DETAILED ACTION
Status of Claims
This final Office action is responsive to Applicant's amendment filed 11/4/25. Claims 1, 3-5, 9-10, 13, 15-18, and 20 have been amended. Claims 2, 14, and 19 have been previously canceled. Claims 21-22 have been added. Claims 1, 3-13, 15-18, and 20-22 have been considered as follows.
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 .
Response to Amendment
The previously pending rejection under double patenting is not withdrawn in response to Applicant's claim amendments, as further described in the rejection below.
The previously pending rejection under 35 U.S.C. § 101 is not withdrawn in response to Applicant's claim amendments. Examiner submits that while a device including one or more processors is provided, there is no positive recitation of how the system transforms or changes the nature of the claim into something patent-eligible.
Response to Arguments
Regarding Applicant’s arguments drawn to the rejection of the pending claims under 35 U.S.C. § 101, Examiner respectfully disagrees and reiterates that the claims, even as argued and amended, are not drawn to patent eligible subject matter. In the most recent arguments, Examiner notes that several citations from the specification are described to give support for the newly amended limitations. For example, the arguments point to the specification to describe how “the task is inferred from an electronic message object in the electronic message list”. In this regard, Examiner submits that the elements from the specification should not be read into the interpretation of the claims. Therefore, the claims as currently amended do not overcome the pending 101 rejection, despite the depth of the specification. As noted in the previous interview summary, Examiner suggested adding additional details as supported in the specification regarding how the method steps are performed, such as including claim language to explicitly describe how the task to be performed is identified or how the one entity capable of enabling perform of the task is identified (i.e. amending the claim language to teach of the automatic task inference of paragraph [0036]). Regarding Applicant’s arguments that the newly amended claim 1 integrates the purported abstract idea into a practical application, Examiner respectfully disagrees. First, Examiner submits that the limitations drawn to formatting and outputting for presentation may incorporate the notion of an improved interface (as per Example 37/42 described in the arguments), but currently do not explicitly describe those patentable features as claimed. The claims, as currently written, describe a generic display. As addressed previously, Examiner suggests incorporating more specific detail to illustrate how the method steps are to be performed in a more technical manner (e.g., how the task is inferred, paragraph [0036]). Finally, Examiner reiterates that simply adding on the term of “automatically” does not overcome the deficiencies as the claim limitations are still drawn to merely using the claimed processors to accomplish the overall goal of task assistance. Regarding Applicant’s arguments regarding the invention that a method of task assistance executes at a computing device having one or more processors and memory, Examiner respectfully disagrees that these known additional elements do not integrate the judicial exception into a practical application. Regarding this element, Examiner submits that if we interpret the automation of the steps as claimed as an additional element, it is noted that there are no specific details of how the automation of the specific steps are being accomplished. Therefore, in this regard, the newly added concept of automatically performing the listed method steps is interpreted as mere instructions to apply an exception, and/or as merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f), as it is claimed only as the idea of a solution or outcome and fails to recite details of how a solution to a problem is accomplished. Examiner additionally submits that the specific features of the invention described by Applicant do not amount to significantly more than the abstract idea itself. For example, the features of obtaining an identification of a task and identifying one entity capable of enabling performance of the task are simply drawn to analyzing the abstract data to perform a subsequent action and may be construed as concepts that are performed in the human mind, including an observation, evaluation, judgement, or opinion. Additionally, the features of formatting the identified information for performing the task for presentation and outputting for presentation, the formatted identified information (as currently claimed) are drawn to making decisions regarding the analysed data and may be construed as commercial interactions, including advertising, marketing, or sales activities or behaviors or business relations, or as managing personal behavior or relationships or interactions between people, including social activities, teaching, and following rules or instructions. These features or concepts all may be construed as falling under certain groupings of abstract ideas and do not recite additional elements that integrate the judicial exception into a practical application nor do they recite additional elements that amount to significantly more than the judicial exception. Therefore, in view of this interpretation, Examiner submits that the unique features and advancements of Applicant’s inventions are in still interpreted as nonstatutory under 101. For at least these reasons, these claim limitations, either individually or as an ordered combination, do not amount to significantly more than the abstract idea itself and do not transform the nature of the claim from the judicial exception into a patent-eligible application. Although the invention teaches of a device and computer-readable storage medium, there is also no physical transformation or improvement to the technology that would be more than the idea of itself. As described previously, in the current language, the claim is merely implemented or executed using a processor and therefore does not improve upon the technology or functionality of the computer beyond the abstract idea. In other words, Examiner submits that the inventive concept, i.e. an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept (of an abstract idea itself)”, is unable to be determined within the limitations as claimed.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-13, 15-18, and 20-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11,367,052 (child case Application 16/536,687) and over claims 1-4, 6-14, and 16-21 of U.S. Patent No. 10,423,932 (child case Application 14/473,564), see table below. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are merely a broader version of the claims of the parent patent application(s). Regarding claims 1, 13, and 18 of the instant application, they are taught by the cited claims of the parent application as shown in the table, where the dependent claims further claim the specificities that are absent from the independent claims. The other dependent claims, as shown in the table below, are similarly an obvious variant of the corresponding claims of the parent patent application(s). Examiner submits that while the parent cases do not explicitly teach of the limitation drawn to formatting the information as a hyperlink for presentation via a user interface (as amended in the Claims dated 11/4/25), Examiner submits that the parent case U.S. Patent No. 10,423,932 (Application 14/473,564) teaches of the identified information for performing the task as a telephone number, uniform resource locator, or mailing address. In this regard, the teachings of displaying the identified information as a uniform resource locator include displaying the relevant identifying information as a related web address, which is analogous to the teachings of the instant case drawn to displaying information as a hyperlink. Furthermore, Examiner notes that the use of hyperlinks in presenting information to a user is old and well known, as evidenced by the previously cited art of Gupta et al. (US 2009/0106681 A1). Gupta teaches of entity lists that include hyperlinks to active web locations or business listing elements, etc. that facilitate presentation of pertinent information to the user and/or provide contact information such as business listings page or business-referral page (see Gupta, pg. 3, [0036, 0046]). Examiner submits that in this regard, Applicant claims a combination that only unites old elements with no change in the respective functions of those old elements, and the combination of those elements yields predictable results; absent evidence that the modifications necessary to effect the combination of elements is uniquely challenging or difficult for one of ordinary skill in the art, the claim is unpatentable as obvious under 35 U.S.C. 103(a). Ex Parte Smith, 83 USPQ.2d at 1518-19 (BPAI, 2007) (citing KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1396).
Claim
Child Case
Instant Case 17/750,516
Claim
Parent Case
U.S. Patent No. 11,367,052
Application 16/536,687
Claim
Parent Case
U.S. Patent No. 10,423,932
Application 14/473,564
1, 13, 18
A method of providing task assistance in association with an electronic messaging application, the method comprising:
automatically identifying, by one or more processors of a computing device associated with the electronic messaging application, a task to be performed by a user of the electronic messaging application based on one or more messages of the electronic messaging application;
responsive to automatically identifying the task to be performed by the user based on the one or more messages, automatically identifying, by the one or more processors, at least one entity capable of enabling performance of the task based on a description of the task and geographical information about the user; and
responsive to automatically identifying the at least one entity capable of performance of the task: automatically identifying, by the one or more processors, information for performing the task in association with the at least one entity;
automatically formatting, by one or more processors, the information as a hyperlink for presentation via a user interface associated with the electronic messaging application; and
automatically outputting, by one or more processors for presentation to the user via the user interface, the formatted in association with the at least one entity.
1+3+4, 15+17, 20+21
A method of providing task assistance, comprising: presenting a user interface for an electronic messaging application, the electronic messaging application including a plurality of messages;
identifying, by one or more processors of a computing device based on one or more of the plurality of messages of the messaging application, a task to be performed by a user;
in response to the identifying, the one or more processors automatically performing the following: identifying a set of entities associated with the task based on a description of the task and information about the user;
selecting one of the set of entities associated with the task;
based on selection of the entity from the set, identifying information for performing the task;
formatting the identified information for performing the task for presentation via the user interface; and
outputting, for presentation via the user interface, the task, the selected entity and the identified information for performing the task.
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The method of claim 1, wherein selecting one of the set of entities includes evaluating whether each entity of the set of entities is capable of enabling performance of the task.
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The method of claim 3, wherein selecting one of the set of entities further includes comparing geographical locations for each of the entitles in the set to geographical information associated with a location of the user.
1+3+8, 16+17, 19+20+21
A method of providing task assistance, comprising: at a computing device having one or more processors and memory storing one or more programs configured for execution by the one or more processors:
displaying a user interface for an email application, including a plurality of email messages;
identifying, within the plurality of email messages, a first email message that includes a description of a task to be performed by a user;
in response to the identifying, automatically performing the following: identifying a business entity associated with the task using one or more words appearing in the description of the task and geographic information about the user;
identifying information for performing the task with the identified business entity;
formatting the identified information for performing the task with the identified business entity;
determining whether the identified business entity is presently available to service the task according to a schedule of opening and closing times for the business entity, for each day of the week;
when the business entity is available to service the task, displaying, in the first email message, an identification of the business entity and the identified information for performing the task with the business entity; and when the business entity is not available to service the task, refraining from displaying, in the first email message, the identification of the business entity and the identified information for performing the task with the business entity.
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The method of claim 1, wherein the task is cancellation of a subscription or recurring service and wherein the identified information for performing the task is a telephone number, uniform resource locator, or mailing address used by the business entity to service requests to cancel a subscription or requests to cancel a recurring service.
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The method of claim 1, wherein the identifying the business entity associated with the task comprises retrieving non-transient stored geographical information about the user.
2, 14, 19
CANCELED
3, 15, 20
The method of claim 1, wherein automatically identifying the at least one entity includes determining that one or more entities of a set of entities is capable of enabling performance of the task, the at least one entity including at least one of the one or more entities of the set of entities.
3, 17, 21
The method of claim 1, wherein selecting one of the set of entities includes evaluating whether each entity of the set of entities is capable of enabling performance of the task.
1, 16, 19
identifying a business entity associated with the task;
determining whether the identified business entity is presently available to service the task according to a schedule of opening and closing times for the business entity, for each day of the week;
4, 16
The method of claim 3, wherein automatically identifying the at least one entity further includes comparing respective geographical locations for the one or more entities determined to be capable of enabling performance of the task to the geographical information about the user.
4, 18
The method of claim 3, wherein selecting one of the set of entities further includes comparing geographical locations for each of the entities in the set to geographical information associated with a location of the user.
8+10
The method of claim 1, wherein the identifying the business entity associated with the task comprises retrieving non-transient stored geographical information about the user.
------------------------------------------
The method of claim 1, wherein the business entity is part of a larger organization and identifying the business entity associated with the task comprises resolving which business entity in the larger organization pertains to the task based upon the geographical information about the user.
5, 17
The method of claim 4, wherein automatically identifying the at least one entity further includes selecting the at least one entity from the one or more entities determined to be capable of enabling performance of the task based at least on comparing the respective geographical locations for the one or more entities determined to be capable of enabling performance of the task to the geographical information about the user.
3+4, 17+18, 21
The method of claim 1, wherein selecting one of the set of entities includes evaluating whether each entity of the set of entities is capable of enabling performance of the task.
--------------------------------------
The method of claim 3, wherein selecting one of the set of entities further includes comparing geographical locations for each of the entities in the set to geographical information associated with a location of the user.
1, 16, 19
identifying a business entity associated with the task;
determining whether the identified business entity is presently available to service the task according to a schedule of opening and closing times for the business entity, for each day of the week;
6
The method of claim 3, wherein the set of entities includes one or more of business entities or government entities.
6
The method of claim 1, wherein the set of entities includes one or more of business entities and government entities.
2
The method of claim 1, wherein the business entity is a government entity.
7
The method of claim 1, wherein:
the task is one of obtaining a government license, renewing the government license, obtaining a government permit, or amending the government permit, and
the at least one entity is a government entity associated with the one of obtaining the government license, renewing the government license, obtaining the government permit, or amending the government permit.
7
The method of claim 1, wherein the business entity is a government entity and the task is obtaining or renewing a government license or obtaining or amending a government permit.
8
The method of claim 1, wherein:
the task is one of a service request, a cancellation request, or a renewal request, and the at least one entity is a business entity associated with the one of the service request, the cancellation request, or the renewal request.
13
(original) The method of claim 1, wherein the task is a service request, a cancellation request, or a renewal request.
3, 17, 20
The method of claim 1, wherein the task is cancellation of a subscription or recurring service and wherein the identified information for performing the task is a telephone number, uniform resource locator, or mailing address used by the business entity to service requests to cancel a subscription or requests to cancel a recurring service.
9
The method of claim 1, wherein automatically outputting the formatted information for presentation via the user interface includes adding the formatted information to a task item in a message list for presentation via the user interface.
9
The method of claim 1, wherein formatting the identified information for performing the task for presentation via the user interface includes adding the identified information to a task item in a message list.
10
The method of claim 1, wherein automatically identifying the at least one entity includes identifying a time of day at which or an amount of time in which the at least one entity is capable of enabling performance of the task.
10, 17
The method of claim 1, wherein selecting one of the set of entities includes identifying a time of day or an amount of time in which a given entity of the set is able to assist in performing the task.
11
The method of claim 10, wherein identifying the time of day or the amount of time includes evaluating at least one of an opening time associated with the at least one entity, a closing time associated with the at least one entity, or a time of day when the at least one entity will stop receiving requests associated with performance of the task.
11
The method of claim 10, wherein identifying the time of day or the amount of time includes evaluating at least one of an opening time, a closing time, or a time of day when the given entity will stop receiving requests to assist in performing the task
6
The method of claim 1, wherein the identified information for performing the task comprises a time of day when the business entity will stop receiving requests to perform the task.
12
The method of claim 1, wherein the electronic messaging application is either an email application or an instant messaging application.
14
The method of claim 1, wherein the electronic messaging application is either an email application or an instant messaging application.
21
The method of claim 1, wherein the hyperlink includes at least one uniform resource locator (URL) associated with the at least one entry.
3+21, 17, 20
The method of claim 1, wherein the task is cancellation of a subscription or recurring service and wherein the identified information for performing the task is a telephone number, uniform resource locator, or mailing address used by the business entity to service requests to cancel a subscription or requests to cancel a recurring service.
-------------------------------------
The method of claim 1, wherein displaying the identified information for performing the task with the business entity comprises displaying a uniform resource locator (URL) for one or more resources of the business entity.
22
The method of claim 21, wherein the URL is further associated with enabling performance of the task.
3, 17, 20
The method of claim 1, wherein the task is cancellation of a subscription or recurring service and wherein the identified information for performing the task is a telephone number, uniform resource locator, or mailing address used by the business entity to service requests to cancel a subscription or requests to cancel a recurring service.
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, 3-13, 15-18, and 20-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more and are merely requiring generic computer implementation, which fails to transform that abstract idea into a patent-eligible invention. In view of the two-step test regarding determining subject matter eligibility, Examiner submits that the independent claim(s) 1, 13, and 18 recite(s) a method, a computing device, and a computer readable storage medium for providing task assistance. Therefore, the claims as a whole are considered as being in a statutory category under Step 1 of the test.
Regarding Step 2A, prong 1, Examiner submits that the claims as a whole are directed to a judicially recognized exception that is an abstract idea. The independent claim(s) 1, 13, and 18 is/are directed to a method, a computing device, and a computer readable storage medium for providing task assistance, by specifically “automatically identifying…a task to be performed by a user…”, “response to automatically identifying the task to be performed by the user…automatically identifying…at least one entity capable of enabling performance of the task…”, and “responsive to automatically identifying the at least one entity capable of enabling performance of the task: automatically identifying…information for performing the task…”, “automatically formatting…the information as a hyperlink…”, and “automatically outputting…the formatted information in association with the at least one entity”. Although these claims fall within one of the four statutory categories of invention, they are still considered to be directed to the judicially recognized exception of an abstract idea. The limitations of at least “automatically identifying… a task to be performed…”, “…automatically identifying…at least one entity capable of enabling performance of the task…”, and “automatically outputting…the formatted information for in association with the at least one entity”, as drafted are drawn to a process that, under its broadest reasonable interpretation, falls within the abstract idea grouping of Certain Methods of Organizing Human Activity (i.e. commercial or legal interactions including agreements in the form of contracts; legal obligations; advertising, marketing or sales activity or behaviors; business relations; or managing personal behavior or relationships or interactions between people including social activities, teaching, and following rules or instructions). That is, the claims are directed to the concept of providing task assistance. If a claim limitation/invention, under its broadest reasonable interpretation, can be construed as the managing of personal behavior or relationships or interactions between people, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. In particular, the steps together are accomplishing the providing of task assistance, which is related to the managing of personal behavior or relationships or interactions between people. Accordingly, the claims recite an abstract idea.
Step 2A, prong 2 is drawn to determining if the claim recites additional elements that integrate the judicial exception into a practical application. In this regard, Examiner submits that the limitation drawn to automatically performing the listed method steps is an additional element, as claimed in a method, a computing device, and a computer readable storage medium. To be considered statutory, the claims require an additional element or a combination of additional elements in the claim to 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 exception. Examiner submits that simply adding on the term of “automatically” also does not overcome the deficiencies as the claim limitations are still drawn to merely using the claimed processors to accomplish the overall goal of task assistance. Regarding this element, Examiner submits that if we interpret the automation of the steps as claimed as an additional element, it is noted that there are no specific details of how the automation of the specific steps are being accomplished. Therefore, in this regard, the newly added concept of automatically performing the listed method steps is interpreted as mere instructions to apply an exception, and/or as merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f), as it is claimed only as the idea of a solution or outcome and fails to recite details of how a solution to a problem is accomplished. In further detail, the additional elements drawn to the memory, processor, and computer readable storage medium in the claims are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of computing or processing) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Additionally, the additional elements the memory, processor, and computer readable storage medium, are drawn to insignificant extra-solution activity since it is an insignificant application as described in MPEP 2106.05(g). In particular, Examiner submits that the memory, processor, and computer readable storage medium as claimed, for example, are sufficiently well-known in the manner claimed (see specification that describes that the claimed invention is merely implemented on a client device for accessing a messaging application (spec, [0024]). See MPEP 2106.07(a)III. See Bilski v. Kappos, 561 U.S. 593, 611-12, 95 USPQ2d 1001, 1010 (2010) (well-known random analysis techniques to establish the inputs of an equation were token extra-solution activity); Flook, 437 U.S. at 593-95, 198 USPQ at 197 (a formula would not be patentable by only indicating that is could be usefully applied to existing surveying techniques); Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328-29, 121 USPQ2d 1928, 1937 (Fed. Cir. 2017) (the use of a well-known XML tag to form an index was deemed token extra-solution activity). Because this overlaps with the well-understood, routine, conventional consideration, it should not be considered in the Step 2A Prong Two extra-solution activity analysis. Accordingly, the claims recite an abstract idea.
Regarding Step 2B drawn to determining if the claim recites additional elements amounting to significantly more than the judicial exception, Examiner submits that while the claims include the additional elements drawn to the memory, processor, and computer readable storage medium as claimed, they in fact do not include any recitation of additional elements that would constitute anything significantly more. In this regard, this additional element of the memory, processor, and computer readable storage medium as claimed may be construed as post-solution activity, that is an element that is not integrated into the claim as a whole, and furthermore is not considered to be significant (i.e. it imposes meaningful limits on the claim such that it is not nominally or tangentially related to the invention). See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16, 112 USPQ2d 1750, 1755 (Fed. Cir. 2014) (restricting public access to media was found to be insignificant extra-solution activity); Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1242, 120 USPQ2d 1844, 1855 (Fed. Cir. 2016) (in patents regarding electronic menus, features related to types of ordering were found to be insignificant extra-solution activity). In view of the recent Berkheimer decision and the Step 2B analysis of the above rejection, Examiner is reiterating the fact that the systems and methods for task assistance, specifically with the memory, processor, and computer readable storage medium, as claimed is a well-understood, routine, conventional activity and can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry. Said conclusion is made based upon a factual determination supported by the specification, which states that the claimed invention is merely implemented on a client device for accessing a messaging application (see at least specification, paragraph [0024]).
As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). In Flook, the Court reasoned that "[t]he notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance. A competent draftsman could attach some form of post-solution activity to almost any mathematical formula". 437 U.S. at 590; 198 USPQ at 197; Id. (holding that step of adjusting an alarm limit variable to a figure computed according to a mathematical formula was "post-solution activity"). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 79, 101 USPQ2d 1961, 1968 (2012) (additional element of measuring metabolites of a drug administered to a patient was insignificant extra-solution activity). Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea and amount(s) to no more than: (i) mere instructions to implement the idea on a computer, and/or (ii) recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. Additionally, these claim limitations, either individually or as an ordered combination, do not amount to significantly more than the abstract idea itself and do not transform the nature of the claim from the judicial exception into a patent-eligible application. The claims are not patent eligible.
Regarding claims 3-12, 15-17, and 20-22, the dependent claims do not include any additional elements that constitute statutory matter. The dependent claims are directed to the same abstract idea as recited in the independent claims and have been found to either recite additional details that are part of the abstract idea itself (when analyzed under Step 2A Prong One), or include additional details that, when analyzed under Step 2A Prong Two and Step 2B, recite additional elements that fail to integrate the abstract idea into a practical application (Step 2A Prong Two) and fail to add significantly more to the abstract idea (Step 2B). Specifically, claims 3-4, 15-16, and 20 describe additional detail regarding identifying the at least one entity. Additionally, claims 5 and 17 describe additional detail regarding selecting the at least one entity. The ordered combination of elements in the dependent claims (including the limitations inherited from the parent claims) add nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation. Accordingly, the subject matter encompassed by the dependent claims fails to amount to significantly more than the abstract idea itself. The dependent claims also recite steps that together with the independent claims are accomplishing the overall process of task assistance, which falls within the abstract idea grouping of Certain Methods of Organizing Human Activity (i.e. commercial or legal interactions including agreements in the form of contracts; legal obligations; advertising, marketing or sales activity or behaviors; business relations; or managing personal behavior or relationships or interactions between people including social activities, teaching, and following rules or instructions). In other words, Examiner submits that the inventive concept, i.e. an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept (of an abstract idea itself)”, is unable to be determined within the limitations as claimed. Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Allowable Subject Matter
Claims 1, 3-13, 15-18, and 20-22 are to be allowed, upon the resolution of the pending rejections under Double Patenting and 35 USC § 101.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 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 ASHLEY Y YOUNG whose telephone number is (571)270-5294. The examiner can normally be reached Mondays, Tuesdays, and Thursdays, 9:00a-3:00p, EST.
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, Beth Boswell can be reached at (571) 272-6737. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ASHLEY Y YOUNG/Examiner, Art Unit 3625
/BETH V BOSWELL/Supervisory Patent Examiner, Art Unit 3625