DETAILED ACTION
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 .
Status of Claims
Claims 1, 11, and 18 have been amended in the response filed 06/16/2026.
Claims 1-28 are pending.
Claims 1-28 are rejected.
Claims Overcoming Prior Art
Claims 1-28 overcome the prior art as set forth in detail on pages 12-15 of the Office Action dated November 5, 2025.
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 1-28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claims recite an abstract idea. This judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
The steps for determining eligibility under 35 U.S.C. 101 can be found in the MPEP § 2106.03-2106.05.
Under Step 1, the claims are directed to statutory categories. Specifically, the system, as claimed in claims 1-10 and 21-28, is directed to a machine. Additionally, the computer-implemented method, as claimed in claims 11-17, is directed to a process. Furthermore, the non-transitory computer-readable storage medium, as claimed in claims 18-20, is directed to an article of manufacture.
While the claims fall within statutory categories, under Step 2A, Prong 1, the claimed invention recites the abstract idea of recommending services. Specifically, representative claim 1 recites the abstract idea of:
receiving, from the remote technician, information indicative of user selections of the first selectable item and the second selectable item;
in response to the information indicative of user selections, extract sale information associated with the service item, the customization, and at least one of a customer profile associated with the service request and a technician profile associated with the service request;
analyzing data to determine availability of historical sale information, external data, technician insights, and volatile data;
generating a variable data set of available information relevant to the service request, wherein the variable dataset comprises at least one of: historical sale information, external data, technician insights, and volatile data;
generate customer insights based on the sale information and the variable data set, and to generate a set of recommended service items based on the service request and customer insights;
updating to generate an estimate for the service request and a second set of selectable items comprising the set of one or more recommended service items,
wherein in response to a user selection of a selectable item from the second set of selectable items, the estimate for the service request is updated to include a service item associated with the selectable item from the second set; and
wherein the user selection from the second set of selectable items triggers to generate another set of recommended service items linked with the service item associated with the selectable item from the second set; and
in response to the generation, rearranges to present the another set of recommended service items as selectable items adjacent to the estimate, wherein each selectable item of the another set is selectable to add the associated recommended service item to the estimate and trigger to generation a further set of recommended service items linked with the added recommended service item.
Under Step 2A, Prong 1, it is necessary to evaluate whether the claim recites a judicial exception by referring to subject matter groupings articulated in the guidance. When considering MPEP §2106.04(a), the claims recite an abstract idea. For example, representative claim 1 recites the abstract idea of recommending services, as noted above. This concept is considered to be a certain method of organizing human activity. Certain methods of organizing human activity are defined in the MPEP as including “fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).” MPEP §2106.04(a)(2) subsection II. In this case, the abstract idea recited in representative claim 1 is a certain method of organizing human activity because analyzing information to provide recommended service items and providing additional recommended service items are marketing and sales activities. Thus, representative claim 1 recites an abstract idea.
The recited limitations of representative claim 1 also recite an abstract idea because they are considered to be mental processes. As described in the MPEP, mental processes are “concepts performed in the human mind (including an observation, evaluation, judgment, opinion)”. MPEP §2106.04(a)(2) subsection III. In this case, receiving and extracting information are types of observation. Additionally, analyzing and updating data are types of evaluations. Furthermore generating recommendations are types of judgement. Thus, representative claim 1 recites an abstract idea.
Under Step 2A, Prong 2, if it is determined that the claims recite a judicial exception, it is then necessary to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of that exception. See MPEP §2106.04(d). In this case, representative claim 1 includes additional elements such as a system for generating price book service item recommendations, comprising: one or more processors; and a computer-readable medium comprising instructions stored therein, which when executed by the processors, cause the processors to perform operations; populating a user interface with a first plurality of selections related to a service request, wherein the first plurality of selections include a first selectable item indicative of a service item, and a second selectable item indicative of a customization of the service request, and wherein the user interface is provided on a remote technician device; receiving, from the remote technician device; accessing a first remote database; data stored at a second remote database; applying at least one machine learning module; the selectable icon triggers the machine learning model; the user interface automatically rearranges to present on the user interface; and trigger the machine learning model to generate.
Although reciting additional elements, the additional elements do not integrate the abstract idea into a practical application because they amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a computer as a tool to perform the abstract idea. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. Similar to the limitations of Alice, representative claim 1 merely recites a commonplace business method (i.e., recommending services) being applied on a general purpose computer. See MPEP §§2106.04(d) and 2106.05(f). Thus, the claimed additional elements are merely generic elements and the implementation of the elements amounts to no more than an instruction to apply the abstract idea using a generic computer. Since the additional elements merely include instructions to implement the abstract idea on a generic computer or merely use a generic computer as a tool to perform an abstract idea, the abstract idea has not been integrated into a practical application. As such, representative claim 1 is directed to an abstract idea.
Under Step 2B, if it is determined that the claims recite a judicial exception that is not integrated into a practical application of that exception, it is then necessary to evaluate the additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). See MPEP §2106.05.
In this case, as noted above, the additional elements recited in independent claim 1 are recited and described in a generic manner merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea.
Even when considered as an ordered combination, the additional elements of representative claim 1 do not add anything that is not already present when they considered individually. In Alice, the court considered the additional elements “as an ordered combination,” and determined that “the computer components ... ‘ad[d] nothing ... that is not already present when the steps are considered separately’ and simply recite intermediated settlement as performed by a generic computer.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1983-84 (2014). (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Also see MPEP §2106.05(f). Similarly, when viewed as a whole, representative claim 1 simply conveys the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B, there are no meaningful limitations in representative claim 1 that transforms the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
As such, representative claim 1 is ineligible.
Dependent claims 2-10 and 21-28 do not aid in the eligibility of independent claim 1. For example, claims 2, 10, 21, and 28 merely further define the abstract limitations of claim 1. Also, claims 3-9, 22-25, and 27-28 merely provide further embellishments of the abstract limitations recited in independent claim 1.
Additionally, it is noted that claim 2 includes further additional elements of applying a neural network; claim 9 includes further additional elements of wherein the user interface is at least one of: a mobile computing device, a smartphone, a tablet, and an interactive display; claim 21 includes further additional elements of at least one remote computing device, and applying a first machine learning module; and claim 26 includes further additional elements of applying a second machine learning module. However, these additional elements do not integrate the abstract idea into a practical application because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea. These additional elements are merely generic elements and are likewise described in a generic manner in Applicant’s specification. Additionally, the additional elements do not amount to significantly more because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea.
Furthermore, it is noted that claims 3-8, 10, 22-25, and 27-28 do not include further additional elements. Therefore, the claims do not integrate the abstract idea into a practical application because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea. The claims also do not amount to significantly more than the abstract idea because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea.
Thus, dependent claims 2-10 and 21-28 are also ineligible.
Lastly, the analysis above applies to all statutory categories of invention. Although literally invoking a process and article of manufacture, respectively, claims 11-17 and 18-20 remain only broadly and generally defined, with the claimed functionality paralleling that of claims 1-7, 9-10; and 1-4, respectively. It is noted that claim 11 includes further additional elements of a computer. However, these additional elements do not integrate the abstract idea into a practical application because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea. These additional elements are merely generic elements and are likewise described in a generic manner in Applicant’s specification. Additionally, the additional elements do not amount to significantly more because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea. As such, claims 11-17 and 18-20 are rejected for at least similar rationale as discussed above.
Response to Arguments
With respect to the rejections under 35 U.S.C. 101, Applicant’s arguments have been considered but are not persuasive.
Applicant argues the amended claims “do not recite a mental process…consistent with Example 37, Claim 2” (Remarks pages 9-10). The examiner disagrees. Initially, it is noted that the claims also recite Certain Methods of Organizing Human Activity. Furthermore, the subject matter eligibility examples are hypothetical and only intended to be illustrative of the claim analysis under the MPEP. These examples are to be interpreted based on the fact patterns set forth in each example, as other fact patterns may have different eligibility outcomes. Example 37, Claim 2 did not recite a mental process because the claimed step of determining the amount of use of each icon by tracking how much memory has been allocated to each application associated with each icon over a predetermined period of time is not practically performed in the human mind, at least because it requires a processor accessing computer memory indicative of application usage. The present claims provide no similar technical determination. With respect to Applicant’s arguments regarding the machine learning, it is noted that the machine learning model is analyzed as an additional element and thus is not part of the abstract idea analysis. Furthermore, the abstract idea of in response to the generation, rearranging to present the another set of recommended service items as selectable items adjacent to the estimate, wherein each selectable item of the another set is selectable to add the associated recommended service item to the estimate and trigger to generation a further set of recommended service items linked with the added recommended service item is not similar to the determination step of Example 37, Claim 2 and provides no similar determination of the amount of use of each icon by tracking how much memory has been allocated to each application associated with each icon over a predetermined period of time. In this case, the claims recite a mental process because the claim recites rearranging information based on relevance. Absent the computing elements, a human can practically rearrange information for display based on relevance with or without a physical aid. Thus, the computing elements recited are merely used to perform the abstract idea in a computer environment. Thus, the claims are not analogous to Example 37, Claim 2, and the claims recite a mental process.
Applicant argues the claims are integrated into a practical application because the claims “recit[e] a specific improvement to the functioning of the user interface…[and] are now directly analogous to Example 37” (Remarks pages 10-12). The examiner disagrees. The subject matter eligibility examples are hypothetical and only intended to be illustrative of the claim analysis under the MPEP. These examples are to be interpreted based on the fact patterns set forth in each example, as other fact patterns may have different eligibility outcomes. Example 37 provided a technical improvement to the technical problem of users only being able to manually create non-traditional arrangements of icons, by providing a method for rearranging icons on a graphical user interface (GUI), wherein the method moves the most used icons to a position on the GUI, specifically, closest to the ‘start’ icon of the computer system, based on a determined amount of use. The present claims provide no analogous technical solution. While the examiner acknowledges that an interface is generated and items are rearranged, the claims provide no similar automatic arrangement of icons in response to an automatic determination by a processor that tracks the number of times each icon is selected or how much memory has been allocated to the individual processes associated with each icon over a period of time. Furthermore, unlike Example 37, Applicant’s specification provides no explanation of an improvement to the functioning of a computer or other technology. While the Examiner agrees that the specification addresses shortcomings in the field of recommendations, the discussions present in the specification do not go as far as to address shortcomings in a technical field of user interfaces. Rather, the specification focuses on problems related to the business aspects of providing recommendations rather than problems related to the technical field. Accordingly, there is no evidence, short of attorney argument, that a technological improvement is provided. With respect to Applicant’s comments regarding the interview (remarks page 11), it is noted that no formal agreements regarding 101 eligibility were reached in the interview. Thus, the claims are not analogous to Example 37 and are not integrated into a practical application.
Applicant argues the claims provide significantly more because “the claims are tailored to a specific technical solution” (Remarks page 12). The examiner disagrees. The MPEP sets forth that if a claim has been determined to be directed to a judicial exception under revised Step 2A, examiners should then evaluate the additional elements individually and in combination under Step 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). In this case, Applicant's claims merely recite steps of a method with generic computer components being recited in a generic manner. While additional elements are included within the claims, they are claimed in a generic manner and merely perform generic functions. The additional elements are merely peripherally incorporated in order to implement the abstract idea. Put another way, these additional elements are merely used to apply the abstract idea of providing recommendations in a technological environment without effectuating any improvement or change to the functioning of the additional elements or other technology. Applicant’s disclosure does not articulate or suggest how these additional elements function, individually or in combination, in any manner other than using generic functionality nor does the disclosure articulate how the elements provide a technical improvement. Accordingly, the additional elements do not amount to significantly more because they merely amount to using additional elements as a tool to perform the abstract idea. Thus, the claims do not provide significantly more.
Applicant argues the claims provide significantly more because the claims “do not preempt all ways of recommending services or updating an interface” (Remarks page 12). The examiner disagrees. The examiner notes that questions of preemption are inherent in the two-part framework from Alice Corp. and Mayo (incorporated in the MPEP 2106), and are resolved by using this framework to distinguish between preemptive claims, and “those that integrate the building blocks into something more...the latter pose no comparable risk of pre-emption, and therefore remain eligible.” It should be kept in mind, however, that while a preemptive claim may be ineligible, the absence of complete preemption does not guarantee that a claim is eligible (see MPEP 2106.04). Therefore, while preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. Where a patent's claims are deemed only to disclose patent ineligible subject matter under the Alice/Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot (see MPEP 2106.04).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Previously cited Kumar (US 20200219163 A1) was used to understand other methods for recommending services based on consumer needs and available service providers.
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 ANNA MAE MITROS whose telephone number is (571)272-3969. The examiner can normally be reached Monday-Friday from 9:30-6.
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, Marissa Thein can be reached at 571-272-6764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANNA MAE MITROS/Examiner, Art Unit 3689
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