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
1. This Final Office action is in reply to the Applicant amendment filed on 27 July 2026.
2. Claims 10, 12, 14, and 22-30 have been amended. Claims 1-9 and 15-21 have been cancelled. Claims 31-36 are new and have been added.
3. Claims 10-14 and 22-36 are currently pending and have been examined.
Response to Amendment
In the previous office action, Claims 1, 2, 6-14, 22-30 were rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (abstract idea). Applicants have not amended now Claims 10-14 and 22-36 to provide statutory support and the rejection is maintained.
Response to Arguments
Applicant’s arguments filed 27 July 2026 have been fully considered but they are not persuasive. In the remarks regarding the 35 USC § 101 rejection for Claims 10-14 and 22-36, Applicant argues that the claims are not directed to an abstract idea, and even if they were, they would amount to significantly more than the abstract idea. Examiner respectfully disagrees. Still commensurate to the two-part subject matter eligibility framework decision in the Federal court decision in Alice Corp. Pty. Ltd. V. CLS Bank International et al., (Alice), 2019 revised patent subject matter eligibility guidance (2019 PEG) and the October 2019 Update: Subject Matter Eligibility (“October 2019 Update), and the new “July 2024 Guidance Update on Patent Subject Matter Eligibility Examples, including on Artificial Intelligence”, and the Examiner details the maintained rejection under 35 U.S.C. 101 in the below rejection with further explanation. For representative independent Claim 31, the claims still recite Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations. The claim explicitly recites mathematical structures and data manipulation techniques. It requires "first feature data having a first dimensionality," "generating a feature vector... having a second dimensionality that is lower than the first dimensionality," and providing this mathematical vector to a "machine-trained engagement model. Dimension reduction of vectors and training machine learning algorithms are inherently mathematical procedures (e.g., matrix operations, statistical regressions). Because the claim relies on these specific mathematical limitations to group users and make predictions, it recites a mathematical concept. Certain methods of organizing human activity –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). The claim manages and analyzes human interactions and commercial behavior within a software application. It categorizes users based on "interaction with a software application," predicts whether a user will "not continue engagement," and generates a "prompt... that causes the software application to perform [an] action. Predicting customer behavior, tracking user engagement, and attempting to retain customers (re-engagement) are foundational business, marketing, and behavioral concepts. The USPTO and courts routinely classify methods of tracking, predicting, or influencing user/customer behavior as methods of organizing human activity. Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion). The claim steps of "categorizing," "generating a feature vector," "generating a prediction," and "generating a prompt" are framed conceptually as data-in, data-out steps. While the claim references a "machine-trained engagement model" and a "software application," the underlying logic of grouping similar entities based on past behavior, calculating a simplified profile (vector reduction), and guessing a future outcome can theoretically be performed in the human mind or with pen and paper. Unless the claim specifies a non-generic hardware implementation that moves it beyond generic data processing, courts often find these data-manipulation steps recite a mental process. For the argument for Step 2A, Prong 2, Applicants cite the Ex Parte Desjardins appeal panel decision for the claims. However, as currently recited, the additional elements of “at least one processor; memory storing instructions; software application; graphical user interface; machine learning model”, etc. are generically-recited computer-related elements that amount to a mere instruction to “apply it” (the abstract idea) on the computer-related elements (see MPEP § 2106.05 (f) – Mere Instructions to Apply an Exception). These additional elements in the claims are recited at a high level of generality and are merely limiting the field of use of the judicial exception (see MPEP §2106.05 (h) – Field of Use and Technological Environment). There is no indication that the combination of elements improves the function of a computer or improves any other technology. Regarding the argument under Step 2B, Applicants submit that Example 21 is analogous to the claims however Example 21 was more detailed in “transmitting the alert over a wireless communication channel to activate the stock viewer application” which is different subject matter from applicant’s claimed subject matter. Applicant’s claims are based on user input utilizing a general-purpose computer with pre-programmed software to output processed data with no further detail as to specifically how the additional elements of “at least one processor; memory storing instructions; software application; graphical user interface; machine learning model”, etc. the combination of elements improves the function of a computer or improves any other technology and that amount to a mere instruction to “apply it” (the abstract idea) on the computer-related elements (see MPEP § 2106.05 (f) – Mere Instructions to Apply an Exception). These additional elements in the claims are recited at a high level of generality and are merely limiting the field of use of the judicial exception (see MPEP §2106.05 (h) – Field of Use and Technological Environment). In summary as indicated below through Steps 1-2B, the recitation of a computer (one or more processors) to perform the claim limitations amount to no more than mere instruction to apply the exception using generic computer components. Even when considered in combination, these additional elements represent mere instructions to implement an abstract idea or other exception on a computer and insignificant extra-solution activity, which do not provide an inventive concept. For at least these reasons, the rejection is maintained.
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 10-14 and 22-36 are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, natural phenomenon, or an abstract idea) because the claimed invention is directed to a judicial exception (i.e., a law of nature, natural phenomenon, or an abstract idea) without significantly more. The claims as a whole recite certain grouping of an abstract idea and are analyzed in the following step process:
Step 1: Claims 10-14 and 31-36 are each focused to a statutory category of invention, namely “system; method” sets. However “hardware computer storage devices” Claims 22-30 do not recite that the “computer storage devices storing instructions” is non-transitory (non-volatile media). In at least paragraph 77 of the instant specification “The term computer readable media as used herein may include computer storage media. Computer storage media may include volatile and nonvolatile, removable and non-removable media implemented in any method or technology for storage of information, such as computer readable instructions, data structures, or program modules” (emphasis added). Volatile or transitory media is not statutory under this statute. These claims should recite in at least independent Claim 22 as non-transitory computer storage media. Despite this failure to pass Step 1, the Examiner proceeds to the next steps of the analysis.
Step 2A: Prong One: Claims 10-14 and 31-36 recite limitations that set forth the abstract ideas, namely, the claims as a whole recite the claimed invention is directed to an abstract idea without significantly more. The claims recite steps for, generally:
“based at least on first feature data having a first dimensionality, categorize a particular user into a user group associated with a machine-trained engagement model, wherein the user group comprises a set of similar users that are selected for inclusion in the user group based at least on interaction with a software application, and wherein the machine- trained engagement model has been trained to predict user engagement with the software application based at least on signals indicating whether individual users maintained engagement with the software application;
generate a feature vector representing a usage pattern of the particular user when interacting with the software application, the feature vector having a second dimensionality that is lower than the first dimensionality;
generate a prediction that the particular user will not continue engagement with the software application by: providing, to the machine-trained engagement model, the feature vector representing the usage pattern of the particular user when interacting with the software application; and
receiving, from the machine-trained engagement model, the prediction in response to providing the feature vector, wherein the machine-trained engagement model is trained according to corresponding feature vectors for the set of similar users of the user group;
generate, using a machine-trained reengagement model and based on the prediction, a prompt for the particular user, wherein the machine- trained reengagement model has been trained based on signals indicating whether different prompts resulted in the individual users maintaining engagement with the software application; and
while the software application is executing, trigger the software application to output the prompt, wherein the prompt identifies an action that, when selected by the particular user, causes the software application to perform the action and continue engagement between the particular user and the software application”
The claims fall under the categories above as it describes the collection, analysis, and classification of data (similarity scoring, user grouping, and engagement prediction), which are recognized as abstract idea groupings:
Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations. The claim explicitly recites mathematical structures and data manipulation techniques. It requires "first feature data having a first dimensionality," "generating a feature vector... having a second dimensionality that is lower than the first dimensionality," and providing this mathematical vector to a "machine-trained engagement model. Dimension reduction of vectors and training machine learning algorithms are inherently mathematical procedures (e.g., matrix operations, statistical regressions). Because the claim relies on these specific mathematical limitations to group users and make predictions, it recites a mathematical concept.
Certain methods of organizing human activity –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). The claim manages and analyzes human interactions and commercial behavior within a software application. It categorizes users based on "interaction with a software application," predicts whether a user will "not continue engagement," and generates a "prompt... that causes the software application to perform [an] action. Predicting customer behavior, tracking user engagement, and attempting to retain customers (re-engagement) are foundational business, marketing, and behavioral concepts. The USPTO and courts routinely classify methods of tracking, predicting, or influencing user/customer behavior as methods of organizing human activity.
Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion). The claim steps of "categorizing," "generating a feature vector," "generating a prediction," and "generating a prompt" are framed conceptually as data-in, data-out steps. While the claim references a "machine-trained engagement model" and a "software application," the underlying logic of grouping similar entities based on past behavior, calculating a simplified profile (vector reduction), and guessing a future outcome can theoretically be performed in the human mind or with pen and paper. Unless the claim specifies a non-generic hardware implementation that moves it beyond generic data processing, courts often find these data-manipulation steps recite a mental process. See MPEP § 2106.04(a) II C. Hence, the claims are ineligible under Step 2A Prong one. Furthermore, the dependent claims are merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exception. The limitations of the claims do not transform the abstract idea that they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea using generally-recited computer components.
Prong Two: Claims 10-14 and 22-36: With regard to this step of the analysis (as explained in MPEP § 2106.04(d)), the judicial exception is not integrated into a practical application. Independent Claims 1, 10, 16 recite additional elements directed to “at least one processor; memory storing instructions; software application; graphical user interface; machine learning model”. Therefore, the claims contain computer components that are cited at a high level of generality and are merely invoked as a tool to perform the abstract idea. Simply implementing an abstract idea on a computer is not a practical application of the abstract idea. It is notable that mere physicality or tangibility of an additional element or elements is not a relevant consideration in Step 2A Prong Two. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception does not guarantee eligibility. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1983-84 (2014) (“The fact that a computer ‘necessarily exist[s] in the physical, rather than purely conceptual, realm,’ is beside the point”). See also Genetic Technologies Ltd. v. Merial LLC, 818 F.3d 1369, 1377, 118 USPQ2d 1541, 1547 (Fed. Cir. 2016) (steps of DNA amplification and analysis are not “sufficient” to render claim 1 patent eligible merely because they are physical steps). Conversely, the presence of a non-physical or intangible additional element does not doom the claims, because tangibility is not necessary for eligibility under the Alice/Mayo test. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 118 USPQ2d 1684 (Fed. Cir. 2016) (“that the improvement is not defined by reference to ‘physical’ components does not doom the claims”). See also McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315, 120 USPQ2d 1091, 1102 (Fed. Cir. 2016), (holding that a process producing an intangible result (a sequence of synchronized, animated characters) was eligible because it improved an existing technological process). Furthermore, the dependent claims are merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exception. The limitations of the claims do not transform the abstract idea that they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea using generally-recited computer components, and furthermore do not amount to an improvement to a computer or any other technology, and thus are ineligible.
Step 2B: As explained in MPEP § 2106.05), Claims 10-14 and 22-36 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea nor recites additional elements that integrate the judicial exception into a practical application. The additional elements of “at least one processor; memory storing instructions; software application; graphical user interface; machine learning model”, etc. are generically-recited computer-related elements that amount to a mere instruction to “apply it” (the abstract idea) on the computer-related elements (see MPEP § 2106.05 (f) – Mere Instructions to Apply an Exception). These additional elements in the claims are recited at a high level of generality and are merely limiting the field of use of the judicial exception (see MPEP §2106.05 (h) – Field of Use and Technological Environment). There is no indication that the combination of elements improves the function of a computer or improves any other technology. Furthermore, the dependent claims are merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exception. The limitations of the claims do not transform the abstract idea that they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea using generally-recited computer components, and furthermore do not amount to an improvement to a computer or any other technology, and thus are ineligible.
The Examiner interprets that the steps of the claimed invention both individually and as an ordered combination result in Mere Instructions to Apply a Judicial Exception (see MPEP §2106.05 (f)). These claims recite only the idea of a solution or outcome with no restriction on how the result is accomplished and no description of the mechanism used for accomplishing the result. Here, the claims utilize a computer or other machinery (e.g., see Applicants’ published Specification ¶’s 71-86) regarding using existing computer processors as well as program products comprising machine-readable media for carrying or having machine-executable instructions or data structures stored. “computing device 600” in its ordinary capacity for performing tasks (e.g., to receive, analyze, transmit and display data) and/or use computer components after the fact to an abstract idea (e.g., a fundamental economic practice and certain methods of organization human activities) and does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016)). Software implementations are accomplished with standard programming techniques with logic to perform connection steps, processing steps, comparison steps and decisions steps. These claims are directed to being a commonplace business method being applied on a general-purpose computer (see Alice Corp. Pty, Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347, 1357, 110 USPQ2d 1976, 1983 (2014)); Versata Dev. Group, Inc., v. SAP Am., Inc., 793 D.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015)) and require the use of software such as via a server to tailor information and provide it to the user on a generic computer. Based on all these, Examiner finds that when viewed either individually or in combination, these additional claim element(s) do not provide meaningful limitation(s) that raise to the high standards of eligibility to transform the abstract idea(s) into a patent eligible application of the abstract idea(s) such that the claim(s) amounts to significantly more than the abstract idea(s) itself. Accordingly, Claims 10-14 and 22-36 are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception (i.e. abstract idea exception) without significantly more.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure:
Leemet et al. (US 2021/0044702)
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS L MANSFIELD whose telephone number is (571)270-1904. The examiner can normally be reached M-Thurs, alt. Fri. (9-6).
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THOMAS L. MANSFIELD
Examiner
Art Unit 3623
/THOMAS L MANSFIELD/Primary Examiner, Art Unit 3624
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