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 .
Information Disclosure Statement
The examiner has considered the information disclosure statements (IDS) submitted on 08/13/2025.
Response to Arguments
Claims 1-20 remain pending in the application.
Applicant’s arguments, filed 10/22/2025, with respect to the rejections of the claims under 101 have been fully considered and are not persuasive.
Applicant argues (pages 11-14)
The Applicant's Attorney requests reconsideration of the Office Action's 101 rejection in view of previously submitted remarks, the below remarks, and the recent 101 Memorandum. The 101 Memorandum has a Subject of "Reminders on evaluating subject matter eligibility of claims under 35 U.S.C. 101" and is accessible at https://www.uspto.gov/sites/default/files/documents/memo-101-20250804.pdf.
The 101 Memorandum "provides guidance on the ... topics that arise when examiners assess Step 2A of the USPTO's subject matter eligibility analysis" including "(c) analysis of the claim as a whole; and (d) consideration of whether a claim is directed to an improvement in the functioning of a computer or 'any other technology or technical field"'. 101 Memorandum, p. 1.
With respect to "(c) analysis of the claim as a whole", the 101 Memorandum clarifies that the "analysis in Step 2A Prong Two considers the claim as a whole" and cautions that "the additional limitations should not be evaluated in a vacuum". 101 Memorandum, p. 3. Instead, "the analysis should take into consideration all the claim limitations and how these limitations interact and impact each other when evaluating whether the exception is integrated into a practical application." 101 Memorandum, pp. 3-4.
Applicant's Attorney submits that the Office Action has failed to perform an "(c) analysis of the claim as a whole". 101 Memorandum, p. 1. More particularly, it has failed to consider "all the claim limitations and how those limitations interact and impact each other" as required by MPEP 2106.04(d)(III).
For instance, in rejecting "receiving ... user input indicating types of status notifications associated with the user ... receiving ... an electronic communication over a network interface, the electronic communication being sent to the user by an additional user, and the electronic communication being sent by the additional user, to the computing device of the user, via an additional computing device of the additional user ... and transmitting ... the status notification of the particular first type from the computing device of the user to the additional computing device of the additional user based on receiving the electronic communication from the additional computing device of the additional user and based on the additional user being included in the particular group of user contacts that satisfies the one or more trust criteria", the Office Action alleges that such limitations are "insignificant extra-solution activities of data gathering and transmitting". Office Action, p. 5.
However, such allegation fails to consider how those claim limitations interact with and impact other claim limitations to demonstrate that it is not "insignificant extra solution activities of data gathering and transmitting". For example, such allegation fails to consider how the "determining ... a user activity currently engaged in by the user without processing additional user input from the user" is based on "sensor data generated by the computing device of the user" and how, "transmitting, over the network interface, the status notification of the particular first type from the computing device of the user to the additional computing device of the additional user" causes "a selectable graphical element associated with the status notification to be rendered at the additional computing device of the additional user.
Put another way, the allegation of the Office Action fails to consider why such limitations are performed (e.g., "based on sensor data generated by the computing device of the user") and fails to consider subsequent limitations that are impacted by such limitations (e.g., "causes a selectable graphical element associated with the status notification to be rendered at the additional computing device of the additional user", where "selection of the selectable graphical element causes the status notification to be presented").
Applicant's attorney again requests reconsideration of the 101 rejection and again requests such reconsideration with an "(c) analysis of the claim as a whole". 101 Memorandum, p. 1. For example, MPEP 2106.04(d)(III) specifies that the "the limitations containing the judicial exception as well as the additional elements in the claim besides the judicial exception need to be evaluated together to determine whether the claim integrates the judicial exception into a practical application."
In response
The judicial exception is not integrated into a practical application.
The limitations of “receiving, by a computing device of a user, user input indicating types of status notifications associated with the user” amounts to mere data gathering to be process in subsequent steps. It is necessary to obtain data (user input) to perform the mental process of determine the user activity status such as available, busy, at gym, in meeting, etc.
The limitations of “receiving, by the computing device of the user, an electronic communication over a network interface, the electronic communication being sent to the user by an additional user” amounts to mere data gathering to be process in subsequent steps. It is necessary to obtain data to perform the mental process of identifying one or more groups of user contacts that are each associated with at least one of the types of status notifications.
These receiving steps are performed in order to gather data for the mental analysis step, and are a necessary precursor for all uses of the recited exception. They are thus insignificant extra-solution activities, and do not integrate the judicial exception into a practical application.
The limitations of “causing generation of a status notification of the particular first type … transmitting, over the network interface, the status notification of the particular first type from the computing device of the user to the additional computing device of the additional user and causes a selectable graphical element associated with the status notification to be rendered at the additional computing device of the additional user” are mere data transmitting and outputting recited at a high level of generality, and thus are insignificant extra-solution activity (post-solution activity, i.e. outputting result). Also, these limitations (causing generation, transmitting and rendering) are well-understood, routine and conventional.
Since all uses of the recited judicial exceptions require such data gathering, transmitting, and outputting, therefore, these limitations do not impose any meaningful limits on the claim. See MPEP 2106.05. Accordingly, the claim as a whole does not integrate the abstract idea into a practical application.
The Applicant further argues about limitations of “determining ... a user activity currently engaged in by the user without processing additional user input from the user" is based on "sensor data generated by the computing device of the user”. These limitations are recited at a high level of generality and merely linking the use of the judicial exception (determining a user activity) to a particular technological environment or field of use (based on sensor data) see MPEP 2106.05(h)
Applicant argues (pages 14-16)
With respect to "(d) consideration of whether a claim is directed to an improvement in the functioning of a computer or 'any other technology or technical field"', the 101 Memorandum specifies that an "important consideration in determining whether a claim improves technology or a technical field is the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome". 101 Memorandum, p. 4. The 101 Memorandum also specifies that another "consideration when determining whether a claim integrates a judicial exception into a practical application in Step 2A Prong Two is whether the additional elements amount to more than a recitation of the words 'apply it"', "Examiners are cautioned not to oversimplify claim limitations", and that consideration should be given to whether "claim covers a particular solution to a problem or a particular way to achieve a desired outcome" and to the "particularity or generality of the application of the judicial exception". 101 Memorandum, pp. 4-5.
MPEP 2106.04(d)(III) further specifies that "the analysis should take into consideration all the claim limitations and how those limitations interact and impact each other". The Examiner should evaluate "whether the claim pertains to an improvement to the functioning of a computer or to another technology without reference to what is well understood, routine, conventional activity." MPEP 2106.04(d)(l) (emphasis added).
For example, Applicant's attorney requests reconsideration of how the combination of features of the independent claims can integrate the alleged judicial exception into a practical application.
For instance, reconsideration of the combination of features, including those related to "receiving ... user input indicating types of status notifications associated with the user ... receiving ... an electronic communication over a network interface, the electronic communication being sent to the user by an additional user, and the electronic communication being sent by the additional user, to the computing device of the user, via an additional computing device of the additional user ... and transmitting ... the status notification of the particular first type from the computing device of the user to the additional computing device of the additional user based on receiving the electronic communication from the additional computing device of the additional user and based on the additional user being included in the particular group of user contacts that satisfies the one or more trust criteria" where "transmitting the status notification over the network interface causes a selectable graphical element associated with the status notification to be rendered at the additional computing device of the additional user" and where "selection of the selectable graphical element causes the status notification to be presented' - in view of e.g., how paragraph [0008] of the instant Application describes that "consumption of various resources during the predicted duration, such as resources
of the computing device of the user, resources of the computing device of the additional user, and/or network resources" can be prevented, for example, by preventing "the additional user" from needing to "repeatedly check his/her computing device during the predicted duration to determine if the status of the user has changed, "repeatedly check his/her computing device during the predicted duration to determine if the user has replied", "send a follow-up electronic communication during the predicted duration since the additional user knows a delay in reply by the user is expected for at least the predicted duration" and by preventing "tedious user input by the user to set the status".
In performing such reconsideration, Applicant's attorney requests consideration of how the 101 Memorandum specifies that an "important consideration in determining whether a claim improves technology or a technical field is the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome" and that consideration should be given to whether "claim covers a particular solution to a problem or a particular way to achieve a desired outcome" and to the "particularity or generality of the application of the judicial exception". 101 Memorandum, pp. 4-5.
a. Claim 1 covers a detailed particular solution of "automatically generating and/or automatically transmitting a status of a user" (Application, para. [0004]) that addresses problem(s) such as when "a status message ... may not convey any anticipated time that the status, reflected by the status message, may change to another status" and/or when "the same status message may be indiscriminately sent to each of multiple other users". Specification, para [0003]. As noted by the specification, "automatically generating and/or automatically transmitting a status of a user" can prevent consumption of various resources during the predicted duration, such as resources of the computing device of the user, resources of the computing device of the additional user, and/or network resources", by preventing "the additional user" from needing to "repeatedly check his/her computing device during the predicted duration to determine if the status of the user has changed, "repeatedly check his/her computing device during the predicted duration to determine if the user has replied", "send a follow-up electronic communication during the predicted duration since the additional user knows a delay in reply by the user is expected for at least the predicted duration" and by preventing "tedious user input by the user to set the status", as set forth in the Specification, para. [0008]. These and other aspect of the specification highlight technical problem(s) that result from not "automatically generating and/or automatically transmitting a status of a user". Again, claim 1 covers a detailed particular solution that addresses such problem(s).
For at least these reasons, Applicant's attorney respectfully requests that the Office Action's 101 rejections be reconsidered and withdrawn.
In response
The claim recites a method of “determining, … a user activity currently engaged in by the user” to generate a status notification and provide the status notification to the identified group of users, wherein, the limitations of “determining … a user activity currently engaged in by the user” and “identifying … one or more groups of user contacts that are each associated with at least one of the types of status notifications” are based on observations, evaluations, judgments or opinion that are performable in the human mind or with the aid of pencil and paper (see MPEP 2106.04(a)(2)(III)). For example, a user can determine the availability status of a person at the current or future time such as the person is busy, at the gym, in the meeting, etc., wherein, the “determine” is based on analyzing data associated with the person. The user can determine a group of people that each person in the group is related to at least one of the availability statuses of the person such as friends, other person who might participating in the same meeting, classmate who doing the same homework, or people that want to know if the person is available. Therefore, the claim does recite an abstract idea.
Since the claim recites an abstract idea, other limitations are analyzed to determine if the additional limitations integrate the judicial exception into a practical application.
The Applicant argues that the claim recites steps indicating an improvement to the functioning of a computer or to another technology. The examiner respectfully disagrees.
The claim is directed to an improvement of an abstract idea instead of to an improvement in the functionality of the computer or in any other technological field.
The claim recites using generic computer components (processors and computer devices and machine learning model) to generate the abstract idea (determine the user activity currently engaged in, or identifying groups of user contacts to transmit status notification to) based on the collected data (from the receiving and transmitting steps), thus, the solution of “determine the user activity currently engaged in, or identifying groups of user contacts to transmit status notification to” is the improvement on the abstract idea, it is not the improvement in the computer technology field. The claim does not recite how the machine learning model is trained or operated to implement the process such that the machine learning model is improved. The claim only recites using a machine learning technology as a tool to perform a mental process of “determine the user activity currently engaged in, or identifying groups of user contacts”, wherein, the machine learning model is trained using a certain training data such as past and current sensor data to maybe improve the determining process. However, as mentioned above, an improvement in an abstract idea itself is not an improvement in technology. The claim must recite additional elements which provide the improvement.
Further, when a computer analyzing data in such a way to improve the computer function or to save computer resource then it is an improvement to the functioning of the computer, but if the computer doing nothing because the users do not input any data (not receiving message from other users), then it is not an improvement to the functioning of the computer.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
The claim recites a method which falls within at least one of the four statutory categories of patent eligible subject matter.
Step 2:
Step 2A (prong 1):
The limitation of “determining, by the computing device of the user … a user activity currently engaged in by the user”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. That is, other than reciting “a computing device of a user” nothing in the claim element precludes the step from practically being performed in the mind. For example, “determining” in the context of this claim encompasses the user determines the availability status of a person at the current or future time such as busy, at the gym, in the meeting, etc.,
Similarly, the limitation of “determining the user activity currently engaged in by the user based on output of the machine learning model” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, “determining” in the context of this claim encompasses the user determines the availability status of a person at the current or future time by analyzing data associated with the person.
Similarly, the limitation of “determining … that the user activity currently engaged in by the user is associated with a particular first type of status notification, of the types of status notifications indicated by the user input” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, “determining” in the context of this claim encompasses the user determines that the person is currently busy or in the meeting or doing homework, etc. (availability status),
Similarly, the limitation of “identifying … one or more groups of user contacts that are each associated with at least one of the types of status notifications” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, “determining” in the context of this claim encompasses the user determines a group of people that each person in the group is related to at least one of the availability statuses of the person such as friends, other person who might participating in the same meeting, classmate who doing the same homework, or people that want to know if the person is available.
Similarly, the limitation of “determining … that the additional user is included in a particular group of user contacts, of the one or more groups of user contacts, that is associated with the particular first type of status notification, and that satisfies one or more trust criteria” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, “determining” in the context of this claim encompasses the user determines if the other person who is communicating with the person is belong to the group of people, and is a coworker of the user.
Step 2A (prong 2):
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of “one or more processors”, “a computing device of a user”, “a network interface”, “an additional computing device of the additional user” and “a machine learning model”. The additional elements are recited at a high-level of generality (i.e., as a generic device performing the generic computer functions of receiving, determining, processing, identifying and causing and transmitting) such that they amount no more than mere instructions to apply the exception using the generic computer components (MPEP 2106.05(f)). Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
The additional elements of
“receiving, by a computing device of a user, user input indicating types of status notifications associated with the user;
receiving, by the computing device of the user, an electronic communication over a network interface, the electronic communication being sent to the user by an additional user, and the electronic communication being sent by the additional user, to the computing device of the user, via an additional computing device of the additional user;
transmitting, over the network interface, the status notification of the particular first type from the computing device of the user to the additional computing device of the additional user based on receiving the electronic communication from the additional computing device of the additional user”
amount to insignificant extra-solution activities of data gathering and transmitting, which do not amount to significantly more than the abstract idea (MPEP 2106.05(g)). Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claim recites the additional elements of “processing the sensor data generated by the computing device of the user using a machine learning model trained based on past sensor data of the user and, to further re-train the machine learning model, user-provided modifications to previously determined user activities”. The additional element is recited at a high-level of generality (i.e., as a generic device performing the generic computer functions of processing) such that they amount no more than mere instructions to apply the exception using the generic computer components (MPEP 2106.05(f)). 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.
The additional elements of
“causing generation of a status notification of the particular first type, wherein the status notification is based on the determining of the user activity currently engaged in by the user;
wherein transmitting the status notification over the network interface causes a selectable graphical element associated with the status notification to be rendered at the additional computing device of the additional user, and wherein selection of the selectable graphical element causes the status notification to be presented”
amount to insignificant extra-solution activities of data outputting, presenting or displaying, which do not amount to significantly more than the abstract idea (MPEP 2106.05(g)).
The additional elements of “determining … based on sensor data generated by the computing device of the user, a user activity currently engaged in by the user without processing additional user input from the user, wherein determining the user activity currently engaged in by the user includes:”, “determining, by the computing device of the user and without processing additional user input from the user …” and “transmitting, over the network interface, the status notification … based on the additional user being included in the particular group of user contacts that satisfies the one or more trust criteria” amount to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitation that amounts to merely indicating a field of use or technological environment in which to apply a judicial exception does not integrate into a practical application (see MPEP 2106.05(h)).
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of “one or more processors”, “a computing device of a user”, “a network interface”, “an additional computing device of the additional user” and “a machine learning model” to perform the “receiving, determining, processing, identifying and causing and transmitting” steps amount to 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.
The additional elements of
“receiving, by a computing device of a user, user input indicating types of status notifications associated with the user;
receiving, by the computing device of the user, an electronic communication over a network interface, the electronic communication being sent to the user by an additional user, and the electronic communication being sent by the additional user, to the computing device of the user, via an additional computing device of the additional user;
transmitting, over the network interface, the status notification of the particular first type from the computing device of the user to the additional computing device of the additional user based on receiving the electronic communication from the additional computing device of the additional user”
are recited at a high level of generality and amount to extra-solution activity of receiving and transmitting data (MPEP 2106.05(g)). The courts have found limitations directed to receiving and transmitting information electronically, recited at a high level of generality, to be well-understood, routine, and conventional (see MPEP 2106.05(d)(II), “receiving or transmitting data over a network”).
The additional elements of “processing the sensor data generated by the computing device of the user using a machine learning model trained based on past sensor data of the user and, to further re-train the machine learning model, user-provided modifications to previously determined user activities” amount to 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.
The additional elements of “causing generation of a status notification of the particular first type, wherein the status notification is based on the determining of the user activity currently engaged in by the user; wherein transmitting the status notification over the network interface causes a selectable graphical element associated with the status notification to be rendered at the additional computing device of the additional user, and wherein selection of the selectable graphical element causes the status notification to be presented” recite, at a high level of generality, an insignificant extra-solution activity related to mere data outputting of the status (see MPEP 2106.05(g)). The courts have similarly found limitations directed to [displaying, presenting, outputting] a result, recited at a high level of generality, to be well-understood, routine, and conventional. See (MPEP 2106.05(d)(II), "presenting offers and gathering statistics.")
The additional elements of “determining … based on sensor data generated by the computing device of the user, a user activity currently engaged in by the user without processing additional user input from the user, wherein determining the user activity currently engaged in by the user includes:”, “determining, by the computing device of the user and without processing additional user input from the user …” and “transmitting, over the network interface, the status notification … based on the additional user being included in the particular group of user contacts that satisfies the one or more trust criteria” amount to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitation that amounts to merely indicating a field of use or technological environment in which to apply a judicial exception does not amount to significantly more than the judicial exception (see MPEP 2106.05(h)).
Claim 2 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
The claim recites the method which falls within at least one of the four statutory categories of patent eligible subject matter.
Step 2:
Step 2A (prong 1):
The limitation of “identifying the different user activity currently engaged in by the user based on the subsequent output”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, “identifying” in the context of this claim encompasses the user determines whether the person is in the meeting.
Step 2A (prong 2):
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional element of “receiving, at the computing device of the user, additional user input indicating that the user is currently engaged in a different user activity” amounts to insignificant extra-solution activities of data gathering, which do not amount to significantly more than the abstract idea (MPEP 2106.05(g)). Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claim recites the additional elements of “re-training the machine learning model based on the sensor data and the additional user input indicating that the user is currently engaged in the different user activity; and processing the sensor data using the re-trained machine learning model to generate subsequent output”. The additional elements are recited at a high-level of generality (i.e., as a generic device performing the generic computer functions of re-training and processing) such that they amount no more than mere instructions to apply the exception using the generic computer components (MPEP 2106.05(f)). 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.
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above with respect to integration of the abstract idea into a practical application, the additional element of “receiving, at the computing device of the user, additional user input indicating that the user is currently engaged in a different user activity” is recited at a high level of generality and amount to extra-solution activity of data gathering (MPEP 2106.05(g)). The courts have found limitations directed to receiving and transmitting information electronically, recited at a high level of generality, to be well-understood, routine, and conventional (see MPEP 2106.05(d)(II), “receiving or transmitting data over a network”).
The additional elements of “re-training the machine learning model based on the sensor data and the additional user input indicating that the user is currently engaged in the different user activity; and processing the sensor data using the re-trained machine learning model to generate subsequent output” amount to 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.
Claim 3 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
The claim recites the method which falls within at least one of the four statutory categories of patent eligible subject matter.
Step 2:
Step 2A (prong 1):
The limitation of “determining, by the computing device of the user and based on the sensor data generated by the computing device of the user, a predicted duration for the user activity currently engaged in by the user”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. That is, other than reciting “by the computing device of a user” nothing in the claim element precludes the step from practically being performed in the mind. For example, “determining” in the context of this claim encompasses the user determines the time that the person will be in the meeting, or the time it takes for the person to do the homework.
The limitation of “determining the predicted duration of the user activity currently engaged in by the user based on output of the additional machine learning model”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, “determining” in the context of this claim encompasses the user determines the time it takes for the person to do the homework by analyzing some data such as historical data associated with that person.
Step 2A (prong 2):
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of “processing the sensor data generated by the computing device of the user using an additional machine learning model trained based on the past sensor data of the user and user-provided modifications to previously determined predicted durations for one or more previously determined user activities”. The additional elements are recited at a high-level of generality (i.e., as a generic device performing the generic computer function of processing) such that they amount no more than mere instructions to apply the exception using the generic computer components (MPEP 2106.05(f)). 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.
The additional element of “wherein determining the predicted duration for the user activity currently engaged in by the user includes” amounts to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitation that amounts to merely indicating a field of use or technological environment in which to apply a judicial exception does not integrate into a practical application (see MPEP 2106.05(h)).
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of “processing the sensor data generated by the computing device of the user using an additional machine learning model trained based on the past sensor data of the user and user-provided modifications to previously determined predicted durations for one or more previously determined user activities” amount to 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.
The additional element of “wherein determining the predicted duration for the user activity currently engaged in by the user includes” amounts to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitation that amounts to merely indicating a field of use or technological environment in which to apply a judicial exception does not amount to significantly more than the judicial exception (see MPEP 2106.05(h)).
Claim 4 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
The claim recites the method which falls within at least one of the four statutory categories of patent eligible subject matter.
Step 2:
Step 2A (prong 2):
This judicial exception is not integrated into a practical application. The claim recites an additional element of “wherein the particular first type of status notification is a type of status notification in which both the user activity and the predicted duration of the user activity are visible to the additional user when the additional computing device presents the status notification for presentation to the additional user”. This limitation amounts to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitation that amounts to merely indicating a field of use or technological environment in which to apply a judicial exception does not integrate into a practical application (see MPEP 2106.05(h)).
The limitation also describing the presentation of status notification using the additional computing device recites, at a high level of generality, the additional element of an insignificant extra-solution activity related to mere data output (see MPEP 2106.05(g)).
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of “wherein the particular first type of status notification is a type of status notification in which both the user activity and the predicted duration of the user activity are visible to the additional user when the additional computing device presents the status notification for presentation to the additional user” amounts to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitation that amounts to merely indicating a field of use or technological environment in which to apply a judicial exception does not amount to significantly more than the judicial exception (see MPEP 2106.05(h)).
The limitation also describing the presentation of status notification using the additional computing device recites, at a high level of generality, an insignificant extra-solution activity related to mere data output (see MPEP 2106.05(g)). The courts have similarly found limitations directed to [displaying, presenting, outputting] a result, recited at a high level of generality, to be well-understood, routine, and conventional. See (MPEP 2106.05(d)(II), "presenting offers and gathering statistics.")
Claim 5 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
The claim recites the method which falls within at least one of the four statutory categories of patent eligible subject matter.
Step 2:
Step 2A (prong 2):
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional element of “receiving, by the computing device of the user, additional user input indicating a modification to the determined predicted duration for the user activity currently engaged in by the user” amounts to insignificant extra-solution activities of data gathering, which do not amount to significantly more than the abstract idea (MPEP 2106.05(g)). Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claim recites the additional elements of “re-training the additional machine learning model based on the sensor data and the modification to the determined predicted duration for the user activity”. The additional elements are recited at a high-level of generality (i.e., as a generic device performing the generic computer functions of re-training) such that they amount no more than mere instructions to apply the exception using the generic computer components (MPEP 2106.05(f)). 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.
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of “receiving, by the computing device of the user, additional user input indicating a modification to the determined predicted duration for the user activity currently engaged in by the user” is recited at a high level of generality and amount to extra-solution activity of data gathering (MPEP 2106.05(g)). The courts have found limitations directed to receiving and transmitting information electronically, recited at a high level of generality, to be well-understood, routine, and conventional (see MPEP 2106.05(d)(II), “receiving or transmitting data over a network”).
The additional elements of “re-training the additional machine learning model based on the sensor data and the modification to the determined predicted duration for the user activity” amount to 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.
Claim 6 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
The claim recites the method which falls within at least one of the four statutory categories of patent eligible subject matter.
Step 2:
Step 2A (prong 1):
The limitation of “determining, by the computing device of the user and based on the sensor data generated by the computing device of the user, a predicted duration for the user activity currently engaged in by the user”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. That is, other than reciting “by the computing device of a user” nothing in the claim element precludes the step from practically being performed in the mind. For example, “determining” in the context of this claim encompasses the user determines the time that the person will be in the meeting, or the time it takes for the person to do the homework.
The limitation of “determining that at least a portion of the sensor data indicates a particular type of location of the user”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, “determining” in the context of this claim encompasses the user analyzing data associated with the location of the person such as at the office, a library or at the gym.
The limitation of “determining an average predicted duration for user activities of a plurality of users at the particular type of location”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, “determining” in the context of this claim encompasses the user determines an average time that an individual spends at the gym.
The limitation of “determining the predicted duration for the user activity currently engaged in by the user based on the average predicted duration for user activities of the plurality of users at the particular type of location”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, “determining” in the context of this claim encompasses the user determines how long the person will stay at the gym.
Step 2A (prong 2):
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of “the computing device of the user”. The additional element is recited at a high-level of generality (i.e., as a generic device performing the generic computer functions of determining) such that they amount no more than mere instructions to apply the exception using the generic computer components (MPEP 2106.05(f)). Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
The claim recites an additional element of “wherein determining the predicted duration for the user activity currently engaged in by the user includes:”. This limitation amounts to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitation that amounts to merely indicating a field of use or technological environment in which to apply a judicial exception does not integrate into a practical application (see MPEP 2106.05(h)).
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above with respect to integration of the abstract idea into a practical application, the additional element of “the computing device of the user” to perform the “determining” step amounts to 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.
the additional element of “wherein determining the predicted duration for the user activity currently engaged in by the user includes:” amounts to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitation that amounts to merely indicating a field of use or technological environment in which to apply a judicial exception does not amount to significantly more than the judicial exception (see MPEP 2106.05(h)).
Claim 7 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
The claim recites the method which falls within at least one of the four statutory categories of patent eligible subject matter.
Step 2:
Step 2A (prong 1):
The limitation of “determining, based on second sensor data generated by a second computing device of a second user, a second user activity currently engaged in by the second user”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, “determining” in the context of this claim encompasses the user determines the availability status of another person at the current time such as busy, at the gym, in the meeting, etc.,
The limitation of “determining a predicted duration for the second user activity currently engaged in by the second user based on the output of the additional machine learning model”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, “determining” in the context of this claim encompasses the user the availability status of a person at the current by analyzing data associated with another person.
Step 2A (prong 2):
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of “processing the second sensor data generated by the second computing device using an additional machine learning model”. The additional elements are recited at a high-level of generality (i.e., as a generic device performing the generic computer function of processing) such that they amount no more than mere instructions to apply the exception using the generic computer components (MPEP 2106.05(f)). 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.
The additional element of “additional machine learning model trained based on past sensor data of the second user and user-provided modifications to previously determined predicted durations for one or more previously determined user activities” amounts to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitation that amounts to merely indicating a field of use or technological environment in which to apply a judicial exception does not integrate into a practical application (see MPEP 2106.05(h)).
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of “processing the second sensor data generated by the second computing device using an additional machine learning model trained based on past sensor data of the second user and user-provided modifications to previously determined predicted durations for one or more previously determined user activities” amount to 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.
The additional element of “additional machine learning model trained based on past sensor data of the second user and user-provided modifications to previously determined predicted durations for one or more previously determined user activities” amounts to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitation that amounts to merely indicating a field of use or technological environment in which to apply a judicial exception does not amount to significantly more than the judicial exception (see MPEP 2106.05(h)).
Claim 8 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
The claim recites the method which falls within at least one of the four statutory categories of patent eligible subject matter.
Step 2:
Step 2A (prong 1):
The limitation of “determining a predicted duration of the user activity based on the output of the machine learning model”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, “determining” in the context of this claim encompasses the user determines the time it takes for the person to do the homework, at the gym, etc., by analyzing some data such as historical data associated with that person.
Step 2A (prong 2):
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of “processing an indication of the predicted duration for the second user activity using the machine learning model”. The additional elements are recited at a high-level of generality (i.e., as a generic device performing the generic computer functions of processing) such that they amount no more than mere instructions to apply the exception using the generic computer components (MPEP 2106.05(f)). 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.
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of “processing an indication of the predicted duration for the second user activity using the machine learning model” amount to 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.
Claim 9 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
The claim recites the method which falls within at least one of the four statutory categories of patent eligible subject matter.
Step 2:
Step 2A (prong 1):
The limitation of “determining that the second user activity of the second user corresponds to a particular class of user activities that is associated with the user activity currently engaged in by the user”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, “determining” in the context of this claim encompasses the user determines whether the first and second person are currently participating in the same activity such as in the meeting or at the gym.
Step 2A (prong 2):
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of “processing the indication of the predicted duration for the second user activity using the machine learning model is performed based on …”. The additional elements are recited at a high-level of generality (i.e., as a generic device performing the generic computer functions of processing) such that they amount no more than mere instructions to apply the exception using the generic computer components (MPEP 2106.05(f)). 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.
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of “processing the indication of the predicted duration for the second user activity using the machine learning model is performed based on …” amount to 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.
Claim 10 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
The claim recites a system which falls within at least one of the four statutory categories of patent eligible subject matter.
Step 2:
Step 2A (prong 1):
The limitation of “determining … a user activity currently engaged in by the user”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. That is, other than reciting “the computing device of a user” nothing in the claim element precludes the step from practically being performed in the mind. For example, “determining” in the context of this claim encompasses the user determines the availability status of a person at the current or future time such as busy, at the gym, in the meeting, etc.,
Similarly, the limitation of “determining the user activity currently engaged in by the user based on output of the machine learning model” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, “determining” in the context of this claim encompasses the user determines the availability status of a person at the current or future time by analyzing data associated with the person.
Similarly, the limitation of “determining that the additional user is associated with one or more trust criteria and a particular first type of status notification, of the types of status notifications indicated by the user input, based on identifying that the user has previously chosen to share status notifications of the particular first type with the additional user in the past” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, “determining” in the context of this claim encompasses the user determines, based on past data, a group of people that each person in the group is related to at least one of the availability statuses of the person such as friends, other person who participating in the same meeting, classmate who doing the same homework, or people that want to know if the person is available.
Step 2A (prong 2):
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of “one or more processors”, “memory”, “a computing device of a user”, “a network interface”, “an additional computing device of the additional user” and “a machine learning model”. The additional elements are recited at a high-level of generality (i.e., as a generic device performing the generic computer functions of receiving, determining, processing, identifying and causing and transmitting) such that they amount no more than mere instructions to apply the exception using the generic computer components (MPEP 2106.05(f)). Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
The additional elements of
“receiving, at a computing device of a user, user input indicating types of status notifications associated with the user;
receiving, at the computing device of the user, an electronic communication over a network interface, the electronic communication being sent to the user by an additional user, and the electronic communication being sent by the additional user, to the computing device of the user, via an additional computing device of the additional user;
transmitting, over the network interface, the status notification of the particular first type from the computing device of the user to the additional computing device of the additional user based on receiving the electronic communication from the additional computing device of the additional user”
amount to insignificant extra-solution activities of data gathering and transmitting, which do not amount to significantly more than the abstract idea (MPEP 2106.05(g)). Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claim recites the additional elements of “processing the sensor data generated by the computing device of the user using a machine learning model to generate output, wherein the machine learning model is trained based on past sensor data of the user and, to further re-train the machine learning model, user-provided modifications to previously determined user activities”. The additional elements are recited at a high-level of generality (i.e., as a generic device performing the generic computer functions of processing) such that they amount no more than mere instructions to apply the exception using the generic computer components (MPEP 2106.05(f)). Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
The additional elements of
“causing generation of a status notification of the particular first type, wherein the status notification is based on the output of the machine learning model;
wherein transmitting the status notification over the network interface causes a selectable graphical element associated with the status notification, in which the user activity of the user is visible, to be rendered at the additional computing device of the additional user, and wherein selection of the selectable graphical element causes the status notification to be presented”
amount to insignificant extra-solution activities of data outputting, presenting or displaying, which do not amount to significantly more than the abstract idea (MPEP 2106.05(g)).
The additional elements of “determining, based on sensor data generated by the computing device of the user … without processing additional user input from the user, wherein determining the user activity currently engaged in by the user includes:” and “transmitting, over the network interface, the status notification … based on the additional user being included in the particular group of user contacts that satisfies the one or more trust criteria” amount to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitation that amounts to merely indicating a field of use or technological environment in which to apply a judicial exception does not integrate into a practical application (see MPEP 2106.05(h)).
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of “one or more processors”, “a computing device of a user”, “a network interface”, “an additional computing device of the additional user” and “a machine learning model” to perform the “receiving, determining, processing, identifying and causing and transmitting” steps amount to 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.
The additional elements of
“receiving, at a computing device of a user, user input indicating types of status notifications associated with the user;
receiving, at the computing device of the user, an electronic communication over a network interface, the electronic communication being sent to the user by an additional user, and the electronic communication being sent by the additional user, to the computing device of the user, via an additional computing device of the additional user;
transmitting, over the network interface, the status notification of the particular first type from the computing device of the user to the additional computing device of the additional user based on receiving the electronic communication from the additional computing device of the additional user”
are recited at a high level of generality and amount to extra-solution activity of receiving and transmitting data (MPEP 2106.05(g)). The courts have found limitations directed to receiving and transmitting information electronically, recited at a high level of generality, to be well-understood, routine, and conventional (see MPEP 2106.05(d)(II), “receiving or transmitting data over a network”).
The additional elements of “processing the sensor data generated by the computing device of the user using a machine learning model to generate output, wherein the machine learning model is trained based on past sensor data of the user and, to further re-train the machine learning model, user-provided modifications to previously determined user activities” amount to 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.
The additional elements of “causing generation of a status notification of the particular first type, wherein the status notification is based on the output of the machine learning model; wherein transmitting the status notification over the network interface causes a selectable graphical element associated with the status notification, in which the user activity of the user is visible, to be rendered at the additional computing device of the additional user, and wherein selection of the selectable graphical element causes the status notification to be presented” recite, at a high level of generality, an insignificant extra-solution activity related to mere data outputting of the status. The courts have similarly found limitations directed to [displaying, presenting, outputting] a result, recited at a high level of generality, to be well-understood, routine, and conventional. See (MPEP 2106.05(d)(II), "presenting offers and gathering statistics.")
The additional elements of “determining, based on sensor data generated by the computing device of the user … without processing additional user input from the user, wherein determining the user activity currently engaged in by the user includes:” and “transmitting, over the network interface, the status notification … based on the additional user being included in the particular group of user contacts that satisfies the one or more trust criteria” amount to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitation that amounts to merely indicating a field of use or technological environment in which to apply a judicial exception does not amount to significantly more than the judicial exception (see MPEP 2106.05(h)).
Claim 11 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
The claim recites the system which falls within at least one of the four statutory categories of patent eligible subject matter.
Step 2:
Step 2A (prong 2):
This judicial exception is not integrated into a practical application. The claim recites an additional element of “wherein the particular first type of status notification is a type of status notification, of the types of status notifications indicated by the user input, in which the user activity is visible when a corresponding status notification of the particular first type is provided for presentation”. This limitation amounts to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitation that amounts to merely indicating a field of use or technological environment in which to apply a judicial exception does not integrate into a practical application (see MPEP 2106.05(h)).
The limitation also describing the presentation of status notification using the additional computing device recites, at a high level of generality, the additional element of an insignificant extra-solution activity related to mere data output (see MPEP 2106.05(g)).
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of “wherein the particular first type of status notification is a type of status notification, of the types of status notifications indicated by the user input, in which the user activity is visible when a corresponding status notification of the particular first type is provided for presentation” amounts to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitation that amounts to merely indicating a field of use or technological environment in which to apply a judicial exception does not amount to significantly more than the judicial exception (see MPEP 2106.05(h)).
The limitation also describing the presentation of status notification using the additional computing device recites, at a high level of generality, an insignificant extra-solution activity related to mere data output (see MPEP 2106.05(g)). The courts have similarly found limitations directed to [displaying, presenting, outputting] a result, recited at a high level of generality, to be well-understood, routine, and conventional. See (MPEP 2106.05(d)(II), "presenting offers and gathering statistics.")
Claim 12 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
The claim recites the system which falls within at least one of the four statutory categories of patent eligible subject matter.
Step 2:
Step 2A (prong 1):
The limitation of “determining that the additional user is a saved contact on the computing device of the user and that the user communicates with the additional user with at least a threshold frequency” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, “determining” in the context of this claim encompasses the user determines if the other person is a friend who is in the contact list of the person and had been communicating with the person.
The limitation of “determining that one or more electronic documents stored on the computing device of the user, other than previously sent or received electronic communications of the user, include explicit indications from the user that the user trusts the additional user” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, “determining” in the context of this claim encompasses the user determines if the other person is a friend of the person by analyzing some documents.
Step 2A (prong 2):
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of “the computing device of the user”. The additional element is recited at a high-level of generality (i.e., as a generic device performing the generic computer functions of determining) such that they amount no more than mere instructions to apply the exception using the generic computer components (MPEP 2106.05(f)). Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above with respect to integration of the abstract idea into a practical application, the additional element of “the computing device of the user” to perform the “determining” step amounts to 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.
Claim 13: is substantially similar to claim 2 and thus rejected for similar reasons as claim 2.
Claim 14 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
The claim recites the system which falls within at least one of the four statutory categories of patent eligible subject matter.
Step 2:
Step 2A (prong 2):
This judicial exception is not integrated into a practical application. The claim recites an additional element of “wherein the status notification provided for presentation to the additional user at the additional computing device includes a visible indication of the different user activity currently engaged in by the user”. This limitation amounts to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitation that amounts to merely indicating a field of use or technological environment in which to apply a judicial exception does not integrate into a practical application (see MPEP 2106.05(h)).
The limitation also describing the presentation of status notification using the additional computing device recites, at a high level of generality, the additional element of an insignificant extra-solution activity related to mere data output (see MPEP 2106.05(g)).
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of “wherein the status notification provided for presentation to the additional user at the additional computing device includes a visible indication of the different user activity currently engaged in by the user” amounts to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitation that amounts to merely indicating a field of use or technological environment in which to apply a judicial exception does not amount to significantly more than the judicial exception (see MPEP 2106.05(h)).
The limitation also describing the presentation of status notification using the additional computing device recites, at a high level of generality, an insignificant extra-solution activity related to mere data output (see MPEP 2106.05(g)). The courts have similarly found limitations directed to [displaying, presenting, outputting] a result, recited at a high level of generality, to be well-understood, routine, and conventional. See (MPEP 2106.05(d)(II), "presenting offers and gathering statistics.")
Claim 15: is substantially similar to claim 3 and thus rejected for similar reasons as claim 3.
Claim 16: is substantially similar to claim 4 and thus rejected for similar reasons as claim 4.
Claim 17: is substantially similar to claim 5 and thus rejected for similar reasons as claim 5.
Claim 18: is substantially similar to claim 6 and thus rejected for similar reasons as claim 6.
Claim 19: is substantially similar to claim 7 and thus rejected for similar reasons as claim 7.
Claim 20: is substantially similar to claim 8 and thus rejected for similar reasons as claim 8.
Allowable Subject Matter
The claims were previously indicated as having allowable subject matter, the examiner has performed an updated search, but no prior art references are found to teach or suggest, individually or in combination the limitations as reciting in the independent claims as a whole, especially limitations (among others) “determining, by the computing device of the user and without processing additional user input from the user, that the user activity currently engaged in by the user is associated with a particular first type of status notification, of the types of status notifications indicated by the user input; identifying, by the computing device of the user, one or more groups of user contacts that are each associated with at least one of the types of status notifications; determining, by the computing device of the user, that the additional user is included in a particular group of user contacts, of the one or more groups of user contacts, that is associated with the particular first type of status notification, and that satisfies one or more trust criteria; causing generation of a status notification of the particular first type, wherein the status notification is based on the determining of the user activity currently engaged in by the user; transmitting, over the network interface, the status notification of the particular first type from the computing device of the user to the additional computing device of the additional user based on receiving the electronic communication from the additional computing device of the additional user and based on the additional user being included in the particular group of user contacts that satisfies the one or more trust criteria”
Therefore, the claims would be allowable if rewritten so that the 101 rejections above were overcome.
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Haynes et al. (US Pub. 2009/0313336) describes a method for determining if the user is not currently available to receive an instant message.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRI T NGUYEN whose telephone number is 571-272-0103. The examiner can normally be reached M-F, 8 AM-5 PM, (CT).
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, OMAR FERNANDEZ can be reached at 571-272-2589. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TRI T NGUYEN/Examiner, Art Unit 2128
/OMAR F FERNANDEZ RIVAS/Supervisory Patent Examiner, Art Unit 2128