DETAILED ACTION
This Office action is in reply to correspondence filed 14 May 2026 in regard to application no. 17/749,347. Claims 13-20 have been cancelled. Claims 1-12 and 21-28 are pending and are considered below.
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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 14 May 2026 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 1-12 and 21-28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims lie within statutory categories of invention, as each is directed to a method (process), device (machine), or non-transitory machine-readable medium (manufacture). The claims recite receiving data, processing it e.g. by tokenizing (separating phrases into individual words) and removing stop words (e.g. exceptionally common words such as "and" and "the"), selecting a model in no particular matter, assigning a document to a label based on a word-match count, generating a model in no particular manner, creating profiles in no particular manner but merely based on the available data, making a prediction, again in no particular manner but based on the available data, sending information, receiving information, combining information, and assigning a label. The point of this is to determine whether a person is likely to change providers for a particular product or service.
First, determining whether a person is likely to switch providers is a fundamental business practice or a commercial interaction, each of which is among the "certain methods of organizing activity" deemed abstract, so the claims recite an abstract idea. Companies that use a subscriber model devote a great deal of time and energy to the problem of customer retention, and did so long before there was any such thing as a computer. Second, this recites human mental activity, another category recognized in our Guidance (cited below) as an abstract idea.
A person can receive documents and, while reading them, customarily (and mentally) tokenizes (this is how just about everyone reads; almost nobody reads an entire paragraph as a whole), and customarily ignores or skims connecting words. A person can read a summary of a book and decide the genre based on the occurrence or frequency of certain words; for example, if the summary contains the word "murder" or anything similar, the reader may presume the book is a murder mystery.
A person can determine her own preferences for streaming vs. linear broadcasting, or whether she is likely to change providers, mentally, and can determine someone else's by asking them. Modeling is also something routinely done in the human mind, as it requires nothing more than inference. For example, a person may telephone an agent and say "I'm not sure I enjoy the books you've been sending me", from which the agent may infer a risk of cancellation or the person switching to a new agent. A person can combine documents, e.g. by storing them together in a folder, and can send and receive information, e.g. verbally or via the post. None of this presents any practical difficulty and none requires any technology at all.
This judicial exception is not integrated into a practical application because aside from the bare inclusion of a generic computer, discussed below, nothing is done beyond what was set forth above, which does not go beyond using a generic computer as a tool to implement the abstract idea. See MPEP § 2106.05(f).
As the claims only manipulate text data and information regarding the text data, they do not improve the "functioning of a computer" or of "any other technology or technical field". See MPEP § 2106.05(a). They do not apply the abstract idea "with, or by use of a particular machine", MPEP § 2106.05(b), as the below-cited Guidance is clear that a generic computer is not the particular machine envisioned.
They do not effect a "transformation or reduction of a particular article to a different state or thing", MPEP § 2106.05(c). First, such data, being intangible, are not a particular article at all. Second, the claimed manipulation is neither transformative nor reductive; as the courts have pointed out, in the end, data are still data.
They do not apply the abstract idea "in some other meaningful way beyond generally linking [it] to a particular technological environment", MPEP § 2106.05(e), as the lack of technical and algorithmic detail in the claims is so as not to go beyond such a general linkage.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional claim limitations, considered individually and as an ordered combination, are insufficient to elevate an otherwise-ineligible claim. Claim 21, which has the most, includes a processor and a memory storing instructions. These elements are recited at a high degree of generality and the specification is clear, ¶ 75, that nothing more than "general purpose processors" are required, which encompasses one or more generic computers.
They only perform generic computer functions of nondescriptly manipulating data and sharing data with persons and/or other devices. Generic computers performing generic computer functions, without an inventive concept, do not amount to significantly more than the abstract idea. The type of information being manipulated does not impose meaningful limitations or render the idea less abstract.
The claim limitations when considered as an ordered combination - a generic computer performing a possibly chronological sequence of abstract steps - does nothing more than when they are analyzed individually. The other independent claims are simply different embodiments but are likewise directed to a generic computer performing, essentially, the same process.
The dependent claims further do not amount to significantly more than the abstract idea: claims 2, 7-9, 22, 27 and 28 simply recite further output; claims 3, 5, 6, 10-12, 23 and 26 are simply further descriptive of the type of information being manipulated; claims 4 and 24 simply recite further, abstract manipulation of data.
The claims are not patent eligible. For further guidance please see MPEP § 2106.03 - 2106.07(c) (formerly referred to as the "2019 Revised Patent Subject Matter Eligibility Guidance", 84 Fed. Reg. 50, 55 (7 January 2019)).
Response to Arguments
Applicant's arguments filed 14 May 2026 have been fully considered but they are not persuasive. First, applying labels to content is not a technical problem but merely a routine concern of many types of businesses. The steps which the applicant refers to in the second full paragraph of page 10 are squarely within the abstraction.
The applicant complains that the “human mind is not equipped to perform the claimed limitations as a practical matter”, but gives no hint as to what would create any practical difficulty. The analogy to example 47 is misplaced; anomaly detection used to drop malicious packets in real time in order to improve network security recites an improvement to computing and not merely the use of a computer to perform non-technical, business-focused tasks.
The applicant repeatedly refers to “particular operations”, but the particular operations are all entirely within the abstraction. The applicant does not persuasively show that the claims improve a computer, invoke a particular machine, transform matter, or present more than a general link between the technology and the abstraction. The lack of an “art rejection” is completely irrelevant, as the courts have repeatedly and consistently pointed out. The Examiner therefore maintains the position that the claims are directed to abstract idea.
The Examiner follows the MPEP when composing Office actions. If the applicant is concerned that some body or basis of law has not been incorporated into the MPEP, the applicant is certainly welcome to advise the Office of Patent Legal Administration of such an omission. If the applicant believes the Examiner is misinterpreting the Office’s policies or failing to follow them, an appeal to the Patent Trial and Appeal Board would seem to be the proper avenue to address such a concern.
In regard to step 2B, the inquiry into whether there is “sufficiently more” than well-understood, routine and conventional technology, again, the lack of an art rejection is irrelevant. This step considers the “additional”, that is, non-abstract claim elements, individually and as an ordered combination, to make the relevant determination. Improvements to the abstraction have no role in this part of the analysis.
As the Supreme Court said years ago in Myriad Genetics1, “[g]roundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry”. And quoting the Federal Circuit in BSG Tech2, “It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”
The claims are not patent eligible and the rejection is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT C ANDERSON whose telephone number is (571)270-7442. The examiner can normally be reached M-F 9:00 to 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett Sigmond can be reached at (303) 297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT C ANDERSON/ Primary Examiner, Art Unit 3694
1 Ass’n for Molecular Pathology v. Myriad Genetics, Inc. 133 S.Ct. 2107, 2117 (2013)
2 BSG Tech LLC v. Buyseasons, Inc., 889 F.3d 1281, 1287 (Fed. Cir. 2018)
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