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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09 February 2026 has been entered.
This Continued Examination Office Action is in reply to the Request for Continued Examination filed on 09 February 2026.
Claims 1, 2, 6, 8-14 have been amended. Claims 3-5, 15-21 have been cancelled. Claims 22-30 are new and have been added.
Claims 1, 2, 6-14, 22-30 are currently pending and have been examined. The Information Disclosure Statement filed 16 March 2026 has been considered by the Examiner. A signed copy is enclosed with this Office action.
Response to Amendment
In the previous office action, Claims 1, 2, 4-21 were rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Applicants have not amended now Claims 1, 2, 6-14, 22-30 to provide statutory support and the rejection is maintained.
Response to Arguments
Applicants’ arguments filed 09 February 2026 have been fully considered but they are not persuasive.
In the remarks regarding the 35 USC § 101 rejection for Claims 1, 2, 6-14, 22-30, Applicants argue 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. Commensurate with the 2019 revised patent subject matter eligibility guidance (2019 PEG), the October 2019 Update: Subject Matter Eligibility (“October 2019 Update”) and updated with the addition of new Examples 47-49 published July 2024, the claims are continued analyzed based on these new guidelines and is detailed below in the maintained rejection under 35 USC 101.
The current claim amendments have overcome the prior art rejection.
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 1, 2, 6-14, 22-30 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 1, 2, 6-14, are each focused to a statutory category of invention, namely “system; method” sets. However “computer storage media” Claims 22-30 do not recite that the “media 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 1, 2, 6-14, 22-30 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:
“generating a user group comprising a set of users selected based on a similarity score for usage of a software application, wherein a similarity score comprises a measure of feature similarity between users within the user group with respect to interaction with a particular graphical user interface element of the software application;
categorizing a particular user as a member of the user group based at least on interaction by the particular user with the particular graphical user interface element of the software application; generating a feature vector representing a usage pattern of the particular user of the software application by processing usage data of the software application by the particular user;
generating a prediction for the particular user by processing the feature vector using an engagement model associated with the user group, wherein the engagement model has been trained to predict user engagement with the software application;
processing the generated prediction using a reengagement model to generate a prompt for the software application;
and while the software application is executing, triggering the software application to output the prompt, wherein the prompt identifies an action that, when selected by the particular user, causes the application to perform the action and continue engagement between the particular user and the software application”
The claims fall under the categories in above bolded emphasis as it describes the collection, analysis, and classification of data (similarity scoring, user grouping, and engagement prediction), which are recognized as abstract idea groupings:
(a) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations. The use of "similarity scores; feature vectors; engagement models" to "process usage data" fall under this category. If the claim is interpreted as performing mathematical calculations or applying algorithms (e.g., calculating a vector distance), it recites a mathematical relationship.
(b) Certain methods of organizing human activity –managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). Grouping users by behavior and triggering "reengagement" prompts to manage their behavior is viewed as managing personal behavior or relationships or interactions between people and a service, falling under this category
(c) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion). The steps of "generating a user group" based on "similarity scores; categorizing a particular user; generating a prediction" involve evaluating, judging, and comparing data. These are often considered mental processes because, at their core, they describe functions that can be performed in the human mind or with pen and paper (e.g., observing interactions and grouping people by similarity). 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 1, 2, 6-14, 22-30: 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 1, 2, 6-14, 22-30 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 1, 2, 6-14, 22-30 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:
Glover (US 2017/0193053)
Maciej et al. (CA 3224864 A1)
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THOMAS L. MANSFIELD
Examiner
Art Unit 3623
/THOMAS L MANSFIELD/Primary Examiner, Art Unit 3624