply an exception using a generic computer component cannot provide an inventive concept - MPEP 2016.05(f). The claims recitation of the “on a non-transitory computer readable storage medium associated with a computing device a controlled-access community rating database” “computing device comprising: a processor; a non-transitory storage medium for tangibly storing thereon program logic for execution by the processor, the program logic comprising” and “graphical user interface (GUI),” “GUI” only generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h). More specifically, the GUI Applicant argues is, as noted in the previous rejections, is an insignificant post solution output i.e. the GUI only serves as the means of conveyance of the output or outcome of the abstract idea which does not integrate the claims into an abstract idea. Reevaluating here in Step 2B, the “graphical user interface (GUI),” “GUI” and “transmitting...” steps which are insignificant extrasolution activities are also determined to be well-understood, routine and conventional activity in the field. The Symantec, TLI, and OIP Techs court decisions in MPEP 2106.05(d)(II) indicate that the mere receipt or transmission of data over a network is well-understood, routine, and conventional function when it is claimed in a merely generic manner (as is here). Therefore, when considering the additional elements alone, and in combination, there is no inventive concept in the claim. As such, the claim(s) is/are not patent eligible, even when considered as a whole and the rejection not overcome.
Applicants further argue that the claims are similar to the recent Enfish decision; however the Examiner respectfully disagrees. Unlike Enfish, the instant claims are clearly focused on the combination of those abstract-idea processes. Here, by contrast, the claims are not directed to an improvement in the way computers operate. The advance the claims purport to make is generating a community rating for content items based upon maintained rating information associated with the conten, and not any particular assertedly inventive technology for performing those functions. They are therefore still directed to an abstract idea. Again, unlike Enfish, the instant claims focus not on such an improvement to the computers as tools, but on certainly independent abstract ideas that use the computers as tools and therefore do not amount to significantly more than the abstract ideas themselves. Merely requiring the selection and manipulation of information—to provide a “humanly comprehensible” amount of information useful for users, by itself does not transform the otherwise-abstract processes of information collection and analysis. Instead, the claims are more analogous to those in FairWarningIP, LLC v. Iatric Sys., Inc., 839 F.3d 1089 (Fed. Cir. 2016), wherein claims reciting “a few possible rules to analyze audit log data” were found directed to an abstract idea because they asked “the same questions (though perhaps phrased with different words) that humans in analogous situations detecting fraud have asked for decades.” FairWarning, 839 F.3d at 1094, 1095. The claim(s) is/are not patent eligible and the arguments not persuasive.
Applicant next argues that the claims are improvements (citing Desjardins and Ex Parte Carmody); however the Examiner respectfully disagrees. These remarks appear to be whether or not the use of computer or computing components for increased speed and efficiency integrates the claims into practical application; however the Examiner respectfully disagrees. Nor, in addressing the second step of Alice, does claiming the improved speed or efficiency inherent with applying the abstract idea on a computer provide a sufficient inventive concept. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”); CLS Bank, Int’l v. Alice Corp., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en banc) aff’d, 134 S. Ct. 2347 (2014) (“[S]imply appending generic computer functionality to lend speed or efficiency to the performance of an otherwise abstract concept does not meaningfully limit claim scope for purposes of patent eligibility.” (citations omitted)). As such, the arguments are not persuasive, and the rejection not overcome.
Applicant again argues that the Examiner has failed to provide support under the guidance (Berkheimer Memo); however the Examiner respectfully disagrees as this requirement was met in the previous rejection(s). As such the rejection was not overcome.
Double Patenting
Claims 39-58 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 11/347,624 (now US Patent 11,049,117). Although the claims at issue are not identical, they are not patentably distinct as shown below:
17/360,604
11/347,624 (now US Patent 11,049,117)
39. A method comprising: maintaining on a non-transitory computer readable storage medium associated with a computing device a controlled-access community rating database comprising rating information that is independent from any publisher’s control or oversight, the rating information being provided by members of a community, the rating information is associated with one or more content items including a first content item; providing, via the computing device, a syndication reference to a first publisher of a content description, the content description containing information associated with the first content item; receiving, at the computing device, a request from a client computing device, the request comprising a publisher identifier (ID) identifying the first publisher of the content description associated with the first content item and a syndication reference, the received syndication reference including a content identifier (ID) associated with the first content item; generating, via at least one processor of the computing device in response to the request, a community rating graphical user interface for the first content item using the received syndication reference, the content ID included as part of the received syndication reference and the rating information associated with the first content item in the controlled-access community rating database; transmitting, over a network via the computing device, the community rating GUI for the first content item to the client computing device, the transmission causing a user interface to be displayed on a display of the client computing device in response to the request,, the user interface comprising the community rating GUI for the first content item.
1. A method comprising: maintaining on a non-transitory computer readable storage medium associated with a computing device a controlled-access community rating database comprising rating information independently provided by members of a community such that each individual rating is independently stored from any other member and publisher's control or oversight, the rating information associated with one or more content items including a first content item; providing, via the computing device, a syndication reference to a first publisher of a content description, the content description containing information associated with the first content item; receiving, at the computing device, a request from a client computing device, the request comprising information related to the content description provided by the first publisher and a publisher identifier (ID), said information containing a syndication reference including a content ID associated with the first content item; parsing, via the computing device, the request to identify the publisher ID, the content ID, the rating information associated with the first content item, the first content item, and information indicating the client computing device from which the request was sent; verifying, via the computing device, based on the publisher ID, that the first publisher is authorized to provide a community rating generated from the rating information in the controlled-access community rating database; generating, via at least one processor of the computing device, based on said verification, and further based on the identified content ID and the rating information associated with the first content item in the controlled-access community rating database, a community rating for the first content item; transmitting, over a network via the computing device, the community rating for the first content item and information associated with a user interface to the client computing device, said transmission causing the user interface to be displayed on a display of the client computing device such that at least the community rating for the first content item is displayed within the user interface; and without logging in by the client computing device: obtaining a member ID from a membership data structure on the client computing device; retrieving, based on the member ID and content ID, member rating information previously provided by a first member of the community including a member rating, the member rating information associated with the first content item, and wherein the client computing device is operated by the first member; and transmitting the member rating for inclusion in the content description.
The independent claims 39, 51, and 58 of the copending Application No. 11/347,624 (now US Patent 11,049,117, hereinafter ‘117 Patent) are not identical to the instant claims 39, 51, and 58 but however claim the same inventive concept of job recall material is mapped and recommended to a user (the instant claims are much more broad). Here, specifically, instant claim 39 is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of the ‘117 Patent. The claims differ in that instant claim 39 recites all of the same limitations of claim 1 of the ‘117 Patent; however the ‘117 Patent recites that the further details regarding the ratings are stored independently and the user receives the transmission without logging in, and obtaining previous rating(s) provided by the first member (as highlighted in the table above). The portion of the specification in the ‘117 Patent that supports the recited ratings, logging in, and obtaining aspects includes an embodiment that would anticipate instant claim 39 herein. Instant claim 39 cannot be considered patentably distinct over claim 1 of the ‘117 Patent when there is a specifically disclosed embodiment that supports claim 1 of that patent and falls within the scope of claim 39 herein because it would have been obvious to one having ordinary skill in the art to modify the method of claim 39 by selecting a specifically disclosed embodiment that supports that claim, i.e., the ratings are stored independently and the user receives the transmission without logging in, and obtaining previous rating(s) provided by the first member. One having ordinary skill in the art would have been motivated to do this because that embodiment is disclosed as being a preferred embodiment within claim 39. Instant independent claims 51 and 58 are rejected under the same rationale, mutatis mutandis.
Dependent claims 2-6, 8-12, and 14-18 of the ‘117 Patent recite substantially similar subject matter as the instant claims 40-50 and 52-57. The claims are also rejected for their dependencies on claims 39 and 51. 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
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 39-58 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims are directed to a process (an act, or series of acts or steps), a machine (a concrete thing, consisting of parts, or of certain devices and combination of devices), and a manufacture (an article produced from raw or prepared materials by giving these materials new forms, qualities, properties, or combinations, whether by hand labor or by machinery). Thus, each of the claims falls within one of the four statutory categories (Step 1). However, the claim(s) recite(s) generating a community rating for content items based upon maintained rating information associated with the content which is an abstract idea of certain methods of organizing human activities (i.e. marketing activities or managing user ratings/reviews) as well as the abstract idea of performing computations in accordance with a mathematical formula on that data.
The limitations of “maintaining...community rating database comprising rating information that is independent from any publisher’s control or oversight, the rating information being provided by members of a community, the rating information is associated with one or more content items including a first content item, generating, in response to the request, a community rating for the first content item using the received syndication reference, the content ID included as part of the received syndication reference and the rating information associated with the first content item in the controlled-access community rating database,” as drafted, is a process that, under its broadest reasonable interpretation, covers organizing human activities--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) as well as a mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations but for the recitation of generic computer components (Step 2A Prong 1). That is, other than reciting “via at least one processor of the computing device,” (or “when executed by a processor associated with a computing device perform” in claim 51 or “...for execution by the processor...” in claim 58) nothing in the claim element precludes the step from the methods of organizing human interactions grouping or from the mathematical concept grouping. For example, but for the “when executed by a processor associated with a computing device perform” language, “maintaining” and “generating” in the context of this claim encompasses the user manually managing ratings for content and generating an overall community (i.e. average rating) for each type of requested content. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, while some of the limitations may be based on mathematical concepts, but for the recitation of generic computer components, then it falls within the “Certain Methods or Organizing Human Activities” and/or “Mathematical Concepts” grouping of abstract ideas. Accordingly, the claim(s) recite(s) an abstract idea.
This judicial exception is not integrated into a practical application (Step 2A Prong Two). The “providing...,” “receiving...,” “graphical user interface (GUI),” “GUI” and “transmitting...” steps are simply extrasolution data gathering or post solution activities. Next, the claim only recites one additional element – using a processor to perform the steps. The processor in the steps is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of electronic data query/retrieval and simple mathematic operation such as an average) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Specifically the claims amount to nothing more than an instruction to apply the abstract idea using a generic computer or invoking computers as tools by adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f). The claims recitation of the “on a non-transitory computer readable storage medium associated with a computing device a controlled-access community rating database” “computing device comprising: a processor; a non-transitory storage medium for tangibly storing thereon program logic for execution by the processor, the program logic comprising” and “graphical user interface (GUI),” “GUI” only generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h). Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea, even when considered as a whole.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception (Step 2B). As discussed above with respect to integration of the abstract idea into a practical application (Step 2A Prong 2), the additional element of using a processor to perform the steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Reevaluating here in step 2B, the “providing...,” “receiving...,” “graphical user interface (GUI),” “GUI” and “transmitting...” steps which are insignificant extrasolution activities are also determined to be well-understood, routine and conventional activity in the field. The Symantec, TLI, and OIP Techs court decisions in MPEP 2106.05(d)(II) indicate that the mere receipt or transmission of data over a network is well-understood, routine, and conventional function when it is claimed in a merely generic manner (as is here). Therefore, when considering the additional elements alone, and in combination, there is no inventive concept in the claim. As such, the claim(s) is/are not patent eligible, even when considered as a whole.
Claims 40-50 and 52-57 recite the additional limitations further limiting the abstract idea previously identified which is not an inventive concept that meaningfully limits the abstract idea. Again, as discussed with respect to claims 39, 51, and 58, the claims are simply limitations which are no more than mere instructions to apply the exception using a computer or with computing components. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Even when considered as a whole, the claims do not integrate the judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Claims 39-58 are therefore not eligible subject matter, even when considered as a whole.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to ANDREW B WHITAKER whose telephone number is (571)270-7563. The examiner can normally be reached on M-F, 8am-5pm, EST.
If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, Lynda Jasmin can be reached on (571) 272-6782. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW B WHITAKER/Primary Examiner, Art Unit 3629