DETAILED ACTION
This Office action is in reply to correspondence filed 13 January 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 .
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, and making a prediction, again in no particular manner but based on the available data.
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 that abstract idea. Companies who 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. 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, and the present amendment does nothing more than further specify the type of information being manipulated.
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 13 January 2026 have been fully considered but they are not persuasive. First, the fact that there is no art rejection under 35 U.S.C. § 102 or 103 is not relevant to the § 101 analysis. As the Supreme Court said in Myriad1, “[g]roundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.”
In regard to the complaint of distillation, reducing the claims to their “purported gist or thrust”, the Examiner has, previously and above, listed every claim element, separating the abstract from the non-abstract, and removing essentially details about human interpretation of data, while explaining slightly later on why this is not inappropriate (“the type of information being manipulated does not impose meaningful limitations or render the invention less abstract”, language the Examiner has lifted verbatim from a training deck the Office used to train Examiners in the post-Alice era).
The Examiner is not aware of the need for proof to which the applicant refers. Further, this could only conceivably apply to non-abstract claim elements for which there is a material dispute as to their well-understood, routine and conventional nature. The applicant has not, because he cannot, state that generic computers were not well-understood, routine and conventional at the relevant date, and even if it were otherwise, the applicant’s own lack of elaboration as to the structure and function of such elements has consistently been accepted by the courts as demonstrative of their conventional nature.
The applicant’s statement, near the bottom of pg. 9, that the Examiner has not demonstrated that the claims are not integrated into a practical application leaves behind any hint as to which type of such integration is supposed to exist in the claims, and the Examiner finds none, referring to the possible integrative factors listed (albeit nonexhaustively) in MPEP § 2106.05(a-c),(e).
The fact that the invention may have “practical utility” is not where the courts have drawn the line; Alice had practical utility. The fact that the Examiner did not make an “art rejection”, again, has nothing to do with whether the non-abstract claim elements were well-understood, routine and conventional. The courts have made that an explicit part of the analysis, for example in Buyseasons2, where the court said: “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
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 SCOTT C ANDERSON whose telephone number is (571)270-7442. The examiner can normally be reached M-F 9:00 to 5:30.
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, 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)