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 .
DETAILED ACTION
This communication is in response to the Request for Continued Examination for filed on 12/01/2025 for the application No. 17/491,933. Claims 61-80 are currently pending and have been examined. Claims 61-80 have been rejected.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/01/2025 has been entered.
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 61-80 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 61-80 are not compliant with 101, according with the last “2019 Revised Patent Subject Matter Eligibility Guidance” (2019 PEG), published in the MPEP 2103 through 2106.07(c). Examiner’s analysis is presented below for all the claims.
Claim 61: Step 1 of 2019 PGE, does the claim fall within a Statutory Category? Yes. The claim recites a system.
Step 2A - Prong 1: Is a Judicial Exception recited in the claim? Yes. The claim recites the limitations of “wherein each record represents an advertising variable and has a "variable ID" field representing the advertising variable for the record, a "mean" field representing advertising elasticity of the advertising variable for the record, a "standard deviation" field representing standard deviation of the advertising elasticity of the advertising variable for the record, and a plurality of "tag" fields representing tags associated with the advertising variable for the record, and
wherein the "tag" fields across all advertising variables represent existing tags across the normative data; “
The “represents” limitation, as drafted, is a process and system that, under its broadest reasonable interpretation, covers performance of the limitations as certain methods of organizing human activity, advertising, marketing or sales activities or behaviors. The system for predictive estimating of advertising elasticity using natural-language search terms. Thus, the claim recites an abstract idea.
Step 2A - Prong 2: Integrated into a Practical Application? No. The claim recites additional limitations, such as, “receiving user-supplied natural-language search terms that represent a proposed advertising activity for querying …. to determine advertising elasticity of the proposed advertising activity”. These are limitations toward accessing or receiving data. It is merely gathering data.
The Examiner analyses other supplementary elements in the claim in view of the instant disclosure:
“a normative database that stores normative data comprising a plurality of records, at least one processor communicatively coupled to the normative database, wherein the at least one processor is configured for”, “deriving a mapping function based on the normative data that maps the existing tags to a set of normative topics associated with the normative data such that the set of normative topics represents variation in the existing tags across the normative data, wherein the mapping function is derived by finding a weighted linear combination of existing tags…dynamically updating the mapping function upon addition of one or more new records …generating a set of mapped user topics using the derived mapping function with the user-supplied natural-language search terms as input to the derived mapping function, wherein the set of mapped user topics is generated by determining a reduced set of normative topics based on relationships to other normative tags…and providing the set of mapped user topics to an estimation function at runtime to generate a predictive estimate of advertising elasticity for the proposed advertising activity based on the set of mapped user topics”. The limitations comprise generic recited computer elements and software including data manipulation functions. The use of a “normative database” is not sufficient to integrate the abstract idea because it merely reflects the use of conventional technology and amounts to only generally linking the use of an abstract idea to a particular technological environment. MPEP 2106.05(h).
The combination of these additional elements can also be considered no more than mere instructions “to apply” the exception, See MPEP 2106.05(f).
The Examiner gives the broadest reasonable interpretation to the above elements. They are insignificant extra-solution activity. See MPEP 2106.05(g).
Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claim as a whole does not integrate the method of organizing human activity into a practical application. Thus, the claim is ineligible because is directed to the recited judicial exception (abstract idea).
Step 2B : claim provides an inventive concept? No.
As discussed with respect to Step 2A Prong Two, the additional elements in the claim,
“a normative database that stores normative data comprising a plurality of records, at least one processor communicatively coupled to the normative database, wherein the at least one processor is configured for”, “deriving a mapping function based on the normative data that maps the existing tags to a set of normative topics associated with the normative data such that the set of normative topics represents variation in the existing tags across the normative data, wherein the mapping function is derived by finding a weighted linear combination of existing tags…dynamically updating the mapping function upon addition of one or more new records …generating a set of mapped user topics using the derived mapping function with the user-supplied natural-language search terms as input to the derived mapping function, wherein the set of mapped user topics is generated by determining a reduced set of normative topics based on relationships to other normative tags…and providing the set of mapped user topics to an estimation function at runtime to generate a predictive estimate of advertising elasticity for the proposed advertising activity based on the set of mapped user topics”, amount to no more than mere instructions to apply the exception. i.e., mere instructions to apply an exception using generic hardware and software cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Under the 2019 PEG, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B.
Here, the limitations:
“a normative database that stores normative data comprising a plurality of records, at least one processor communicatively coupled to the normative database, wherein the at least one processor is configured for”, “deriving a mapping function based on the normative data that maps the existing tags to a set of normative topics associated with the normative data such that the set of normative topics represents variation in the existing tags across the normative data, wherein the mapping function is derived by finding a weighted linear combination of existing tags…dynamically updating the mapping function upon addition of one or more new records …generating a set of mapped user topics using the derived mapping function with the user-supplied natural-language search terms as input to the derived mapping function, wherein the set of mapped user topics is generated by determining a reduced set of normative topics based on relationships to other normative tags…and providing the set of mapped user topics to an estimation function at runtime to generate a predictive estimate of advertising elasticity for the proposed advertising activity based on the set of mapped user topics”, were considered to be extra-solution activity in Step 2A, and thus it is re-evaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field.
Other limitations in the claim, such as:
“receiving user-supplied natural-language search terms that represent a proposed advertising activity for querying …. to determine advertising elasticity of the proposed advertising activity”. These are limitations toward accessing or receiving data (gathering data). Accessing or receiving data is very well understood, routine and conventional computer task activity; It represents insignificant extra solution activity. Mere data-gathering step[s] cannot make an otherwise nonstaturory claim statutory In re Grams,888 F.2d 835, 840 (Fed. Cir. 1989) (quoting In re Meyer, 688 F.2d 789, 794 (CCPA 1982)).
Further, the instant specification does not provide any indication that the elements
“a normative database that stores normative data comprising a plurality of records, at least one processor communicatively coupled to the normative database, wherein the at least one processor is configured for”, “deriving a mapping function based on the normative data that maps the existing tags to a set of normative topics associated with the normative data such that the set of normative topics represents variation in the existing tags across the normative data, wherein the mapping function is derived by finding a weighted linear combination of existing tags…dynamically updating the mapping function upon addition of one or more new records …generating a set of mapped user topics using the derived mapping function with the user-supplied natural-language search terms as input to the derived mapping function, wherein the set of mapped user topics is generated by determining a reduced set of normative topics based on relationships to other normative tags…and providing the set of mapped user topics to an estimation function at runtime to generate a predictive estimate of advertising elasticity for the proposed advertising activity based on the set of mapped user topics”, are anything other than generic software and hardware, and the Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017), the steps in the claims described "the creation of a dynamic document based upon ‘management record types’ and ‘primary record types.’" 850 F.3d at 1339-40; 121 USPQ2d at 1945-46. The claims were found to be directed to the abstract idea of "collecting, displaying, and manipulating data." 850 F.3d at 1340; 121 USPQ2d at 1946. Concluding that generating information as a function of other information and a "dynamic" limitation is not sufficient to remove the claims from the abstract realm. The use of an estimation function is similarly deficient, as it merely reflects the use of the computer as a tool to perform the abstract idea of estimating advertising elasticity. In this case, the dynamic limitation, the use of a “normative database” and manipulation of data to generate a predictive estimate is a well‐understood, routine, conventional function when it is claimed in a merely generic manner (as it is here).
Accordingly, a conclusion that the “a normative database that stores normative data comprising a plurality of records, at least one processor communicatively coupled to the normative database, wherein the at least one processor is configured for”, “deriving a mapping function based on the normative data that maps the existing tags to a set of normative topics associated with the normative data such that the set of normative topics represents variation in the existing tags across the normative data, wherein the mapping function is derived by finding a weighted linear combination of existing tags…dynamically updating the mapping function upon addition of one or more new records …generating a set of mapped user topics using the derived mapping function with the user-supplied natural-language search terms as input to the derived mapping function, wherein the set of mapped user topics is generated by determining a reduced set of normative topics based on relationships to other normative tags…and providing the set of mapped user topics to an estimation function at runtime to generate a predictive estimate of advertising elasticity for the proposed advertising activity based on the set of mapped user topics” limitations (pointed above) are well-understood, routine, conventional activity is supported under Berkheimer Option 2. See MPEP 2106.05 (d). The claim is ineligible.
Dependent claims 62-80, the claims recite elements such as “running a regression model to infer a distribution of elasticity of the set of mapped user topics; and deriving an estimate of advertising elasticity for the user-supplied natural-language search terms based on the regression model”, “wherein the user-supplied natural-language search terms are received over a network”, calculating the coefficient of variation for each record as the standard deviation divided by the mean”; “wherein the user-supplied natural-language search terms are supplied by a user via a graphical user interface”, etc. These elements do not integrate the system of organizing human activity into a practical application. The claims are ineligible.
Allowable Subject Matter
Claims 61-80 (as filed on 7/1/2025) would be allowed if Applicant can overcome the 101 rejection found in the instant action.
Examiner’s note : Allowance subject also to the completion of all the mandatory searches for allowance “In the examination of an application for patent, an examiner must conduct a thorough and complete search of the prior art.”, see MPEP 904 and 719.
Response to Arguments
Applicant did not amend the claims only argues. Applicant’s arguments on 11/03/2025 have been very carefully considered.
Applicant argues (Remarks at 6-13)
Claim Rejections - 35 U.S.C. § 101
The Final Office Action maintains the rejection of claims 61-80 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter. Applicant respectfully traverses this rejection and
submits that the claims, as amended in July 2025 following the Board's Decision, are directed to
patent-eligible subject matter.
The Board's Decision Provides Clear Guidance
The Board's Decision on Appeal dated May 1, 2025, provides important context for
evaluating the current claims. While the Board agreed with the Examiner that claim 61 recites a
judicial exception, it disagreed with the Examiner's determination regarding which claim
limitations constitute "additional limitations" for purposes of the Step 2A, Prong 2 and Step 2B
analyses. Specifically, the Board found that two limitations were overlooked that should have been considered in determining whether the claims integrate the judicial exception into a practical application and whether they provide an inventive concept.
The first limitation identified by the Board was the "deriving" limitation, which describes
how the mapping function is created based on the normative data. The Board noted that this
limitation goes beyond merely accessing or receiving data and instead describes a specific
integration of the normative database into the claimed system. The second limitation was the
''providing" limitation regarding the estimation function at runtime, which the Board recognized
as describing how the system generates predictive estimates rather than merely analyzing existing information….
In response the Examiner asserts that the argued limitations “deriving and providing” already were considered in Office action (OA) dated on 08/01/2025 and consistently with the mentioned OA the Examiner reviews it again herein according to the 2019 PEG. In step 1, the Analysis of independent claim 61 claim falls within a Statutory Category as a system. In Step 2A - Prong 1, the analysis identified a Judicial Exception in the claim in the limitations “wherein each record represents an advertising variable and has a "variable ID" field representing the advertising variable for the record, a "mean" field representing advertising elasticity of the advertising variable for the record, a "standard deviation" field representing standard deviation of the advertising elasticity of the advertising variable for the record, and a plurality of "tag" fields representing tags associated with the advertising variable for the record, and
wherein the "tag" fields across all advertising variables represent existing tags across the normative data; “. These limitations are considered directed to as certain methods of organizing human activity, advertising, marketing or sales activities or behaviors. Thus, the claim recites an abstract idea. In Step 2A - Prong 2, the test review if the abstract idea identified here, is Integrated into a Practical Application?
To respond this step of the test, the Examiner reviews any additional limitations and supplemental elements in the claim besides the identified abstract idea mentioned . The Examiner makes sure all the elements and additional limitations are considered in view of the instant disclosure:
The additional limitations toward accessing or receiving data or merely gathering data, such as, “receiving user-supplied natural-language search terms that represent a proposed advertising activity for querying …. to determine advertising elasticity of the proposed advertising activity”, are considered along with supplementary elements in the claim such as: “a normative database that stores normative data comprising a plurality of records, at least one processor communicatively coupled to the normative database, wherein the at least one processor is configured for”, “deriving a mapping function based on the normative data that maps the existing tags to a set of normative topics associated with the normative data such that the set of normative topics represents variation in the existing tags across the normative data, wherein the mapping function is derived by finding a weighted linear combination of existing tags…dynamically updating the mapping function upon addition of one or more new records …generating a set of mapped user topics using the derived mapping function with the user-supplied natural-language search terms as input to the derived mapping function, wherein the set of mapped user topics is generated by determining a reduced set of normative topics based on relationships to other normative tags…and providing the set of mapped user topics to an estimation function at runtime to generate a predictive estimate of advertising elasticity for the proposed advertising activity based on the set of mapped user topics”.
The Examiner states that the additional limitations comprise generic recited computer elements and software including data manipulation functions.
The Examiner concludes that the use of a “normative database” is not sufficient to integrate the abstract idea because it merely reflects the use of conventional technology and amounts to only generally linking the use of an abstract idea to a particular technological environment. MPEP 2106.05(h); that the combination of these additional elements can be considered no more than mere instructions “to apply” the exception, See MPEP 2106.05(f) and that giving the broadest reasonable interpretation to the above elements. They are insignificant extra-solution activity. See MPEP 2106.05(g).
Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Thus, the claim is ineligible because is directed to the recited judicial exception (abstract idea).
However, the test continues in Step 2B identifying inventive concept in the claim. The Examiner clarifies that the courts call inventive concept all the additional limitations and elements besides the abstract idea. Thus in the instant claim the inventive concept “a normative database that stores normative data comprising a plurality of records, at least one processor communicatively coupled to the normative database, wherein the at least one processor is configured for”, “deriving a mapping function based on the normative data that maps the existing tags to a set of normative topics associated with the normative data such that the set of normative topics represents variation in the existing tags across the normative data, wherein the mapping function is derived by finding a weighted linear combination of existing tags…dynamically updating the mapping function upon addition of one or more new records …generating a set of mapped user topics using the derived mapping function with the user-supplied natural-language search terms as input to the derived mapping function, wherein the set of mapped user topics is generated by determining a reduced set of normative topics based on relationships to other normative tags…and providing the set of mapped user topics to an estimation function at runtime to generate a predictive estimate of advertising elasticity for the proposed advertising activity based on the set of mapped user topics”, it amounts to no more than mere instructions to apply the exception. i.e., mere instructions to apply an exception using generic hardware and software cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Also the Examiner performs an extra analysis activity since under the 2019 PEG, a conclusion that an additional element is insignificant extra-solution activity in Step 2A (See MPEP 2106.05(g) should be re-evaluated in Step 2B.
The re-evaluation is the following “receiving user-supplied natural-language search terms that represent a proposed advertising activity for querying …. to determine advertising elasticity of the proposed advertising activity”. These are limitations toward accessing or receiving data (gathering data). Accessing or receiving data is very well understood, routine and conventional computer task activity; It represents insignificant extra solution activity. Mere data-gathering step[s] cannot make an otherwise nonstaturory claim statutory In re Grams,888 F.2d 835, 840 (Fed. Cir. 1989) (quoting In re Meyer, 688 F.2d 789, 794 (CCPA 1982)).
Next, the additional elements “a normative database that stores normative data comprising a plurality of records, at least one processor communicatively coupled to the normative database, wherein the at least one processor is configured for”, “deriving a mapping function based on the normative data that maps the existing tags to a set of normative topics associated with the normative data such that the set of normative topics represents variation in the existing tags across the normative data, wherein the mapping function is derived by finding a weighted linear combination of existing tags…dynamically updating the mapping function upon addition of one or more new records …generating a set of mapped user topics using the derived mapping function with the user-supplied natural-language search terms as input to the derived mapping function, wherein the set of mapped user topics is generated by determining a reduced set of normative topics based on relationships to other normative tags…and providing the set of mapped user topics to an estimation function at runtime to generate a predictive estimate of advertising elasticity for the proposed advertising activity based on the set of mapped user topics”, are anything other than generic software and hardware, and the Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017), the steps in the claims described "the creation of a dynamic document based upon ‘management record types’ and ‘primary record types.’" 850 F.3d at 1339-40; 121 USPQ2d at 1945-46. The claims were found to be directed to the abstract idea of "collecting, displaying, and manipulating data." 850 F.3d at 1340; 121 USPQ2d at 1946. Concluding that generating information as a function of other information and a "dynamic" limitation is not sufficient to remove the claims from the abstract realm. The use of an estimation function is similarly deficient, as it merely reflects the use of the computer as a tool to perform the abstract idea of estimating advertising elasticity. In this case, the dynamic limitation, the use of a “normative database” and manipulation of data to generate a predictive estimate is a well‐understood, routine, conventional function when it is claimed in a merely generic manner (as it is here). These limitations are well-understood, routine, conventional activity that is supported under Berkheimer Option 2. See MPEP 2106.05 (d). The inventive concept in the instant claim is not eligible for patent protection. The claim is ineligible.
Step 2A, Prong 2: The Claims Integrate Any Judicial Exception into a Practical
Application
Shortly after the Final Office Action was issued, the USPTO issued an August 4, 2025
memorandum providing reminders on evaluating subject matter eligibility of claims under 35
U.S.C. § 101 (the "August Memorandum"). Referring to Step 2A, Prong 2, the August
Memorandum states "the additional limitations should not be evaluated in a vacuum, completely
separate from the recited judicial exception. Instead, the analysis should take into consideration
all the claim limitations and how these limitations interact and impact each other when evaluating whether the exception is integrated into a practical application." August Memorandum at 3-4.
"Examiners are cautioned not to oversimplify claim limitations and expand the application of the
'apply it' consideration." Id. at 4.
Similarly, in a recent Appeals Review Panel (ARP) rehearing decision in Ex parte
Guillaume Desjardins, the rejection under 35 U.S.C. § 101 was overturned because the ARP found that the claim at issue, when considered as a whole, integrates an abstract idea into a practical application.
Here, the pending claims integrate any alleged judicial exception into a practical
application through specific technical improvements to database search technology and natural
language processing systems and should therefore be allowed, at least under recent USPTO
guidance in the August Memorandum and in Desjardins. These improvements are not merely the
use of a computer as a tool to perform an abstract idea, but rather represent concrete technological advancements in how computers process and respond to natural language queries. The August Memorandum states that examiners may consider "whether the claim recites only the idea of a solution or outcome, i.e., the claim fails to recite details of how a solution to a problem is accomplished, or the claim covers a particular solution to a problem or a particular way to …
In response the Examiner assert that in the facially sufficient analysis of the rejection above the Examiner has followed the steps mentioned in the MPEP 2106.07. The abstract idea has been identified and the additional elements in the claim, such as
“receiving user-supplied natural-language search terms that represent a proposed advertising activity for querying …. to determine advertising elasticity of the proposed advertising activity”. These are limitations toward accessing or receiving data (gathering data). Accessing or receiving data is very well understood, routine and conventional computer task activity; It represents insignificant extra solution activity. Mere data-gathering step[s] cannot make an otherwise nonstaturory claim statutory In re Grams,888 F.2d 835, 840 (Fed. Cir. 1989) (quoting In re Meyer, 688 F.2d 789, 794 (CCPA 1982)).
Next, the elements “a normative database that stores normative data comprising a plurality of records, at least one processor communicatively coupled to the normative database, wherein the at least one processor is configured for”, “deriving a mapping function based on the normative data that maps the existing tags to a set of normative topics associated with the normative data such that the set of normative topics represents variation in the existing tags across the normative data, wherein the mapping function is derived by finding a weighted linear combination of existing tags…dynamically updating the mapping function upon addition of one or more new records …generating a set of mapped user topics using the derived mapping function with the user-supplied natural-language search terms as input to the derived mapping function, wherein the set of mapped user topics is generated by determining a reduced set of normative topics based on relationships to other normative tags…and providing the set of mapped user topics to an estimation function at runtime to generate a predictive estimate of advertising elasticity for the proposed advertising activity based on the set of mapped user topics”. All these limitations toward accessing or receiving data (gathering data) and the other additional elements represent insignificant extra solution activity. See MPEP 2106.05 (g) or
amount to no more than mere instructions to apply the exception.
The examiner asserts that additional limitations are well-understood, routine, conventional activities in Step 2B. The elements that were considered insignificant extra-solution activity or well- understood, routine, or conventional activity, see the MPEP 2106.05(h), 2106.05(f) and 2106.05(g). A prima facie of unpatentability has been established.
Further, applicant makes a loose argument to “a recent Appeals Review Panel (ARP) rehearing decision in Ex parte Guillaume Desjardins”, but the Examiner respectfully disagrees. The instant claimed invention and the mentioned patent have different claim sets and different fact patterns, and therefore they are not analogous. In this case the Board decision on appeal dated on 05/01/2025 still apply to the instant claims.
The specification identifies a technical problem in existing normative database systems.
As explained in paragraph 51 of the specification, when users attempt to search these databases,
"the tags used by the user need to match the tags in the normative database to calculate the most
accurate estimate of advertising elasticity." This creates a technical barrier because users may not
know the exact tags used in the database, and there may be no standardized tag system. The
specification further explains that if a record in the database uses the tag "social" rather than "social
media," that record either may not be included or may be included but incorrectly weighted in
calculations. This tag-matching problem is exacerbated as advertising trends evolve and new
concepts emerge that are not captured by existing tag sets.
Claim 61 provides a specific technical solution to this problem through its recitation of
deriving a mapping function "by finding a weighted linear combination of existing tags in the
normative database." This is not an abstract mathematical concept but rather a concrete
computational technique that enables the system to understand semantic relationships between
different tags. As described in paragraph 61 of the specification, this weighted linear combination
approach "is able to derive the semantic meaning from the use of particular tags based on their
relationship to other tags in the database." By finding a weighted linear combination of tags, the
mapping function can separate meaningful semantic content from idiosyncratic noise in how
different users describe similar concepts.
The claim further requires "dynamically updating the mapping function upon addition of
one or more new records to the normative database." This dynamic updating represents more than routine data storage or processing. Instead, it describes an adaptive learning system that
continuously improves its ability to match natural language queries to database content. As
explained in paragraph 67 of the specification, whenever new data is added to the normative
database, that new data is retrospectively analyzed to update existing topics, generate additional
new topics as necessary, and regenerate the mapping function. This allows the search-engine
process to adapt dynamically as new cases are added to the normative database, ensuring the
system remains effective even as language usage and advertising concepts evolve.
In response this case is not rejected under 101 only because the invention ability to run on a general purpose computer, but also because the detail facially sufficient analysis provided above, where the Examiner looked both the instant claims and the specification to elaborate Examiner's facially sufficient analysis. The additional elements in the instant claims do not provide significantly more to the abstract idea identified above, as the additional elements do not: Improve another technology or technical field; Improve the functioning of a computer itself; Add a specific limitation other than what is well-understood, routine, and conventional in the field; Add meaningful limitations that amount to more than generally linking the use of the exception to a particular technological environment; Improve computer related technology by allowing computer performance of a function not previously performable by a computer. (see MPEP 2106.05).
Further applicant argues “Claim 61 provides a specific technical solution to this problem through its recitation of deriving a mapping function "by finding a weighted linear combination of existing tags in the normative database."
The Examiner notes that the claims meet the utility requirement but the claims are not eligible because the additional elements identified in the claim such as “a normative database that stores normative data comprising a plurality of records, at least one processor communicatively coupled to the normative database, wherein the at least one processor is configured for”, “deriving a mapping function based on the normative data that maps the existing tags to a set of normative topics associated with the normative data such that the set of normative topics represents variation in the existing tags across the normative data, wherein the mapping function is derived by finding a weighted linear combination of existing tags…dynamically updating the mapping function upon addition of one or more new records …generating a set of mapped user topics using the derived mapping function with the user-supplied natural-language search terms as input to the derived mapping function, wherein the set of mapped user topics is generated by determining a reduced set of normative topics based on relationships to other normative tags…and providing the set of mapped user topics to an estimation function at runtime to generate a predictive estimate of advertising elasticity for the proposed advertising activity based on the set of mapped user topics”, were considered insignificant extra-solution activity or well- understood, routine, or conventional activity, see the MPEP 2106.05(h), 2106.05(f) and 2106.05(g). A prima facie of unpatentability has been established. The combination of these additional elements is no more than mere instructions to apply the exception. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. In summary, the Examiner states that the instant invention is not a technical solution to a technical problem. The claims are ineligible. A prima facie of unpatentability has been established.
Regarding to the argument “The claim further requires "dynamically updating the mapping function upon addition of one or more new records to the normative database."
Again, these additional limitations are no more than mere instructions to apply the exception. In the step 2B of the 2019 analysis all the limitations including these alleged limitations were re-evaluated and it was concluded that this limitation is very well-understood, routine and conventional activity in the field of databases. A database that adds data or update its data and the step of using the database data to improve a predictive result or estimated such as “predictive estimated of data, in this case of “advertising elasticity” does not improve computers as tool. See Electric Power Group v Alstom S.A. (Fed Cir, 2015-1778, 8/1/2016), wherein the court concluded that the focus of the claims is not an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.
Step 2B: The Claims Provide an Inventive Concept
Even assuming arguendo that the claims recite a judicial exception, which Applicant does
not concede, the claims add specific limitations that amount to significantly more than the judicial
exception itself. The combination of technical features in claim 61 provides an inventive concept
that transforms any alleged abstract idea into patent-eligible subject matter.
The claimed invention employs an unconventional database architecture that differs from
traditional database systems. The normative database structure specified in claim 61 includes …
In response the Examiner agrees that the instant application is in compliance with the utility requirement. The claimed invention has a readily apparent well-established utility (see MPEP 2107). But, per MPEP 2106 an invention also must have to comply with the Subject Matter Eligibility test under Alice framework (see MPEP 2106). The instant claims are directed to an abstract idea. None of the limitations considered as an ordered combination, provides eligibility, because taken as a whole, the claim simply instruct the practitioner to implement an abstract idea with routine, conventional technology. Accordingly, the claims are ineligible.
The Claims Do Not Preempt an Abstract Idea
The claims are sufficiently limited to avoid preemption concerns. The specific technical
requirements of the claims ensure that they do not monopolize any abstract idea or fundamental
economic practice. The claims require a particular database structure with specific fields, a
mapping function derived through weighted linear combination, dynamic updating mechanisms,
and runtime estimation processing. These limitations leave ample room for other implementations of advertising elasticity estimation or natural language search systems.
Other systems could estimate advertising elasticity without using the claimed normative
database structure, without deriving mapping functions through weighted linear combination,
without dynamic updating, or without runtime processing. Alternative implementations might use different database architectures, employ different semantic mapping techniques such as neural networks or simple keyword matching, use static rather than dynamic systems, or perform batch processing rather than runtime estimation. The availability of these alternatives demonstrates that the claims do not preempt the field but rather claim a specific technological implementation.
Moreover, the claims are limited to the specific technical field of database search systems
for advertising elasticity estimation. They do not claim all methods of estimating advertising
effectiveness, all natural language processing systems, or all database search techniques. This
limited scope further demonstrates that the claims do not raise preemption concerns.
The Examiner agrees with the Applicant that the instant invention does not preempt or monopolize the entire field of “normative databases " or any other field of art. But, the instant claims are a drafting effort designed to monopolize the abstract idea drafted in the instant claims (See Ultramercial, LLC v. Hulu, LLC and WildTangent, ___ F.3d ___, 112 USPQ2d 1750 (Fed. Cir. 2014). Furthermore, Ultramercial decision makes it clear that Applicant's arguments regarding “pre-emption” are not a substitute for the proper two-part test under Alice implemented in the 2019 PEG. Next, some precedential decisions do not consider the absence of preemption as conferring patent eligibility
(e.g., Synopsys, Fair Warning, Intellectual Ventures v. Symantec, Sequenom, and OJP).
Identified the abstract idea recited in the claims, the system for predictive estimating of advertising elasticity using natural-language search terms, the additional elements do not provide significantly more to the abstract idea “receiving user-supplied natural-language search terms that represent a proposed advertising activity for querying …. to determine advertising elasticity of the proposed advertising activity”. And
other supplementary elements in the claim “a normative database that stores normative data comprising a plurality of records, at least one processor communicatively coupled to the normative database, wherein the at least one processor is configured for”, “deriving a mapping function based on the normative data that maps the existing tags to a set of normative topics associated with the normative data such that the set of normative topics represents variation in the existing tags across the normative data, wherein the mapping function is derived by finding a weighted linear combination of existing tags…dynamically updating the mapping function upon addition of one or more new records …generating a set of mapped user topics using the derived mapping function with the user-supplied natural-language search terms as input to the derived mapping function, wherein the set of mapped user topics is generated by determining a reduced set of normative topics based on relationships to other normative tags…and providing the set of mapped user topics to an estimation function at runtime to generate a predictive estimate of advertising elasticity for the proposed advertising activity based on the set of mapped user topics”. These additional limitations do not:
Improve another technology or technical field; Improve the functioning of a computer itself; Add a specific limitation other than what is well-understood, routine, and conventional in the field; Add meaningful limitations that amount to more than generally linking the use of the exception to a particular technological environment; Improve computer related technology by allowing computer performance of a function not previously performable by a computer.
The Current Claims Fully Address the Board's Guidance
The pending claims directly implement the Board's guidance by incorporating detailed
technical limitations for both the mapping function derivation and the runtime estimation function.
The mapping function limitations now explicitly recite that it is derived by finding a weighted
linear combination of existing tags, that it dynamically updates when new records are added, and
that it generates mapped user topics by determining a reduced set based on relationships between
tags. The estimation function limitations specify that it operates at runtime to generate predictive
estimates for proposed advertising activities. These amendments directly address the Board's
finding that these limitations should be considered as additional elements in the eligibility analysis.
The technical nature of these limitations is further supported by the extensive technical
disclosure in the specification. The specification provides detailed algorithms, mathematical
formulas, and implementation examples that demonstrate the technological character of the
invention. Figures 3, 4A, 4B, SA, and SB illustrate the technical processes and data flows involved in the claimed system. This level of technical detail distinguishes the claimed invention from abstract ideas or business methods implemented on generic computers.
Additionally, the additional guidance from the USPTO in the August Memorandum and
in Desjardins, which were both released after the Final Office Action was issued, further make
clear that the proper analysis of the pending claims should take into account the technical nature
of these limitations, and that those limitations integrate any alleged judicial exception into a
practical application. Accordingly, the pending claims are subject matter eligible under 35 U.S.C.
In response the Examiner asserts that the facially sufficient analysis performed in the instant claims to elaborate a prima facie of unpatentability herein reveals that the detail contained in the claims NO strongly suggests they amount to a practical application of an idea, rather than effectively claiming the idea itself.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
“Regionalization of Social Interactions and Points-of-Interest Location Prediction With Geosocial Data“. IEEE. 2018. This article teaches “Traditional methods for studying the activity dynamics of people and their social interactions in cities require time-consuming and resource-intensive observations and surveys. Dynamic online trails from geosocial networks (e.g. Twitter, Instagram, Flickr etc.) have been increasingly used as proxies for human activity, focusing on mobility behavior, spatial interaction, and social connectivity, among others. Social media records incorporate geo-tags, timestamps, textual components, user-profile attributes and points-of-interest (POI) features, which respectively address spatial, temporal, topical, demographic, and contextual dimensions of human activity. While the information contained in social media data is complex and high-dimensional, there is a lack of studies exploiting the combined potential of their information layers. This article introduces a framework that considers multiple dimensions (i.e. spatial, temporal, topical, and demographic) of information from social media data, and combines Geo-Self-Organizing Maps (GeoSOMs) in conjunction with contiguity-constrained hierarchical clustering, to identify homogeneous regions of social interaction in cities and, subsequently, estimate appropriate locations for new POIs. Drawing on the discovered regions, we build a Factorization Machine-based model to estimate appropriate locations for new POIs in different urban contexts. Using geo-referenced Twitter records and Foursquare data from Amsterdam, Boston, and Jakarta, we evaluate the potential of machine learning techniques in discovering knowledge about the geography of social dynamics from unstructured and high-dimensional social web data. Moreover, we demonstrate that the discovered homogeneous regions are significant predictors of new POI locations”.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 MARIA VICTORIA VANDERHORST whose telephone number is (571)270-3604. The examiner can normally be reached on M-F 8-4 hours from 9:00 AM-4:00 PM ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ashraf Waseem can be reached on 571-270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARIA V VANDERHORST/ Primary Examiner, Art Unit 3621
1/14/2026