DETAILED ACTION
Status of Claims
• The following is an office action in response to the communication filed 01/22/2026.
• 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.
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:
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 issued by a plurality of users, 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 user activity 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, 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. Additionally, the claims recite managing personal behavior or relationships or interactions between people. Specifically, the determination of recommendations is similar to filtering content. 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, as such, 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 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. 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 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 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.
Allowable Subject Matter
Claims 2-21 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 101, set forth in this Office action.
Upon review of the evidence at hand, it is hereby concluded that the evidence obtained and made of record, alone or in combination, neither anticipates, reasonably teaches, nor renders obvious the below noted features of applicant’s invention as the noted features amount to more than a predictable use of elements in the prior art.
The most relevant prior art made of record includes previously cited Davis et al. (US 20090176509 A1), hereinafter Davis, previously cited Parikh et al. (US 20090070323 A1), hereinafter Parikh, previously cited Walker et al. (US 20070150354 A1), hereinafter Walker, newly cited Tavor et al. (US 6070149 A), hereinafter Tavor, and previously cited NPL Reference U, initially cited in the Office action dated 12/18/2024.
Although individually the references teach concepts such as advances queries, collecting activities performed after the queries, determining brand scores for pairs of brands, and identifying preferred brands for a particular category, none of the references teach nor render obvious that advanced search queries with logical operators are identified and user activity performed after the query collected to determine, for pairs of brands, recommendation scores and identify a preferred brand for a particular category in order to provide recommendations.
Previously cited Davis discloses a method of providing information related to user interests (Davis: [0073]). Interests of a user may be determined to be related as “co-occurrences.” The interests can include brands. The strength of relation of the interests may be determined and quantified by a numeric value. Two objects may be considered related if the strength of the relation is greater than a defined threshold value (Davis: [0063]; [0048]). User and interests may be mapped in response to requests (Davis: [0035]). Associations may be displayed to a user (Davis: [0060]). Yet Davis does not explicitly disclose all of the limitations pertaining to the user queries, and that the preferred brand is for a particular category.
Previously cited Parikh teaches a recommendation system (Parikh: [0047]). Parikh further teaches user queries where attributes such as brand may be retrieved from the queries. Attributes are extracted from the buying behavior of one or more users as a result of the submission of the first query Q1600 and the second query Q1602. As an example, a user purchases an item in a category called ‘aircraft video game’ resulting from a search by the user using the first query Q1600. Similarly, another user purchases another item in a category called ‘golf electronic game’ resulting from a search by the user using the second query Q1602 (Parikh: [0061-0063]). However, Parikh does not explicitly teach all of the limitations regarding the recommendation scores for pairs of brands and the advanced queries.
Previously cited Walker teaches a brand shopping system (Walker: [abstract]). Walker further teaches making brand determinations for a user, where a given product category might include five different brands of products. A customer may be brand-indifferent to three of the brands of products but dislike or not prefer the other two brands of products. Thus, the customer would be happy with any of the first three brands of products and is brand-indifferent among them (Walker: [0006]). A customer may create a product category labeled ‘snacks’ and designate that the ‘snacks’ product category will include three different brand name bags of potato chips, two different brand name cans of peanuts, five different brand name cartons of cookies, and three different brand name chocolate bars (Alker: [0032]). However, Walker does not teach the limitations regarding the recommendation scores for pairs of brands and the advanced queries.
Newly cited Tavor teaches a product search method (Tavor: [abstract]). Tavor further teaches searching based on preferred brands (Tavor: Col. 28, Ln. 35-43). Tavor additionally discloses advanced queries using logic operators (Tavor: Col. 45, Ln. 9-16). However, Tavor does not teach the limitations regarding the recommendation scores for pairs of brands and the preferred brand for a category.
Previously cited NPL Reference U, initially cited in the Office action dated 12/18/2024, teaches item to item comparisons. Items may be vectorized and the distance calculated between them. Recommendations may be provided to customers. However, U does not teach all of the limitations regarding the recommendation scores for pairs of brands, the advanced queries, and the preferred brand for a category.
While these references arguably teach the claimed limitations using a piecemeal analysis, these 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). Accordingly, claims 2, 11, and 17, taken as a whole, are indicated to be allowable over the cited prior art. The examiner emphasizes that it is the interrelationship of the limitations that renders these claims allowable over the prior art/additional art. Claims 3-10, 12-16, and 18-21 depend from claims 2, 11, and 17, and therefore the dependent claims are also indicated as containing allowable subject matter.
The examiner further emphasizes the claims as a whole and hereby asserts that the totality of the evidence fails to set forth, either explicitly or implicitly, an appropriate rationale for further modification of the evidence at hand to arrive at the claimed invention. The combination of features as claimed would not have been obvious to one of ordinary skill in the art as combining various references from the totality of the evidence to reach the combination of features as claimed would require a substantial reconstruction of the Applicant's claimed invention relying on improper hindsight bias.
It is thereby asserted by the examiner that, in light of the above and in further deliberation over all the evidence at hand, that the claims are allowable as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in the art.
Response to Arguments
Applicant’s arguments, filed 01/22/2026, have been fully considered.
35 U.S.C. § 101
Applicant argues the claims are eligible because “collecting, from a networked database, data on advanced user activities associated with a plurality of users requires networked computing systems and access to far more information that a human is capable of processing within reason…claim 2 recites more than merely organizing human activity” (Remarks page 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. With respect to the claim amendments, the examiner notes 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 have been analyzed as additional elements and accordingly are not analyzed under Step 2A, Prong 1. The amendments 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. These are sales activities because they pertain to shopping (Spec: [0003]). Accordingly, these claims recite Certain Methods of Organizing Human Activity.
Applicant argues the claims are integrated into a practical application because the claims do “more than simply recite computer-related elements into an otherwise human behavior” (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 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. 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. It is noted that providing more in depth insights is merely an improvement to the abstract idea and not a technical improvement. 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 11 and 17 are eligible for the same reasons as claim 2 (Remarks page 10). The examiner disagrees. Claim 2 is rejected under 35 USC 101 for the reasons discussed in the paragraph above and the 101 rejection above. Claims 11 and 17 are rejected for the same reasons.
Applicant argues the claims are patent eligible because they “amount to significantly more than a mere abstract idea implemented on generic computer systems” (Remarks page 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. Thus, the 101 rejection has been maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA MAE MITROS whose telephone number is (571)272-3969. The examiner can normally be reached Monday-Friday from 9:30-6.
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/ANNA MAE MITROS/Examiner, Art Unit 3689
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