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 Claims
This action is in reply to the claims filed on 06/12/2025.
Claims 1 and 11 are amended.
Claims 2, 4, 8, 12, 14, and 16-17 are cancelled.
Claims 18-21 are newly added.
Claims 1, 3, 5-7, 9-11, 13, 15, and 18-21 are currently pending and have been examined.
Allowable Subject Matter
Claims 1, 3, 5-7, 9-11, 13, 15, and 18-21 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office Action.
A statement of reasons for the indication of allowable subject matter is included in the Office Action on 09/30/2024.
Claim Rejections- 35 U.S.C. § 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 1, 3, 5-7, 9-11, 13, 15, and 18-21 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Under Step 1 of the subject matter eligibility (SME) analysis described in MPEP 2106.03, the instant claims fall within the four statutory categories of invention identified by 35 U.S.C. 101. In the instant case, claims 1, 3, 5-7, 9-10, and 18-21 are directed to a machine, and claims 11, 13, 15, and 17 are directed to a method. Claims 1 and 11 are parallel in nature, therefore, the analysis will use claim 1 as the representative claim.
In Step 2A Prong One, it must be considered whether the claims recite a judicial exception. In the instant case, representative claim 1 recites abstract concepts including: storing … at least one target keyword related to a product and at least one purpose keyword related to an action corresponding to the product; ... receive user input data to search for purchasing a product, wherein the user input data comprises at least one of text data, image data, or voice data; obtain a target keyword and a purpose keyword from the user input data based on the at least one target keyword and the at least one purpose keyword, obtain a plurality of pieces of identification information on each of a plurality of products related to an operation of performing the purpose keyword by the target keyword, and obtain a product list by replacing at least one piece of identification information among the plurality of pieces of identification information with identification information corresponding to another product based on information related to a user, and … display the purchase product list, wherein the information related to the user comprises at least one of nationality, age, gender, purchase history, or preferred seller information of the user, and ... convert the user input data into text data by analyzing the user input data, determine whether a result value is obtained based on the converted text data, based on the result value being obtained, determine that the converted text is normally recognized;, based on the result value being not obtained, determine that the converted text is not normally recognized and change the converted text data into a predetermined word corresponding to the converted text data, wherein the predetermined word corresponding to the converted text data is stored ..., and obtain the target keyword and the purpose keyword based on the changed predetermined word.
When considering the subject matter groupings articulated in MPEP 2106.04, the claims recite an abstract idea of “generating a product list based on user search input”. These concepts are considered to be certain methods of organizing human activity. Certain methods of organizing human activity are defined by MPEP 2106.04 as including “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)”. In this case, generating a product list using user input is a certain method of organizing human activity because it describes sales activities and behaviors. Therefore, claims 1 and 11 recite an abstract idea.
If it is determined that the claims recite a judicial exception, then in Step 2A, Prong 2 of the SME analysis, it is then necessary to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of that exception. This is the question of whether a claim is “directed to” a judicial exception. As explained in MPEP 2106.05, the evaluation of Prong Two requires the use of the considerations (e.g. improving technology, effecting a particular treatment or prophylaxis, implementing with a particular machine, etc.) identified by the Supreme Court and the Federal Circuit, to ensure that the claim as a whole “integrates [the] judicial exception into a practical application [that] will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.”
In this instant case, claims 1 and 11 recite the additional elements including: an electronic device comprising: a display; a memory storing at least one instruction; a processor to execute the at least one instruction; control the display to display; and data stored in memory. These additional elements amount to no more than a recitation of the words "apply it" (or an equivalent) or are more than mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do "‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’". Claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. MPEP 2106.05(f). Invoking computers or other machinery merely as a tool for economic or other tasks (e.g. to receive, store, or transmit data) does not integrate a judicial exception into a practical application. Therefore, considered both individually and as an ordered combination, the additional elements fail to integrate the abstract idea of “generating a product list based on user search input” into a practical application. Accordingly, the Examiner concludes that claims 1 and 11 are directed to an abstract idea.
Under Step 2B of the SME analysis, if it is determined that the claims recite a judicial exception that is not integrated into a practical application of that exception, it is then necessary to evaluate the additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).
As discussed above with respect to integration of the abstract idea into a practical application, the additional element(s) individually and in combination are merely being used to apply the abstract idea to a general computer components. The invention as claimed merely automates “generating a product list based on user search input” (i.e., the abstract idea) and does not add meaningful limitations to the abstract ideas beyond generally linking the abstract process to implementation via computers/software. Therefore, the additional elements, alone or in ordered combination, do not render the claim as being significantly more than the underlying abstract idea, and the claims 1 and 11 are ineligible.
Dependent claim(s) 3, 5, 9, 10, 13, 15, and 18-19 do not aid in the eligibility of the independent claims. These claims merely further define the abstract idea without reciting any further additional elements. Thus dependent claims 3, 5, 9, 10, 13, 15, and 18-19 are also ineligible.
Dependent claim 6 recites additional elements including: an artificial intelligence model. These additional elements do not integrate the abstract idea into a practical application because they merely amount to no more than a general link of the use of the abstract idea to a particular technological environment or field of use (i.e. a computer environment). Employing generic computer functions to execute an abstract idea, even when limiting the use of the idea to one particular environment, does not add significantly more. MPEP 2106.05(h). Accordingly, the additional elements do not act to integrate the abstract idea into a practical application, neither do they amount to significantly more than the abstract idea itself. Thus claim 6 is also ineligible.
Dependent claims 20-21 recite additional elements including: display, on the display, a user interface (UI) for changing the at least one piece of identification information. The display, user interface, and method of displaying (i.e. “display”) are recited at a high level of generality and invoked merely as tools to perform the abstract idea. As explained in Alice, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible (Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983). Accordingly, the requirement to “display, on the display, a user interface (UI)” does not integrate the abstract idea into a practical application, neither does this limitation amount to significantly more than the abstract idea itself. Thus claims 20-21 are also ineligible.
Response to Arguments
Applicant's arguments filed 06/12/2025 with respect to the 35 U.S.C. § 101 rejections have been fully considered but they are not persuasive.
On pages 11-12 of the Remarks, Applicant argues “the Office Action appears to have overly generalized the identification of elements that correspond to the alleged abstract idea”, and the Office Action “has thus precluded these elements from consideration as to providing technical benefits or amounting to more than the abstract idea”. Specifically, Applicant argues the underlined limitations on page 15 of the Remarks, “are not specifically related to the identified sales activity”.
The Examiner respectfully disagrees. In Prong One examiners evaluate whether the claim recites a judicial exception, i.e. whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim (MPEP 2106.04). The Examiner emphasizes that the Office uses the language of set forth or described, not specifically related as argued. The following limitations, argued by Applicant, do indeed set forth and describe abstract sales activities and behaviors:
receive user input data to search for purchasing a product, wherein the user input data comprises at least one of text data, image data, or voice data,
obtain a target keyword and purpose keyword from the user input data, based on the at least one target keyword and the at least one purpose keyword,
obtain a plurality of pieces of identification information on each of a plurality of products related to an operation of performing the purpose keyword by the target keyword,
obtain a product list by replacing at least one piece of identification information among the plurality of pieces of identification information with identification information corresponding to another product based on information related to a user.
Receiving user input, analyzing it, and returning results of that analysis intended to guide or influence a purchase (e.g., obtain and display “a product list”) set forth and describe sales activities.
These conversion limitations further describe the analysis of user input performed to obtain the product list:
convert the user input data into a text data by analyzing the user input data,
determine whether a result value is obtained based on the converted text data, based on the result value being obtained, determine that the converted text is normally recognized;
based on the result value being not obtained, determine that the converted text is not normally recognized and change the converted text data into a predetermined word corresponding to the converted text data, wherein the predetermined word corresponding to the converted text data is stored in the memory, and
obtain the target keyword and the purpose keyword based on the changed predetermined word.
With the exception of “stored in the memory”, these limitations are also considered to recite abstract sales activity. These limitations describe changing the user input data (“to search for purchasing a product”) from unrecognized text to a predetermined word, which describes the beginning of the process for obtaining a product list using user input. Even if Applicant disagrees with this characterization, these steps could also be characterized under the mental process grouping because a person can perform each of these steps in their mind, with the memory being their own mental memory. As explained in MPEP 2106.04(d)(III) “Because a judicial exception alone is not eligible subject matter, if there are no additional claim elements besides the judicial exception, or if the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application.” Accordingly, these abstract limitations on their own cannot provide a practical application or significantly more than the abstract idea itself.
On page 13 of the Remarks, Applicant argues “This analysis is inconsistent with the Subject Matter Eligibility Example #42”, where “subsequent analysis was performed to determine which features were generally directed to the method of organizing human activity and which features were additional elements, and no such analysis has been performed by the Office Action in this case” (emphasis added by Applicant).
The Examiner respectfully disagrees. As in Example 42, limitations reciting abstract activity were not “automatically removed from consideration as to whether these features integrate the abstract idea into a practical application or amount to significantly more than the abstract idea”. For example, the Office Action considers the abstract idea in combination with the additional elements on page 6 stating, “The invention as claimed merely automates ‘generating a product list based on user search input’ (i.e., the abstract idea) and does not add meaningful limitations to the abstract ideas beyond generally linking the abstract process to implementation via computers/software”. The instant analysis does not have the same conclusion as in Example 42, because the facts and limitations of Example 42 do not apply to the instant claims. The combination of elements in the instant case amounts to mere automation with computers/software whereas the combination in Example 42 recited a specific improvement over prior art systems.
On page 18 of the Remarks, Applicant argues “by using the specific conversion process recited in the claims, along with the result value determination and the predetermined words that are already stored in the memory, the analysis time of the text is reduced, and the recognition rate is increased, improving the performance of the electronic device in generating product lists”.
The Examiner respectfully disagrees. First, Examiner notes that improving the performance of the electronic device in generating product lists is an improvement in the abstract idea itself (e.g., the recited sales activity), and not an improvement in the functionality of the device. For example, MPEP 2106.05(a)(II) explains “it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology.”) Similarly, improving the generation of product lists is an improvement in the business process of sales.
Secondly, the underlined limitations argued to provide a technical improvement on pages 16-17 of the Remarks describe changing unrecognized text to a predetermined word (e.g., “melom” → “melon”), which is equivalent to the existing mental task of correcting spelling errors. Although these steps are tied to performance by a processor and memory, claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures "can be carried out in existing computers long in use, no new machinery being necessary." 409 U.S at 67, 175 USPQ at 675. As explained above, if there are no additional claim elements besides the judicial exception, or if the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application.
Thirdly, the Examiner notes that the autocorrect limitations reproduced on pages 16-17 do not correspond to the domain limitation features argued as providing an improvement in paragraphs [0072]-[0073] of the Specification (Remarks, pg. 17). Claim 1 does not recite limiting a domain while searching for a result regarding the input data, as described in paragraphs [0072]-[0073]. Even if claim 1 did recite limiting a search by domain, “filtering content” (which is equivalent to limiting a domain to search) is also considered an abstract idea (BASCOM Global Internet Servs. v. AT&T Mobility).
For at least these reasons, even when considered in view of the technical improvement consideration, the recited autocorrect or “changing” text data does not integrate the abstract idea into a practical application or provide significantly more than the abstract idea itself.
On page 18 of the Remarks, Applicant argues “a mental process would not encompass converting user input data into text data, and determining whether a result value is obtained”. The Examiner respectfully disagrees. Converting user input data into text data and determining whether a result value is obtained are both functions that can practically be performed in the human mind. For example, a person can “convert the user input data into a text data by analyzing the user input data” mentally by transcribing, and “determine whether a result value is obtained based on the converted text data” by recognizing the text as a word or not.
On page 18 of the Remarks, Applicant argues “the location of the predetermined word (i.e., stored in the memory) also provides additional processing benefits because further processing would not be required to obtain the predetermined word”.
The Examiner respectfully disagrees. If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. MPEP 2106.05(a).
Applicant’s Specification does not provide sufficient details of “processing benefits” realized by storing a predetermined word in memory. The memory is described at a high level of generality in both the claims and specification, with no specific details regarding its structure or operations. As explained in MPEP 2106.06(f), “use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more”.
The Examiner further disagrees that storing the predetermined word in memory cannot be considered mere data gathering “because the claim recites that the predetermined word is already provided in the electronic device memory”. It is not just storing the data, but also consulting stored data for a predetermined word that is mere data gathering. For example, “consulting and updating an activity log” was found to be mere data gathering in Ultramercial, 772 F.3d at 715, 112 USPQ2d at 1754. Moreover, storing data in memory has repeatedly been considered a well-understood, routine, and conventional computer function when claimed in a merely generic manner (e.g., at a high of generality), as it is here. See “Storing and retrieving information in memory”, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Examiner notes that if Applicant’s invention is directed to innovations in text recognition and replacement, these features would need to be recited in more technical terms than as steps capable of performance in the mind. Per MPEP 2106.05(a), to show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology.
For at least these reasons, the Examiner maintains the additional elements to not amount to significantly more than the abstract idea itself and that the pending claims are therefore ineligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Hienert, Daniel, et al. (NPL Reference U) conducts a user study on four different design approaches for search term suggestion service.
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 KENNEDY A GIBSON-WYNN whose telephone number is (571)272-8305. The examiner can normally be reached M-F 8:30-5:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeff Smith can be reached on 571-272-6763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/K.G.W./Examiner, Art Unit 3688 /Jeffrey A. Smith/Supervisory Patent Examiner, Art Unit 3688