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 .
Notice to Applicant
This communication is in response to the amendment filed 5/6/26. Claims 8, 12-17, 21, and 25-27 have been amended. Claims 1-7, 9, 10, 18-20, 22, and 23 are cancelled. Claims 8, 11-17, 21, and 24-27 are pending.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “…component configured to…” in claim 15 and “…component is further configured to…“ in claims 16 and 17.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 8, 11-17, 21, and 24-27 are rejected under 35 U.S.C. §101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claims 8 and 11-14 are directed to a method (i.e., a process), claims 15-17 are directed to a system (i.e., a machine), and claims 21 and 24-27 are directed to a non-transitory computer readable medium. Accordingly, claims 8, 11-17, 21, and 24-27 are all within at least one of the four statutory categories.
Step 2A - Prong One:
Regarding Prong One of Step 2A, the claim limitations are to be analyzed to determine whether, under their broadest reasonable interpretation, they “recite” a judicial exception or in other words whether a judicial exception is “set forth” or “described” in the claims. An “abstract idea” judicial exception is subject matter that falls within at least one of the following groupings: a) certain methods of organizing human activity, b) mental processes, and/or c) mathematical concepts.
Representative independent claim 8 includes limitations that recite at least one abstract idea. Specifically, independent claim 8 recites:
8. A method for content customization, comprising:
identifying, by a user feature component, a plurality of feature vectors that represent a device type for each of a plurality of user devices, respectively;
generating, by a group selection component, a treatment group and a control group from the plurality of feature vectors during a recursive partitioning operation by recursively identifying, according to a number of iterations, a pair of similar feature vectors of the plurality of feature vectors and assigning a first feature vector of the pair of similar feature vectors to the treatment group or the control group;
obtaining, via communication with a digital content channel, treatment outcome data for the treatment group;
training, by a machine learning model, an average treatment effect estimator by scaling the treatment outcome data for the treatment group according to the number of iterations of the recursive partitioning operation; and
displaying, by a user interface via the digital content channel, customized content to a user device based on the average treatment effect estimator and a corresponding device type of the user device.
The Examiner submits that the foregoing underlined limitations constitute “certain methods of organizing human activity” because identifying a plurality of feature vectors that represent a device type for each of a plurality of user devices, respectively; generating a treatment group and a control group from the plurality of feature vectors and assigning a first feature vector of the pair of similar feature vectors to the treatment group or the control group; obtaining treatment outcome data for the treatment group; and displaying customized content to a user based on the average treatment effect estimator and a corresponding device type of the user device amount to managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions), at the currently claimed high level of generality.
The Examiner submits that the foregoing underlined limitations constitute “mathematical concepts” because a recursive partitioning operation by recursively identifying, according to a number of iterations, a pair of similar feature vectors of the plurality of feature vectors; and training an average treatment effect estimator by scaling the treatment outcome data for the treatment group according to the number of iterations of the recursive partitioning operation amount to mathematical relationships/calculations, at the currently claimed high level of generality.
Accordingly, the claim recites at least one abstract idea.
Step 2A - Prong Two:
Regarding Prong Two of Step 2A, it must be determined whether the claim as a whole integrates the abstract idea into a practical application. It must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application.”
The limitations of claims 8, 15, and 21 as drafted, is a process that, under its broadest reasonable interpretation, covers certain methods of organizing human activity and mathematical concepts but for the recitation of generic computer components. That is, other than reciting components, a processor, a memory, a digital content channel, user devices, a user device, a user interface, a non-transitory computer readable medium, and at least one processor used to perform the limitations, nothing in the claim elements precludes the steps from practically being certain methods of organizing human activity or mathematical concepts. If a claim limitation, under its broadest reasonable interpretation, covers managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) and mathematical concepts but for the recitation of generic computer components, then it falls within the “certain methods of organizing human activity” and “mathematical concepts“ groupings of abstract ideas. Accordingly, the claims recite an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the components, processor, memory, digital content channel, user devices, user device, user interface, non-transitory computer readable medium, and at least one processor are recited at a high-level of generality (i.e., as generic computer components performing generic computer functions of identifying data, generating data, assigning data, obtaining data, performing calculations, and displaying content) such that it amounts no more than mere instructions to apply the exception using generic computer components. The claims recite the additional element of training by a machine learning model which is merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in 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 claims are directed to an abstract idea.
Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. For instance, there is no indication that the additional elements, when considered as a whole, reflect an improvement in the functioning of a computer or an improvement to another technology or technical field, apply or use the above-noted judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implement/use the above-noted judicial exception with a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is not more than a drafting effort designed to monopolize the exception (see MPEP § 2106.05). Their collective functions merely provide conventional computer implementation.
Claims 11-14, 16, 17, and 24-27 are ultimately dependent from Claim(s) 8, 15, and 21 and include all the limitations of Claim(s) 8, 15, and 21. Therefore, claim(s) 11-14, 16, 17, and 24-27 recite the same abstract ideas. Claims 11-14, 16, 17, and 24-27 describe further limitations regarding identifying a size for the group, selecting the number of iterations, the treatment group comprises a corset, providing the customized content, monitoring an outcome, computing an estimated treatment effect, generate a selection probability function, and identifying a feature vector in the groups and to remove the feature vector. These are all just further describing the abstract ideas recited in claims 8, 15, and 21, without adding significantly more.
The claims do 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 amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claims are not patent eligible.
Step 2B:
Regarding Step 2B, independent claims 8, 15, and 21 do not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for reasons the same as those discussed above with respect to determining that the claim does not integrate the abstract idea into a practical application.
Regarding the additional limitations directed to a machine learning model configured to train an estimator, a recursive partitioning operation, obtaining data via communication with a digital content channel, and a user interface displaying content to a user device via the digital channel, all of which the Examiner submits merely add insignificant extra-solution activity to the abstract idea or are claimed in a merely generic manner (e.g., at a high level of generality), the Examiner further submits that such steps are not unconventional as they merely consist of performing repetitive calculations and receiving or transmitting data over a network. See MPEP 2106.05(d)(II).
The dependent claims do not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for the same reasons to those discussed above with respect to determining that the dependent claims do not integrate the at least one abstract idea into a practical application.
Therefore, claims 8, 11-17, 21, and 24-27 are ineligible under 35 USC §101.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 12, 16, 17, and 25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The newly added recitations of “…a coreset of the plurality of feature vectors" within claims 12 and 25, “… a selection probability function for each of the plurality of feature vectors“ within claim 16, and “…identify a feature vector in the treatment group and the control group and to remove the feature vector from the treatment group or the control group“ within claim 17 appear to constitute new matter.
In particular, Applicant does not point to, nor was the Examiner able to find support for this newly added language within the specification as originally filed. As such, Applicant is respectfully requested to clarify the above issues and to specifically point out support for the newly added limitations in the originally filed specification and claims.
Applicant is required to cancel the new matter in the reply to this Office Action.
Response to Arguments
Applicant's arguments filed 5/6/26 have been fully considered but they are not persuasive. Applicant’s arguments will be addressed hereinbelow in the order in which they appear in the response field 5/6/26.
(1) Applicant requests the rejection of the claims under 35 U.S.C. 101 be withdrawn.
(A) As per the first argument, see 101 rejection above. The Examiner submits that the foregoing underlined limitations in the 101 rejection above constitute “certain methods of organizing human activity” because identifying a plurality of feature vectors that represent a device type for each of a plurality of user devices, respectively; generating a treatment group and a control group from the plurality of feature vectors and assigning a first feature vector of the pair of similar feature vectors to the treatment group or the control group; obtaining treatment outcome data for the treatment group; and displaying customized content to a user based on the average treatment effect estimator and a corresponding device type of the user device amount to managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions), at the currently claimed high level of generality. According to MPEP 2106.04(a)(2), “the sub-groupings encompass both activity of a single person (for example, a person following a set of instructions or a person signing a contract online) and activity that involves multiple people (such as a commercial interaction), and thus, certain activity between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within the "certain methods of organizing human activity" grouping. It is noted that the number of people involved in the activity is not dispositive as to whether a claim limitation falls within this grouping. Instead, the determination should be based on whether the activity itself falls within one of the sub-groupings.” Note that the claim involves people (i.e., users and groups).
The Examiner submits that the foregoing underlined limitations also constitute “mathematical concepts” because a recursive partitioning operation by recursively identifying, according to a number of iterations, a pair of similar feature vectors of the plurality of feature vectors; and training an average treatment effect estimator by scaling the treatment outcome data for the treatment group according to the number of iterations of the recursive partitioning operation amount to mathematical relationships/calculations, at the currently claimed high level of generality. Accordingly, the claim recites at least one abstract idea. According to MPEP 2106.04(a)(2), “it is important to note that a mathematical concept need not be expressed in mathematical symbols, because "[w]ords used in a claim operating on data to solve a problem can serve the same purpose as a formula." In re Grams, 888 F.2d 835, 837 and n.1, 12 USPQ2d 1824, 1826 and n.1 (Fed. Cir. 1989). See, e.g., SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163, 127 USPQ2d 1597, 1599 (Fed. Cir. 2018) (holding that claims to a ‘‘series of mathematical calculations based on selected information’’ are directed to abstract ideas); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350, 111 USPQ2d 1717, 1721 (Fed. Cir. 2014) (holding that claims to a ‘‘process of organizing information through mathematical correlations’’ are directed to an abstract idea); and Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1280, 103 USPQ2d 1425, 1434 (Fed. Cir. 2012) (identifying the concept of ‘‘managing a stable value protected life insurance policy by performing calculations and manipulating the results’’ as an abstract idea).”
Applicant’s arguments regarding “improvements” are not persuasive because increasing accuracy of an estimate is not a technical improvement. Note that in Ex Parte Desjardins, the Appeals Review Panel (ARP) overall credited benefits including reduced storage, reduced system complexity and streamlining, and preservation of performance attributes associated with earlier tasks during subsequent computational tasks as technological improvements that were disclosed in the patent application specification. It was determined that the specification identified improvements as to how the machine learning model itself operates, including training a machine learning model to learn new tasks while protecting knowledge about previous tasks to overcome the problem of “catastrophic forgetting” encountered in continual learning systems. Importantly, the ARP evaluated the claims as a whole in discerning at least the limitation “adjust the first values of the plurality of parameters to optimize performance of the machine learning model on the second machine learning task while protecting performance of the machine learning model on the first machine learning task” reflected the improvement disclosed in the specification. In Applicant’s claim, the components, processor, memory, digital content channel, user devices, user device, user interface, non-transitory computer readable medium, and at least one processor are recited at a high-level of generality (i.e., as generic computer components performing generic computer functions of identifying data, generating data, assigning data, obtaining data, performing calculations, and displaying content) such that it amounts no more than mere instructions to apply the exception using generic computer components. The claims recite the additional element of training by a machine learning model which is merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in 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.
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 LENA NAJARIAN whose telephone number is (571)272-7072. The examiner can normally be reached Monday - Friday 9:30 am-6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mamon Obeid can be reached at (571)270-1813. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LENA NAJARIAN/Primary Examiner, Art Unit 3687
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