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 Request for Continued Examination (RCE) filed 1/21/26. Claims 8, 11, 13-17, 19, 21, 24, 26, and 27 have been amended. Claims 1-7, 10, 18, 20, and 23 are canceled. Claims 8, 9, 11-17, 19, 21, 22, and 24-27 are pending.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/21/26 has been entered.
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, 9, 11-17, 19, 21, 22, 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, 9, and 11-14 are directed to a method (i.e., a process), claims 15-17, and 19 are directed to a system (i.e., a machine), and claims 21, 22, and 24-27 are directed to a non-transitory computer readable medium. Accordingly, claims 8, 9, 11-17, 19, 21, 22, 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 user features including a device type for each of a plurality of users, respectively;
generating, by a group selection component, a treatment group and a control group from the plurality of users 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 user corresponding to a feature vector of the pair of similar feature vectors to the treatment 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 hardware user interface via the digital content channel, customized content to a user device of a second user based on the average treatment effect estimator according to user features of the second user including 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 user features including a device type for each of a plurality of users, respectively; generating a treatment group and a control group from the plurality of users; assigning a first user corresponding to a 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 second user based on the average treatment effect estimator according to user features of the second user including a corresponding device type 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, a user device, a hardware 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 device, hardware 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 9, 11-14, 16, 17, 19, 22, 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) 9, 11-14, 16, 17, 19, 22, and 24-27 recite the same abstract ideas. Claims 9, 11-14, 16, 17, 19, 22, and 24-27 describe further limitations regarding the partitioning, 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 user in the groups and to remove the user. 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 hardware 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, 9, 11-17, 19, 21, 22, and 24-27 are ineligible under 35 USC §101.
Response to Arguments
Applicant’s arguments, see pages 14-18, filed 1/21/26, with respect to claims 8, 15, and 21 have been fully considered and are persuasive. The 103 rejection has been withdrawn. The 112(a) rejection has also been withdrawn due to persuasive arguments on page 21, filed 1/21/26.
Applicant's additional arguments filed 1/21/26 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 1/21/26.
(1) Applicant requests that the rejection of claims 8-9 and 11-14 under 35 U.S.C. § 101
be withdrawn.
(A) As per the first argument, see 101 rejection above. Examiner disagrees that claims 8, 15, and 21 do not recite an abstract idea. 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 user features including a device type for each of a plurality of users, respectively; generating a treatment group and a control group from the plurality of users; assigning a first user corresponding to a 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 second user based on the average treatment effect estimator according to user features of the second user including a corresponding device type 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.
Applicant’s arguments regarding Example 39 are not persuasive because unlike Applicant’s claims, Example 39 was determined to not recite a judicial exception. Furthermore, Example 39 is related to digital facial images and involves different technology than Applicant’s claims. Similar to Example 47, Applicant’s claims recite an algorithm (e.g., recursive partitioning). Also, note the mathematical calculations throughout Applicant’s Specification. The judicial exception is not integrated into a practical application. In particular, the components, processor, memory, digital content channel, user device, hardware 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. Applicant’s argument that the claim recites “an improvement to the machine learning technology accuracy of machine learning technology” is not persuasive. The additional element of “training, by a machine learning model, an average treatment effect estimator…” 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). Furthermore, paragraphs 21 & 22 of Applicant’s Specification pointed to by Applicant do not recite a technical improvement. Rather, they recite non-technical improvements such as “delivering customized content to users who will likely respond in an expected manner.” As such, Applicant’s arguments are not persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited but not applied prior art teaches a comparison of five recursive partitioning methods to find person subgroups involved in meaningful treatment–subgroup interactions (Doove et al.).
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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/LENA NAJARIAN/Primary Examiner, Art Unit 3687