DETAILED ACTION
Status of Claims
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/7/26 and 5/14/26 has been entered. Claims 1, 4-5, 9, 13, and 16-18 have been amended. Claims 2, 14, 19, and 21-22 have been canceled. Claims 23-24 have been added. Claims 1, 3-13, 15-18, 20, and 23-24 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The previously pending rejection under double patenting is withdrawn in response to Applicant's claim amendments.
The previously pending rejection under 35 U.S.C. § 101 is not withdrawn in response to Applicant's claim amendments.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. The additional claim limitation drawn to at least automatically retrieving geographical information about the computing device does not overcome the deficiencies as previously described and is therefore rejected under the same rationale (see below). Additionally, 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 at least the execution of the method of task assistance at a computing device having one or more processors and memory and particular details regarding how an entity is deemed to be associated with a task. 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 still 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 reiterates 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] or what interface is specifically utilized to accomplish specific method steps). 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.
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, 20, and 23-24 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…”, “automatically retrieving…geographical information about the computing device…”, “responsive 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, 20, and 23-24, 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, 20, and 23-24 are to be allowed, upon the resolution of the pending rejections under 35 USC § 101.
Conclusion
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.
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/ASHLEY Y YOUNG/Examiner, Art Unit 3625 /BETH V BOSWELL/Supervisory Patent Examiner, Art Unit 3625
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