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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 21-40 remain pending, and are rejected.
Response to Arguments
Applicant’s arguments filed on 8/10/2026 with respect to the rejection under 35 U.S.C. 101 have been fully considered, but are not persuasive for at least the following rationale:
Applicant’s arguments filed on 8/10/2026 with respect to the rejection under 35 U.S.C. 101 for claims directed to a judicial exception are not persuasive.
Notably, on pages 10-11 of the Applicant’s Remarks, arguments are made that the claims have been amended to reflect technical improvements analogous to Core Wireless, citing specification paragraphs [0072-0077] that disclose computing a distinct value for each asset would require “a brute force method, looking at all possible combinations and orderings of available asset ensembles”. The amendments to the claims pool sparse historical data across later positions and computes only two values, improving the effectiveness and efficiency of generating playlists or ensembles of assets when a user action across numerous user computing devices occurs. The Applicant argues that this is not a determination a human would make as a mental exercise, and is a system-level response to a problem that is “necessarily rooted in computer technology”. On pages 11-12 of the Applicant’s Remarks, arguments are made that the additional elements amount to significantly more than the abstract idea.
Examiner respectfully disagrees. In Core Wireless, the specification specifically discussed the technical problems of the interface, such as devices with small screens (technical specification) where data and functionality needs to be divided into many layers and views, and the navigation of an interface, such as having to scroll around and switch views to find the right data/functionality. The claims contained precise language delimiting a limited set of information to the user, rather than using conventional user interface methods to merely display content of a playlist. The present specification does not disclose such technical limitations of interface functionality, and the present claims do not recite any particular solution. The claims merely recite ordering various content in a playlist based on a score based on interaction data, which does not affect any technical functionality. The problem of requiring a brute force method for computing a distinct value for each asset also does not describe a technical problem. This is a problem of the abstract idea of generating scores for items based on their position in a playlist to determine an order of other items in a playlist, which is not inherent to any computer functionality. Pooing sparse historical data and computing only two values does not improve how a computer functions, but merely makes a more efficient algorithm of the abstract idea, such that the computer does not have to calculate as much data. The ability of the computer remains unchanged, and any alleged improvements of efficiency are only because the more efficient abstract algorithm, and would not exist in any other application. These activities merely amount to gathering historical data and performing calculations to generate a score, which are not rooted in compute technology. Such activities are performable in the human mind, and the speed of a computer is merely utilized. For the reasons as discussed above, the claims do not recite any improvements to any technology or utilize any additional elements in such a manner that provides significantly more than the abstract idea.
In view of the above, the rejection under 35 U.S.C. 101 has been maintained below.
Applicant’s arguments filed on 8/10/2026 with respect to the rejection under 35 U.S.C. 103 have been fully considered, and are persuasive. Applicant’s amendments have overcome the previously cited combination of prior art.
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 21-40 are rejected under 35 U.S.C. 101 because the claims are directed to a judicial exception without significantly more.
Step 1:
Claims 21-27 are directed to a method, which is a process. Claims 28-34 are directed to a non-transitory computer-readable storage medium, which is an article of manufacture. Claims 35-40 are directed to a system, which is an apparatus. Therefore, claims 1-20 are directed to one of the four statutory categories of invention.
Step 2A (Prong 1):
Taking claim 35 as representative, claim 35 sets forth the following limitations reciting the abstract idea of creating playlists for users based on their interactions:
collecting user interaction data between a plurality of users and the plurality of user computing devices while a plurality of video content is being played back by the plurality of user computing devices to the plurality of users;
generating based on the collected user interaction data, a plurality of individual numeric values estimated for each video content in the plurality of video contents, wherein generating the plurality of individual numeric values said each video content comprises computing a first numeric value for a starting position of a playlist initiated by a user action and a second numeric value for any subsequent position of the playlist following the starting position, without computing a distinct numeric value for each subsequent position within the playlist other than the starting position, wherein the second numeric value for the second position is computed by pooling historical user interaction data associated with all the subsequent positions in the playlist after the starting position;
selecting and ordering a set of specific video contents from the plurality of video contents using the plurality of individual numeric values for the plurality of video contents;
creating and sending to a particular user, the playlist comprised of an access pointer for each video content in the set of specific video contents, wherein the playlist is configured for automatic playback of a next video content without requiring further user input upon completion of a prior video content;
monitoring particular user interaction with the particular user to determine whether a playback of a particular video content in the set of specific video content is terminated,
sending to the particular user a revised playlist comprised of an access pointer for each video content in a revised set of specific video contents in response to determining, based on the particular user interaction, that the playback of the particular video is terminated.
The recited limitations above set forth the process for creating playlists for users based on their interactions. These limitations amount to certain methods of organizing human activity, including commercial or legal transactions (e.g. agreements in the form of contracts, advertising, marketing or sales activities or behaviors, etc.). The claims are directed to creating playlists for user based on their interaction data (see specification [0003] disclosing attempts of providers to predict how users will consume digital content and which digital content will be consumed by a particular user), which is a marketing activity.
Such concepts have been identified by the courts as abstract ideas (see: MPEP 2106.04(a)(2)).
Step 2A (Prong 2):
Examiner acknowledges that representative claim 35 recites additional elements, such as:
one or more computing devices;
one or more non-transitory computer-readable storage media, storing one or more sequences of instructions;
a plurality of computing devices by one or more computing devices;
Taken individually and as a whole, representative claim 35 does not integrate the recited judicial exception into a practical application of the exception. The additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use.
Furthermore, this is also because the claim fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement a judicial exception with a particular machine, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
While the claims recite one or more computing devices and non-transitory computer-readable data storage media, these additional elements are recited in the claims and disclosed within the specification with a very high level of generality. Specification paragraphs [0082-0085] and [0091] disclose the computing devices and computing system, and merely recite generic computing components, such as desktop computers, handheld devices, smartphones, etc. that comprise generic components, such as a general purpose microprocessor, busses, memory, etc. Paragraph [0092] discloses the non-transitory storage media as any storage media such as a floppy disk, hard disk, solid state drive, etc. As such, the computing components are generic devices that merely serve to provide a general link to a technological environment.
In view of the above, under Step 2A (Prong 2), representative claim 35 does not integrate the recited exception into a practical application (see: MPEP 2106.04(d)).
Step 2B:
Returning to representative claim 35, taken individually or as a whole, the additional elements of claim 35 do not provide an inventive concept (i.e. whether the additional elements amount to significantly more than the exception itself). As noted above, the additional elements recited in claim 35 are recited in a generic manner with a high level of generality and only serve to implement the abstract idea on a generic computing device. The claims result only in an improved abstract idea itself and do not reflect improvements to the functioning of a computer or another technology or technical field. As discussed above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed process ultimately amount to no more than the mere instructions to apply the exception using a generic computer and/or no more than a general link to a technological environment.
Even when considered as an ordered combination, the additional elements of claim 35 do not add anything further than when they are considered individually.
In view of the above, claim 35 does not provide an inventive concept under step 2B, and is ineligible for patenting.
Regarding Claim 21 (method): Claim 21 recites at least substantially similar concepts and elements as recited in claim 35 such that similar analysis of the claims would be readily apparent to one of ordinary skill in the art. As such, claim 21 is rejected under at least similar rationale as provided above regarding claim 35.
Regarding Claim 28 (non-transitory computer-readable storage media): Claim 28 recites at least substantially similar concepts and elements as recited in claim 35 such that similar analysis of the claims would be readily apparent to one of ordinary skill in the art. As such, claim 28 is rejected under at least similar rationale as provided above regarding claim 35.
Dependent claims 22-27, 29-34, and 36-40 recite further complexity to the judicial exception (abstract idea) of claim 35, such as by further defining the algorithm for creating playlists for users based on their interactions, and do not recite any further additional elements. Thus, each of claims 22-27, 29-34, and 36-40 are held to recite a judicial exception under Step 2A (Prong 1) for at least similar reasons as discussed above.
Under prong 2 of step 2A, the additional elements of dependent claims 22-27, 29-34, and 36-40 also do not integrate the abstract idea into a practical application, considered both individually or as a whole. More specifically, dependent claims 22-27, 29-34, and 36-40 rely on at least similar elements as recited in claim 35. Further additional elements are also acknowledged; however, the additional elements of claims 22-27, 29-34, and 36-40 are recited only at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). Further, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as the Internet or computing networks).
Secondly, this is also because the claims fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement the judicial exception with, or use the judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Taken individually and as a whole, dependent claims 22-27, 29-34, and 36-40 do not integrate the recited judicial exception into a practical application of the exception under step 2A (prong 2).
Lastly, under step 2B, claims 22-27, 29-34, and 36-40 also fail to result in “significantly more” than the abstract idea under step 2B. The dependent claims recite additional functions that describe the abstract idea and use the computing device to implement the abstract idea, while failing to provide an improvement to the functioning of a computer, another technology, or technical field. The dependent claims fail to confer eligibility under step 2B because the claims merely apply the exception on generic computing hardware and generally link the exception to a technological environment.
Even when viewed as an ordered combination (as a whole), the additional elements of the dependent claims do not add anything further than when they are considered individually.
Taken individually or as an ordered combination, the dependent claims simply convey the abstract idea itself applied on a generic computer and are held to be ineligible under Steps 2B for at least similar rationale as discussed above regarding claim 35. Thus, dependent claims 22-27, 29-34, and 36-40 do not add “significantly more” to the abstract idea.
Subject Matter Free of Prior Art
Claims 21-40 are determined to have overcome the prior art of rejection and are free of the prior art. However, the claims remain rejected under 35 U.S.C. 101.
Claims 21-40 are found to have overcome the prior art rejection for the reasons as set forth below:
Claim 21 recites the claimed features of a method comprising:
computing a first numeric value for a starting position of a playlist initiated by a user action and a second numeric value for any subsequent position of the playlist following the starting position, without computing a distinct numeric value for each subsequent position within the playlist other than the starting position, wherein the second numeric value for the second position is computed by pooling historical user interaction data associated with all the subsequent positions in the playlist after the starting position;
The closest prior art was found to be as follows:
Hummel (US 20180285937 A1) discloses [0075] – “the reserve price for each particular presentation position in the preferred configuration can be determined based on an expected value of other presentation positions in the preferred configuration and the position factor for the particular presentation position for which the reserve price is being determined. For example, relationship (2) can be used to compute the reserve price for each presentation position (j) of configuration (x)”.
However, Hummel does not disclose not computing a distinct numeric value for each subsequent position other than the starting position.
Chakraborty (US 20160027061 A1) discloses [0054] – “A score of a previously presented content item accounts for a value to the social networking system 140 of again presenting the content item in an alternative position in the news feed while accounting for a decrease in value to the social networking system from removing the content item from the position in the news feed in which it was previously presented. Additionally, the score of the previously presented content item may also account for a decrease in value to the social networking system 140 from repositioning content items presented in positions between the alternative position and the position in which the content item was previously presented. If a previously presented content item is an advertisement, its score is determined based on an amount of compensation to the social networking system 140 from presenting the advertisement in an alternative position in the news feed, based on a bid amount associated with the advertisement and an amount of compensation lost to the social networking system 140 for removing the advertisement from the position in which it was originally presented, based on a bid amount previously received for presenting the advertisement”.
However, Chakraborty does not disclose not computing a distinct numeric value for each subsequent position other than the starting position or pooling historical user interaction data associated with all the subsequent positions in the playlist after the starting position.
Jehan (US 20180129659 A1) discloses [0101] – “combining the received scores comprises combining pairwise ranking scores of the same two selected potential training examples that have been provided by multiple evaluators to determine a combined pairwise score for the two selected potential training examples; ordering a plurality of potential training examples based on the combined pairwise scores to generate an ordered list; and assigning a score to the potential training examples based on their positions in the ordered list. For example, to identify training examples having the target indirect quality of high energy, potential training examples A, B, and C may be presented to a plurality of evaluators for pairwise ranking of the pairs AC and BC. If the resulting combined pairwise scores indicate that A has higher energy than C, and C has higher energy than B, the media content items would be ordered as follows (from lowest to highest energy): B<C<A. Example energy scores could then be assigned by distributing the ordered list across a numeric range such as 0-1, resulting in example energy scores of: B=0; C=0.5; and A=1”.
However, Jehan also does not disclose computing a distinct numeric value for each subsequent position other than the starting position or pooling historical user interaction data associated with all the subsequent positions in the playlist after the starting position.
PTO-Reference U (see PTO-892 Reference U mailed on 5/8/2023) discloses a recommendation system for determining music and music playlists to recommend to a user based on a user’s music activity and current context.
However, PTO-Reference U does not disclose computing a distinct numeric value for each subsequent position other than the starting position or pooling historical user interaction data associated with all the subsequent positions in the playlist after the starting position.
It was found that no references alone or in combination, neither anticipates, reasonable teaches, nor renders obvious the below noted features of Applicant’s invention. The features of claim 1 in combination that overcome the prior art are:
computing a first numeric value for a starting position of a playlist initiated by a user action and a second numeric value for any subsequent position of the playlist following the starting position, without computing a distinct numeric value for each subsequent position within the playlist other than the starting position, wherein the second numeric value for the second position is computed by pooling historical user interaction data associated with all the subsequent positions in the playlist after the starting position;
Therefore, none of the cited references disclose or render obvious each and every feature of the claimed invention and the claimed invention is determined to be free of the prior art. Although individually the claimed features could be taught, any combination of references would teach the claimed limitations using a piecemeal analysis, since references would only be combined and deemed obvious based on knowledge gleaned from the applicant's disclosure. Such a reconstruction is improper (i.e., hindsight reasoning). See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The examiner emphasizes that it is the interrelationship of the limitations that renders these claims free of the prior art/additional art.
Therefore, it is hereby asserted by the Examiner that, in light of the above, that claims 21-40 are free of prior art as the references do not anticipate the claims and do not render obvious any further modification of the references to a person of ordinary skill in art.
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 TIMOTHY J KANG whose telephone number is (571)272-8069. The examiner can normally be reached Monday - Friday: 8:30am - 7:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maria-Teresa Thein can be reached at 571-272-6764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T.J.K./Examiner, Art Unit 3689
/VICTORIA E. FRUNZI/Primary Examiner, Art Unit 3689 9/23/2026
