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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on February 5, 2026 has been entered.
Status of Claims
Claims 1, 11, and 18 have been amended in the response filed February 5, 2026.
Claims 1-28 are pending.
Claims 1-28 are rejected.
Detailed rejections begin on page 3.
Response to Arguments begins on page 11.
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;
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 one or more recommended service items, wherein in response to a user selection from the second set, the estimate for the service request is updated to include a service item associated with the second set; and
wherein, in response to the user selection from the second set, generates another set of recommended service items linked with the service item associated with the selection from the second set; and
upon generation, displaying the updated estimate linked with the another set of recommended service items.
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 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 and updating to generate an estimate for the service request and a second set of one or more recommended service items, wherein in response to a user selection from the second set, the estimate for the service request is updated to include a service item associated with the second set 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, from the remote technician, information indicative of user selections and 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 are types of observation. Additionally, 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; and updating to generate an estimate for the service request and a second set of one or more recommended service items, wherein in response to a user selection from the second set, the estimate for the service request is updated to include a service item associated with the second set are types of evaluation. Furthermore wherein, in response to the user selection from the second set, generates another set of recommended service items linked with the service item associated with the selection from the second set; and upon generation, displaying the updated estimate linked with the another set of recommended service items 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 icon indicative of a service item, and a second selectable icon indicative of a customization of the service request, and wherein the user interface is provided on receiving, from a user interface of a remote technician device; accessing a first remote database; data stored at a second remote database; applying at least one machine learning module; and a display associated with the user interface, wherein the user interface is dynamically updated automatically.
Although reciting additional elements, the additional elements do not integrate the abstract idea into a practical application because they merely 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 merely 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. 112(a), Applicant’s amendments render the rejections moot. Therefore, the rejections are hereby withdrawn.
With respect to the rejections under 35 U.S.C. 101, Applicant’s arguments have been considered but are not persuasive. However, in view of the amendments, new grounds of rejection have been applied. These new grounds of rejection have been necessitated by Applicant’s amendments.
With respect to pages 10-11 of the Remarks, Applicant argues “[s]imilar to Example 37, the present claims recite a specific, technical solution to a computer-centric problem: how to present dynamically changing, contextually relevant icons in a way that improves the efficiency and usability of the user interface for technicians and users.” However, Examiner respectfully disagrees because the claims do not recite a specific technological improvement to the interface arrangement.
Under Step 1 of the eligibility analysis, Example 37 recites statutory subject matter, and under Step 2A Prong One, the claim recites an abstract idea because “other than reciting ‘by a processor,’ nothing in the claim element precludes the step from practically being performed in the mind.” However, Example 37 is determined to be patent eligible under Step 2A Prong Two because the additional elements recite a specific manner of automatically displaying icons to the user based on usage which provides a specific improvement over prior systems. Specifically, the computer receives an indication to organize the icons, the processor determines the timed use of each icon, and then the system automatically moves the most used icons to a position on the GUI closest to the start icon of the computer system based on the determined amount of use. As reflected in the background, this improves user interfaces because it allows for such non-traditional arrangements of icons to be performed automatically, and a user can easily find their most used icons because of the arrangement.
In contrast to Example 37, the instant invention is directed to displaying services to a user by applying a mental and commercial process to a generic computing environment. Unlike Example 37, the instant invention does not automatically move the icons to a position in the user interface based on the location of another icon in the user interface. Instead, the instant invention focuses on presenting icons to a user based on relevance, and thus, unlike Example 37, does not improve the layout or functioning of the user interface because the computer is not arranging the icons in reference to another object in the user interface to improve usability of the interface. Rather, the claimed invention focuses on improving how to display services to a user by applying the process to a computing environment. Therefore, the claimed process of the instant invention is utilizing a generic interface and other generic computer components to improve the a service recommendation process, e.g. commercial and mental process. As such, unlike Example 37, the claims do not recite specific technological improvements to interfaces, and therefore, the rejection is maintained.
With respect to page 11 of the Remarks, Applicant argues “the dynamic, real-time rearrangement of icons is a technical process that cannot be performed in the human mind or with pen and paper. It requires a computing device capable of processing large, volatile data sets and updating the graphical user interface in real- time. This is a specific improvement to the functioning of the computer itself, and not merely the automation of a business process.” However, Examiner respectfully disagrees.
As explained in the MPEP at § 2106.04(a), key concepts were extracted and synthesized in order to identify groupings of abstract ideas. One of those groupings was “mental processes,” which is defined to include limitations that can practically be performed in the human mind or with a physical aid, including, for example, observations, evaluations, judgments, and opinions. The MPEP at § 2106.04(a)(2), section III(c) explains that a claim that requires a computer may still recite a mental process. If the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept, then the claim is considered to recite a mental process. The only claims that do not recite mental processes are claims that “do not contain limitations that can practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitations.” See MPEP at § 2106.04(a)(2), section III(a).
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. While the claims do recite additional elements, the recitation of these additional elements in each independent claim are generic and encompass “existing computers long in use, no new machinery being necessary.” Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972). Applicant’s allegation that the claims require processing large datasets is not supported, and the presence of additional elements does not negate the presence of an abstract idea simply because the additional elements are performing the claimed functions. Rather, the functionality of the additional elements needs to be evaluated to determine whether a human can perform the functions as claimed. In this case, a human can perform the functions of rearranging information as claimed. Therefore, the claims recite a mental process.
Additionally on page 11 of the Remarks, Applicant argues “The claims do not merely use a computer as a tool but instead recite a specific way in which the computer's user interface is improved by automatic, display of an updated estimate linked with another set of recommended service items generated by machine learning in response to a user selection.” However, Examiner respectfully disagrees.
The MPEP at §§ 2106.04(d)1 and 2106.05(a) provides guidance on how to evaluate whether claims recite an improvement in the functioning of a computer or an improvement to other technology or technical field. For example, the MPEP states “the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.” The MPEP further states that “[t]he specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art,” and that, “conversely, if the specification explicitly sets forth an improvement but in a conclusory manner…the examiner should not determine the claim improves technology.” That is, the claim includes the components or steps of the invention that provide the improvement described in the specification.
Looking to the specification is a standard that the courts have employed when analyzing claims as it relates to improvements in technology. For example, in Enfish, the specification provided teaching that the claimed invention achieves benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements. Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). Additionally, in Core Wireless the specification noted deficiencies in prior art interfaces relating to efficient functioning of the computer. Core Wireless Licensing v. LG Elecs. Inc., 880 F.3d 1356 (Fed Cir. 2018). With respect to McRO, the claimed improvement, as confirmed by the originally filed specification, was “…allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters…’” and it was “…the incorporation of the claimed rules, not the use of the computer, that “improved [the] existing technological process” by allowing the automation of further tasks”. McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, (Fed. Cir. 2016).
In this case, Applicant’s specification provides no explanation of an improvement to the functioning of a computer or other technology. Rather, the claims focus “on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool”. Id citing Enfish at 1327, 1336. This is reflected in paragraphs [0022]-[0024] of Applicant’s specification, which describe Applicant’s claimed invention is directed toward solving abstract problems such as recommending services. Although the claims include computer technology, such elements are merely peripherally incorporated in order to implement the abstract idea. This is unlike the improvements recognized by the courts in cases such as Enfish, Core Wireless, and McRO.
Unlike precedential cases, neither the specification nor the claims of the instant invention identify such a specific improvement to computer capabilities. The instant claims are not directed to improving “the existing technological process” but are directed to improving the commercial and mental task of recommending services. The claimed process is not providing any improvement to another technology or technical field as the claimed process is not, for example, improving the processor and/or computer components that operate the system. Rather, the claimed process is utilizing different data while still employing generic processor and/or computer components to improve recommending services, e.g. commercial and mental process. As such, the claims do not recite specific technological improvements.
With respect to pages 11-12 of the Remarks, Applicant argues “the claims recited significantly more than any alleged abstract idea (Alice, Step 2B) the [sic] claims are narrowly tailored to a specific technical solution and do not preempt all ways of recommending services or updating a user interface. The claims require a particular manner of dynamic, automatic display of an updated estimate linked with another set of recommended service items generated by machine learning in response to a user selection. Notably, like Example 37, "the additional elements recite a specific manner of automatically displaying icons to the user" based on the updated estimate which provides a specific improvement over prior systems, as further evidenced by the lack of art rejections..” However, Examiner respectfully disagrees.
As discussed in the MPEP at § 2106.05, section I, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101 because they are separate and distinct requirements from eligibility. Therefore, whether the claim limitations are found in the prior art is irrelevant to the analysis, and the rejection is maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Kumar (US 20200219163 A1) was used to understand other methods for recommending services based on consumer needs and available service providers.
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/KATHERINE A BARLOW/ Examiner, Art Unit 3689 /VICTORIA E. FRUNZI/Primary Examiner, Art Unit 3689 3/12/2026