DETAILED ACTION
Status of Claims
• The following is an office action in response to the communication filed 08/11/2026.
• Claims 2, 11, and 17 have been amended.
• Claim 1 has been canceled.
• Claims 2-21 are currently pending and have been examined.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/26/2026 has been entered.
Priority
The examiner acknowledges that the instant application is a continuation of US Patent No. 11475501, filed 08/13/2019, which is a continuation of US Patent No 10380671, filed 07/27/2016, which is a continuation of US Patent No. 9443209, filed 02/17/2010, which claims priority from Provisional Patent Application No. 61/174,384, filed 04/30/2009.
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 2-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claims recite an abstract idea. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
First, it is determined whether the claims are directed to a statutory category of invention. See MPEP 2106.03(II). In the instant case, claims 2-10 are directed to a process, claims 11-16 are directed to a manufacture, and claims 17-21 are directed to a machine. Therefore, claims 2-21 are directed to statutory subject matter under Step 1 of the Alice/Mayo test (Step 1: YES).
The claims are then analyzed to determine if the claims are directed to a judicial exception. See MPEP 2106.04. In determining whether the claims are directed to a judicial exception, the claims are analyzed to evaluate whether the claims recite a judicial exception (Prong 1 of Step 2A), as well as analyzed to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of the judicial exception (Prong 2 of Step 2A). See MPEP 2106.04.
Taking claim 2 as representative, claim 2 recites at least the following limitations that are believed to recite an abstract idea:
maintaining user queries issued by a plurality of users;
identifying, using user queries, a plurality of brands included in the user queries, a plurality of advanced user queries that include one or more search terms;
collecting using the user queries, user activities associated with the user queries, wherein the user activities are actions performed by the plurality of users during sessions, and wherein the user activities include actions performed by the users after submitting respective queries;
for ones of the plurality of brands, identifying one or more non-brand terms associated with respective ones of the brands;
determining, for pairs of brands of the plurality of brands, respective recommendation scores that are based on the associated non-brand terms for corresponding pairs of brands, wherein a given recommendation score is indicative of a strength of relationship between a respective pair of brands and is based on a number of users whose sessions included the associated non-brand terms in queries and wherein the sessions included similar user activity between one another following the queries;
in response to an indication of a current user activity with the services performed by a particular user and related to a particular category of items, identifying, based on the collected user activities, a preferred brand for the particular user in the particular category;
determining one or more recommendations based on the particular category and the preferred brand; and
providing, to the particular user while still active with the services, the one or more recommendations.
The above limitations recite the concept of providing brand recommendations based on analysis. These limitations, under their broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they recite commercial or legal interactions such as advertising, marketing, or sales activities or behaviors. Specifically, the invention relates to marketing or sales activities. This is illustrated in [0003] of the Specification, describing the invention as relating to shopping for items. Furthermore, the limitations, under their broadest reasonable interpretation, fall within the “Mental Processes” grouping of abstract ideas, enumerated in the MPEP, in that they recite concepts performed in the human mind, such as observations, evaluations, judgements, and opinions. Specifically, the limitations recite concepts similar to collecting information, analyzing it, and displaying certain results of the collection and analysis. Independent claims 11 and 17 recite similar limitations as claim 2 and further recite the additional abstract ideas of identifying, based on the respective queries; and presenting at least one of the one or more recommendations. As such, claims 11 and 17 fall within the same identified groupings of abstract ideas. Accordingly, under Prong One of Step 2A of the MPEP, claims 2, 11, and 17 recite an abstract idea (Step 2A, Prong One: YES).
Under Prong Two of Step 2A of the MPEP, claim 2, 11, and 17 recite additional elements, such as a networked computer system, a network-accessible storage medium, a database, online services, actions performed online, one or more logical operators to apply the search terms, online sessions, computing devices, a computing device, a non-transitory machine-readable medium having stored thereon machine-readable instructions executable to cause a machine to perform operations, a system, a non-transitory memory; and one or more hardware processors coupled to the non-transitory memory and configured to read instructions from the non-transitory memory to cause the system to perform operations. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. As such, these computer-related limitations are not found to be sufficient to integrate the abstract idea into a practical application. Although these additional computer-related elements are recited, claims 2, 11, and 17 merely invoke such additional elements as a tool to perform the abstract idea. Implementing an abstract idea on a generic computer is not indicative of integration into a practical application. Similar to the limitations of Alice, claims 2, 11, and 17 merely recite a commonplace business method (i.e., providing brand recommendations based on analysis) being applied on a general purpose computer. See MPEP 2106.05(f). Furthermore, claims 2, 11, and 17 generally link the use of the abstract idea to a particular technological environment or field of use. The courts have identified various examples of limitations as merely indicating a field of use/technological environment in which to apply the abstract idea, such as specifying that the abstract idea of monitoring audit log data relates to transactions or activities that are executed in a computer environment, because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer (see FairWarning v. Iatric Sys.). Likewise, claims 2, 11, and 17 specifying that the abstract idea of providing brand recommendations based on analysis is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer. As such, under Prong Two of Step 2A of the MPEP, when considered both individually and as a whole, the limitations of claims 2, 11, and 17 are not indicative of integration into a practical application (Step 2A, Prong Two: NO).
Since claims 2, 11, and 17 recite an abstract idea and fail to integrate the abstract idea into a practical application, claims 2, 11, and 17 are “directed to” an abstract idea (Step 2A: YES).
Next, under Step 2B, the claims are analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract idea. See MPEP 2106.05. The instant claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for at least the following reasons.
Returning to independent claims 2, 11, and 17 these claims recite additional elements, such as a networked computer system, a network-accessible storage medium, a database, online services, actions performed online, one or more logical operators to apply the search terms, online sessions, computing devices, a computing device, a non-transitory machine-readable medium having stored thereon machine-readable instructions executable to cause a machine to perform operations, a system, a non-transitory memory; and one or more hardware processors coupled to the non-transitory memory and configured to read instructions from the non-transitory memory to cause the system to perform operations. As discussed above with respect to Prong Two of Step 2A, although additional computer-related elements are recited, the claims merely invoke such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). Moreover, the limitations of claims 2, 11, and 17 are manual processes, (e.g., receiving information, analyzing information, etc.). The courts have indicated that mere automation of manual processes is not sufficient to show an improvement in computer-functionality (see MPEP 2106.05(a)(I)). Furthermore, as discussed above with respect to Prong Two of Step 2A, claims 2, 11, and 17 merely recite the additional elements in order to further define the field of use of the abstract idea, therein attempting to generally link the use of the abstract idea to a particular technological environment, such as the Internet or computing networks (see Ultramercial, Inc. v. Hulu, LLC. (Fed. Cir. 2014); Bilski v. Kappos (2010); MPEP 2106.05(h)). Similar to FairWarning v. Iatric Sys., claims 2, 11, and 17 specifying that the abstract idea of providing brand recommendations based on analysis is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claim to the computer field, i.e., to execution on a generic computer.
Even when considered as an ordered combination, the additional elements do not add anything that is not already present when they are considered individually. In Alice Corp., the Court considered the additional elements “as an ordered combination,” and determined that “the computer components…‘[a]dd nothing…that is not already present when the steps are considered separately’ and simply recite intermediated settlement as performed by a generic computer.” Id. (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Similarly, viewed as a whole, claims 2, 11, and 17 simply convey the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B of the Alice/Mayo test, there are no meaningful limitations in claims 2, 11, and 17 that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself (Step 2B: NO).
Dependent claims 3-10, 12-16, and 18-21, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because they do not add “significantly more” to the abstract idea. Dependent claims 3-10, 12-16, and 18-21 further fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they recite commercial or legal interactions such as advertising, marketing, or sales activities or behaviors and managing personal behavior or relationships or interactions between people. Additionally, the claims further fall within the “Mental Processes” grouping of abstract ideas, enumerated in the MPEP, in that they recite concepts performed in the human mind, such as observations, evaluations, judgements, and opinions. Dependent claims 3-10, 12-16, and 18-21 fail to identify additional elements and as such, are not indicative of integration into a practical application. As such, under Step 2A, dependent claims 3-10, 12-16, and 18-21 are “directed to” an abstract idea. Similar to the discussion above with respect to claims 2, 11, and 17 dependent claims 3-10, 12-16, and 18-21, analyzed individually and as an ordered combination, merely further define the commonplace business method (i.e., providing brand recommendation based on an analysis) being applied on a general purpose computer and, therefore, do not amount to significantly more than the abstract idea itself. See MPEP 2106.05(f)(2). Further, these limitations generally link the use of the abstract idea to a particular technological environment or field of use. Accordingly, under the Alice/Mayo test, claims 2-21 are ineligible.
Prior Art Considerations
Claims 2-21 include substantially the same limitations as those discussed in the Allowable Subject Matter section of the Office action dated 06/11/2026. Claims 2-21 are allowable for substantially the same reasons as discussed in the 06/11/2026 Office action. For further details, see the Allowable Subject Matter section of the Office action dated 06/11/2026.
Response to Arguments
Applicant’s arguments, filed 08/11/2026, have been fully considered.
35 U.S.C. § 101
Applicant argues the claims do not recite certain methods of organizing human activity or mental processes because the “claims do not recite any limitation related to ‘managing personal behavior or relationships or interactions between people’…[a]lthough the claims recite features associated with online shopping, Applicant submits that one of ordinary skill could apply the teachings of the specification to other purposes” (Remarks pages 8-9). The examiner disagrees. The MPEP enumerates groupings of abstract ideas, thereby synthesizing the holdings of various court decisions to facilitate examination. See MPEP 2106.04. Among the enumerated groupings is the Certain Methods of Organizing Human Activity grouping, which includes activity that falls within the enumerated sub-grouping of commercial or legal interactions, including subject matter relating to agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations and the Mental Processes grouping, which includes concepts performed in the human mind, such as observations, evaluations, judgements, and opinions. With respect to the claim amendments, the examiner notes a networked computer system, a network-accessible storage medium, a database, online services, actions performed online, one or more logical operators to apply the search terms, online sessions, computing devices, a computing device, a non-transitory machine-readable medium having stored thereon machine-readable instructions executable to cause a machine to perform operations, a system, a non-transitory memory; and one or more hardware processors coupled to the non-transitory memory and configured to read instructions from the non-transitory memory to cause the system to perform operations have been analyzed as additional elements and accordingly are not analyzed under Step 2A, Prong 1. The claims further recite limitations such as analyzing information to provide brand recommendations. These amendments represent certain methods of organizing human activity. This is illustrated in [0003] of the Specification, describing the invention as relating to shopping for items. These limitations fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they recite commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). Specifically, the limitations of claim 1 represent sales activities and behaviors because the limitations recite providing recommendations for brands. The examiner notes that the claims themselves recite specific steps for providing recommendations according to brand information. These claims do not relate to legislative actions or medical conditions. These are sales activities because they pertain to shopping (Spec: [0003]). Furthermore, the limitations recite concepts similar to collecting information, analyzing it, and displaying certain results of the collection and analysis. Thus, the claims recite mental processes. Accordingly, these claims recite Certain Methods of Organizing Human Activity and Mental Processes.
Applicant argues the claims are integrated into a practical application because the “the recited claim elements are necessary to implement the recited limitations…use of humans to collect and analyze user query data is untenable…the networked computer system is an essential element for practical implementation of the recited method” (Remarks page 10). The examiner disagrees. The MPEP sets forth, in Step 2A Prong Two, that a claim that recites a judicial exception is not directed to that judicial exception, if the claim as a whole “integrates the recited judicial exception into a practical application of that exception.” The evaluation of Prong Two requires the use of the considerations (e.g. improving technology, effecting a particular treatment or prophylaxis, implementing with a particular machine, etc.) identified by the Supreme Court and the Federal Circuit, to ensure that the claim as a whole ‘integrates [the] judicial exception into a practical application [that] will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.’ In the instant case, the claims include additional elements such as a networked computer system, a network-accessible storage medium, a database, online services, actions performed online, one or more logical operators to apply the search terms, online sessions, computing devices, a computing device, a non-transitory machine-readable medium having stored thereon machine-readable instructions executable to cause a machine to perform operations, a system, a non-transitory memory; and one or more hardware processors coupled to the non-transitory memory and configured to read instructions from the non-transitory memory to cause the system to perform operations. While these elements are recited, they are merely peripherally incorporated in order to implement the abstract idea. Put another way, these additional elements are merely used to apply the abstract idea of providing brand recommendations based on analysis in a technological environment without effectuating any improvement or change to the functioning of the additional elements or other technology. Applicant’s disclosure does not articulate or suggest how these additional elements function, individually or in combination, in any manner other than using generic functionality nor does the disclosure articulate how the elements provide a technical improvement. The examiner notes that a human could be active with a service while being provided recommendations, perhaps in a store, and thus this concept is not an additional element. The fact of the user being active in an online environment is merely high level and insufficient to integrate into a practical application. Furthermore, with regards to the argument that the analysis is “untenable,” claiming the improved speed or efficiency inherent with applying the abstract idea on a computer does not integrate a judicial exception into a practical application or provide an inventive concept. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they merely amount to using the computing components as a tool to perform the abstract idea.
Applicant argues the claims are patent eligible because they “amount to significantly more than the alleged abstract idea” (Remarks pages 10-11). The examiner disagrees. The MPEP sets forth that if a claim has been determined to be directed to a judicial exception under revised Step 2A, examiners should then evaluate the additional elements individually and in combination under Step 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). In this case, Applicant's claims merely recite steps of a method with generic computer components being recited in a generic manner. While additional elements such as a networked computer system, a database, one or more logical operators to apply the search terms, online sessions, computing devices, a computing device, a non-transitory machine-readable medium having stored thereon machine-readable instructions executable to cause a machine to perform operations, a system, a non-transitory memory; and one or more hardware processors coupled to the non-transitory memory and configured to read instructions from the non-transitory memory to cause the system to perform operations, they are claimed in a generic manner and merely perform generic functions. The additional elements are merely peripherally incorporated in order to implement the abstract idea. Put another way, these additional elements are merely used to apply the abstract idea of providing brand recommendations in a technological environment without effectuating any improvement or change to the functioning of the additional elements or other technology. Applicant’s disclosure does not articulate or suggest how these additional elements function, individually or in combination, in any manner other than using generic functionality nor does the disclosure articulate how the elements provide a technical improvement. Accordingly, the additional elements do not amount to significantly more because they merely amount to using a networked computer system, a database, one or more logical operators to apply the search terms, online sessions, computing devices, a computing device, a non-transitory machine-readable medium having stored thereon machine-readable instructions executable to cause a machine to perform operations, a system, a non-transitory memory; and one or more hardware processors coupled to the non-transitory memory and configured to read instructions from the non-transitory memory to cause the system to perform operations as a tool to perform the abstract idea. Furthermore, with respect to Applicant’s arguments regarding improving the accuracy of results, the examiner notes that improving recommendation accuracy is merely an improvement to the abstract idea and not a technical improvement. Thus, the 101 rejection has been maintained.
Applicant argues the dependent claims are eligible for the same reasons as the independent claims (Remarks page 11). The examiner disagrees. The independent claims are rejected under 35 USC 101 for the reasons discussed in the paragraph above and the 101 rejection above. The dependent claims are rejected for the same reasons.
Conclusion
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/ANNA MAE MITROS/Examiner, Art Unit 3689
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