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 .
Status of the Application
This action is in response to the Request for Continued Examination filed July 17, 2025. Claims 15, 25-26 and 29-30 are amended. Claims 1-14 and 27-28 are canceled. Claims 15-26 and 29-31 are currently pending and have been examined in this application.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/17/2025 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 15-26 and 29-31 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 15 and 25-26, the limitation “monitoring the plurality of computing devices to determine a first plurality of features of each of the plurality of activations of the at least one application, the first plurality of features of the plurality of activations of the at least one application comprising a first plurality of heartbeats of the at least one application on each of the plurality of computing devices respectively, the monitoring the plurality of computing devices comprising determining the first plurality of heartbeats of the at least one application on each of the plurality of computing devices respectively,” is not supported by the original disclosure. The specification discloses that “gathered data is stored in a database of the activity datastore 28 as a plurality of features in a plurality of tables, for example four hundred (400) features in forty (40) tables. … Columns of the tables can identify features reflecting the gathered data. … Features beneficially also include dynamic features, for example a number of application screen views in the certain number of days before or after a particular milestone in a particular time window (e.g., 60 days or 180 days) and a number of application heartbeats in the certain number of days before or after the particular milestone” [0038]. This does not describe that monitoring the plurality of computing devices comprises determining the first plurality of heartbeats of at least one application on each of the plurality of computing devices respectively. This is impermissible new matter. Furthermore, the specification does not describe how it determines a plurality of heartbeats of at least one application on multiple computing devices. The claims do not satisfy the written description requirement if sufficient description of how the claimed function is to be performed are not disclosed by the specification, including how to program the disclosed computer to perform the claimed function. See MPEP 2161.01. Claims 16-24, and 29-31 by being dependents of claim 15 are also rejected.
In claims 15 and 25-26, the limitation “monitoring the particular computing devices to determine a first plurality of features of the particular activation of the at least one application, the first plurality of features of the particular activation of the at least one application comprising a first plurality of heartbeats of the at least one application on the particular computing device, the monitoring the particular computing device comprising determining the first plurality of heartbeats of the at least one application on the particular computing device,” is not supported by the original disclosure. The specification discloses that “gathered data is stored in a database of the activity datastore 28 as a plurality of features in a plurality of tables, for example four hundred (400) features in forty (40) tables. … Columns of the tables can identify features reflecting the gathered data. … Features beneficially also include dynamic features, for example a number of application screen views in the certain number of days before or after a particular milestone in a particular time window (e.g., 60 days or 180 days) and a number of application heartbeats in the certain number of days before or after the particular milestone” [0038]. This does not describe that monitoring a particular computing device comprises determining the first plurality of heartbeats of at least one application on the particular computing device. This is impermissible new matter. Furthermore, the specification does not describe how it determines a plurality of heartbeats of at least one application on a particular computing device. The claims do not satisfy the written description requirement if sufficient description of how the claimed function is to be performed are not disclosed by the specification, including how to program the disclosed computer to perform the claimed function. See MPEP 2161.01. Claims 16-24, and 29-31 by being dependents of claim 15 are also rejected.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 15-26, 29-31 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 15-26, 29-31 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 15 is directed towards a method, claim 25 is directed towards a system, claim 26 is directed towards a non-transitory computer readable storage medium, which are statutory categories of invention.
Although, claim 15 is directed toward a statutory category of invention, the claim however, is directed towards an abstract idea. The limitations that recite the abstract ideas are: enabling a plurality of activations of at least one application comprising a plurality of activations of a first application comprising the antivirus application; determining a plurality of events comprising at least one of renewals or unsubscribes of each of the plurality of activations of the at least one application; enabling a particular activation of the at least one application comprising a particular activation of the first application comprising the antivirus application; providing the first offer to a particular user; receiving an acceptance of the first offer from the particular user; and preventing deactivation of the antivirus application, the preventing the deactivation of the antivirus application comprising renewing the particular activation of the first application responsive to receiving the acceptance of the first offer. These limitations, describe fundamental economic practices (renewal of user subscriptions); commercial interactions including, marketing or sales activities or behavior; business relations; as well as managing personal behavior including following rules or instructions. And are thus, directed towards the abstract grouping of Certain Methods of Organizing Human Activity in prong one of step 2A of the Alice/Mayo test (see MPEP 2106.04(a)(2) II). While the limitations: training a classifier based on the first plurality of features of each of the plurality of activations of the at least one application and the plurality of events of each of the plurality of activations of the at least one application; applying the classifier to the first plurality of features of the particular activation of the at least one application to generate a first offer to renew the particular activation of the first application, are directed to the abstract grouping of Mathematical Concepts as they use mathematical algorithms to provide offers for users (see MPEP 2106.04(a)(2) I).
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 as a whole are recited at a high level of generality and amounts to insignificant extra-solution activity and to generally “apply” the abstract by computer components. In particular the claim recites the additional elements of: monitoring the plurality of computing devices to determine a first plurality of features of each of the plurality of activations of the at least one application, the first plurality of features of the plurality of activations of the at least one application comprising a first plurality of heartbeats of the at least one application on each of the plurality of computing devices respectively, the monitoring the plurality of computing devices comprising determining the first plurality of heartbeats of the at least one application on each of the plurality of computing devices respectively; monitoring the particular computing devices to determine a first plurality of features of the particular activation of the at least one application, the first plurality of features of the particular activation of the at least one application comprising a first plurality of heartbeats of the at least one application on the particular computing device, the monitoring the particular computing device comprising determining the first plurality of heartbeats of the at least one application on the particular computing device; which amounts to nominally or tangentially data gathering and obtaining a particular type of data in manipulating the judicial exception. See MPEP 2106.05(g).
While the limitations referring to: on a plurality of computing devices; on the plurality of computing devices; on the plurality of computing devices; on the plurality of computing devices; on the plurality of computing devices; on a particular computing device; via the particular computing device; via the particular computing device; on the particular computing device, which are recited at a high level of generality, merely uses the computer as a tool to perform the abstract ideas. See MPEP 2106.05(f). Simply adding insignificant extra-solution activities and implementing the abstract idea by generic computer components 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 claims are 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 elements amount to insignificant extra-solution activities and applying the abstract idea via a computer. Viewing these limitations individually, the monitoring the plurality of computing devices to determine a first plurality of features of each of the plurality of activations of the at least one application, the first plurality of features of the plurality of activations of the at least one application comprising a first plurality of heartbeats of the at least one application on each of the plurality of computing devices respectively; the monitoring the particular computing devices to determine a first plurality of features of the particular activation of the at least one application, the first plurality of features of the particular activation of the at least one application comprising a first plurality of heartbeats of the at least one application on the particular computing device, are insignificant extra-solution activities because such activities are used for nominally/tangentially data gathering, or providing type of data, to implement the aforementioned abstract concepts; see MPEP 2106.05(g). The courts have recognized performing repetitive calculations; receiving, processing, and storing data; electronic recordkeeping; 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. 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). Additionally, it is well known and conventional to monitor/determine the heartbeat of an application running on a computer device. See at least Miller (US 20140025759 A1); Eyal (US 20170026840 A1); Fata et al. (US 20130182580 A1); Zotto (US 11537494 B2); Butucea et al. (US 20220164266 A1); Dhawan et al. (US 20230084151 A1); Kosovan (US 20180253672 A1).
Moreover, the limitations generically referring to a plurality of computing devices, a particular computing device; processors (claims 25-26), 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 claims merely instruct the practitioner to implement the abstract idea with a high-level of generality executing computer functions. Merely applying an exception using generic computer components cannot 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.
A review of dependent claims 16-24 and 29-31 likewise, 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. For instance, claims 29-31 further add to the abstract ideas by monitoring user activity to provide activation offer. As stated by Applicant, claims 29-30 are provided merely “in support of the training elements” which do not necessarily “individually integrate the exception.” Applicant’s Remarks [p 20]. Claim 31 recited at a high level of generality amounts to insignificant extra-solution activity, tangentially applied to implement the abstract ideas; see MPEP 2106.05(g). Thus, even in combination, 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 25-26 suffer from substantially the same deficiencies as outlined with respect to claim 15 and are also rejected accordingly.
Response to Arguments
Applicant's filed arguments have been fully considered but have not been found persuasive.
A. Applicant argues regarding the 35 U.S.C. § 101 rejection that the independent claims 15, 25, and 26 do not include subject matter which falls in any of the grouping of abstract ideas. The Examiner respectfully disagrees. The claims are directed to abstract ideas grouped under Certain Methods of Organizing Human Activity because they entail fundamental economic practices (enabling renewal of a user’s subscription); commercial interactions including, marketing or sales activities or behavior; business relations; as well as managing personal behavior including following rules or instructions (enabling users to activate an application; generating and providing renewal offers to users). The claims are also directed to abstract ideas grouping of Mathematical Concepts because they use mathematical algorithms to determine, organize and provide offers to users (“classifiers … features are beneficially aggregated and precomputed by the data platform” Applicant Specification [0043]). The additional elements provided by the claims are merely used to apply the abstract ideas via a generic computer, which is not enough to integrate the abstract ideas into a practical application or amount to significantly more. See 101 analysis above.
Applicant contends that monitoring heartbeats of an application as claimed is not mere insignificant extra-solution data gathering, but an integral part of the claimed subject matter. The Examiner respectfully disagrees. Determining a first plurality of heartbeats of at least one application on a computing device(s), is not a practical application of the abstract idea but a part of the abstract concept of monitoring and determining a user’s application activity to provide an offer. Merely determining the “heartbeat” of an application taken in combination with the independent claim does not amount to an improvement in the computer or any other technology. This limitation is tangentially applied in implementing the abstract idea and at best amounts to data gathering, extra-solution activity. See MPEP 2106.05(g). This is attested to by Applicant’s specification stating that “gathered data is stored in a database of the activity datastore 28 as a plurality of features in a plurality of tables, for example four hundred (400) features in forty (40) tables. … Columns of the tables can identify features reflecting the gathered data. … Features beneficially also include dynamic features, for example a number of application screen views in the certain number of days before or after a particular milestone in a particular time window (e.g., 60 days or 180 days) and a number of application heartbeats in the certain number of days before or after the particular milestone” [0038] and Applicant’s Remarks that “in general the determining of application heartbeats is not required to prevent deactivation of an antivirus application.”
Applicant argues that maintaining activation of an antivirus application is an important and necessary part of maintaining computer functionality and therefore the claimed invention functions as an improvement. The Examiner respectfully disagrees. Determining a first plurality of interactions of users of at least one application on a computing device(s), is not a practical application of the abstract idea but a part of the abstract concept of monitoring and determining a user’s application activity in order to provide an offer. Maintaining a user’s activation of an antivirus application does not for instance, improve the functionality of the application, improve how efficient the application operates or improve the security features of the application. As such, the improvement proffered by the invention is to address an entrepreneurial problem (application subscription) rather than a technological one.
Applicant argues that claim 30 integrates the recited judicial exceptions into a practical application by providing for a specific manner of preventing deactivation of an antivirus application resulting in an improvement in data security on a computing device. The Examiner respectfully disagrees. Determining a first plurality of interactions of users of at least one application on a computing device(s) and a physical location of users of each of the plurality of a computing device(s) via GPS receiver the computing device(s), is not a practical application of the abstract idea but a part of the abstract concept of monitoring and determining a user’s application activity to provide an offer. Merely determining the interactions of users with an application and their location using GPS, taken in combination with the independent claim does not amount to an improvement to the computer or any other technology. This limitation, at best amounts to necessary data gathering, extra-solution activity. See MPEP 2106.05(g). Moreover, as required by Berkheimer evidence, using GPS to determine physical location is well-understood, routine and conventionally known in the art and has been described by many patent publications going back as far as the 1980’s. (See at least, Mansell et al. US 5223884 A; Hancock US 20030033176 A1, Herz et al. US 6571279 B1).
Applicant argues that claim 31 integrates the recited judicial exceptions into a practical application by providing for a specific manner of preventing deactivation of an antivirus application resulting in an improvement in data security on a computing device. The Examiner respectfully disagrees. Determining at least one of a processor speed or random-access memory ("RAM") of the computing device, is not a practical application of the abstract ideas. Merely determining processor speed or random-access memory taken in combination with the independent claim does not amount to an improvement to the computer or any other technology. This limitation, does not integrate the abstract idea into a practical application not because it is well known, but rather because it amounts to insignificant extra-solution activity tangentially or nominally related to the implementation of the abstract ideas. See MPEP 2106.05(g). Moreover, it does not amount to significantly more because it is required to show as by Berkheimer, determining processor speed or random-access memory is well-understood, routine and conventionally known in the art, see at least, Cier et al. (US 20210385378 A1); Reszczynski et al. (US 20160328771 A1); Ford (US 20150254579 A1); Vierus et al. (US 20040249616 A1); Subramanian et al. (US 20070118640 A1); Rudolph (US 20050243103 A1); Auerbach et al. (US 20050210477 A1).
Applicant submits that the limitation “preventing deactivation of the antivirus application...comprising renewing the particular activation...” alone or in combination with other claim elements furnish an inventive concept sufficient to ensure that each claim as a whole amount to significantly more than the recited judicial exceptions. The Examiner respectfully disagrees. This limitation combined with the other identified abstract limitations is a part of the abstract idea and not an additional element that provides an inventive concept amounting to significantly more. Preventing deactivation by renewing activation of an application in response to receiving acceptance of an offer, is directed to commercial interactions, including sales activities; and managing user behavior/activity including following instructions. See 101 analysis above. It is well understood that simply applying abstract ideas by generic computer components is not a practical application of the abstract idea, or an inventive concept that would amount to significantly more. See at least, TLI Communications LLC v. AV Automotive LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (“It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea”).
Applicant contends that the claimed invention is specifically directed at addressing the technical problem of data security on a computing device, that the independent claims 15, 25, and 26 addresses this as ordered combinations of steps which limit the abstract idea to a particularly useful application of preventing deactivation of an antivirus application, and that dependent claims 28-31 are specifically directed to addressing the technical problems of preventing deactivation of an antivirus application by claiming specific monitoring steps which enable classifier training and classifier application. This however, is not convincing, as limiting an abstract idea to a particular technological environment or adding insignificant extra-solution activity does not eliminate the prohibition against an abstract idea. Furthermore, because a claim discloses a specific solution to a particular problem does not automatically render it patent eligible. See Bilski v. Kappos, 561 U.S. 593, 599–601 (2010) (concluding that claims fell outside § 101 notwithstanding the fact that they disclosed a very specific method of hedging against price increases); Parker v. Flook, 437 U.S. 584, 593 (1978) (rejecting the argument “that if a process application implements a principle in some specific fashion, it automatically falls within the patentable subject matter of § 101”); and Alice v. CLS Bank, 134 S. Ct. 2347, 2358–60 (2014) (claims fell outside of 35 U.S.C. 101 even though they described a very specific method for conducting intermediated settlement).
Applicant states that the claims, like DDR provide an ordered sequence of operations that enable improved data security on a computing device in a computing environment. The Examiner respectfully disagrees. The Claims in DDR were considered to be necessarily rooted in technology and supported by considerable technical disclosure in the Specification; whereby it provided for a unique website functionality and arrangement that improved computing technology. The instant Claims are not analogous to the Claims in DDR, nor is there technical disclosure for any steps that could be considered rooted in technology. In contrast Applicant’s invention aims to solve an entrepreneurial problem rather than a technological one. Under the broadest reasonable interpretation, the instant claim-set can be interpreted to present (economic) offers to maintain customers. One having ordinary skill in the art would consider the claims to be directed to an idea of itself, because of the several limitations wherein customer activities are used as training features. However, the renewal offers between service providers and customers is at the heart of this invention; therefore, the claims are directed to commercial interactions and fundamental economic practices. Thus, the claimed subject matter solving problems specific to preventing deactivation of the antivirus application on a computing device, does not render the claims eligible. As noted in DDR not all claims purporting to address Internet-centric (computing) challenges are eligible for patent2.
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
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 v. Kappos, 561 U.S. 593, 610-11 (2010))).
2 See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014)
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