DETAILED ACTION
Claims 1-20 are pending in this application. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/17/2026 has been entered.
Response to Amendment
Applicant's amendment dated March 17, 2026 has been entered. Claims 1, 5, 8, 12, 15, and 19 have been amended.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding claims 1-20, under Step 1, the claims recite a process, machine, manufacture, or composition of matter. Under Step 2A claims 1-20 recite a judicial exception (abstract idea) that is not integrated into a practical application and does not provide significantly more.
Under Step 2A (prong 1), and taking claim 1 as representative, claim 1 recites: A method comprising: receiving a search query including a set of search terms associated with a merchant system; executing, by a processing device, a machine-learning model trained to identify, from the search query, a first subset of one or more multi-term phrases of the set of search terms associated with one or more named entity types, wherein each of the one or more multi-term phrases comprises two or more search terms of the set of search terms; generating a set of tokens corresponding to the search query, wherein the set of tokens comprises a subset of tokens associated with each of the one or more multi-term phrases associated with the one or more named entity types; executing a comparison of the set of tokens to a document index associated with the merchant system to identify one or more matching documents, wherein the comparison identifies a match of an entire multi-term phrase in the one or more documents of the document index; and generating, based on the comparison, a set of search results comprising the one or more matching documents.
The above limitations set forth a procedure for organizing human activity, such as by performing commercial interactions including marketing activity and business relations. This is because the claim recites the steps performed in order to generate a set of search results associated with a merchant (Specification ¶0002). Accordingly, under step 2A (prong 1) the claim recites an abstract idea because the claim recites limitations that fall within the “Certain methods of organizing human activity” grouping of abstract ideas. MPEP 2106.04.
Under Step 2A (prong 2), the abstract idea is not integrated into a practical application. Claim 1 recites additional elements, including a processing device, a machine-learning model, and memory.
These additional elements are not sufficient to integrate the abstract idea into a practical application. This is because the additional elements of claim 1 are recited at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or merely uses a computer as a tool to perform an abstract idea). Further, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as computers or computing networks).
Secondly, the additional elements are insufficient to integrate the abstract idea into a practical application because the claim fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement the judicial exception with, or use the judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) 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.
In view of the above, under Step 2A (prong 2), claim 1 does not integrate the recited exception into a practical application.
Under Step 2B, examiners should evaluate additional elements individually and in combination 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, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Taken individually or as a whole the additional elements of claim 1 do not provide an inventive concept (i.e. they do not amount to “significantly more” than the exception itself). As discussed above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed process amount to no more than the mere instructions to apply the exception using a generic computer and/or no more than a general link to a technological environment. MPEP 2106.05.
In view of the above, representative claim 1 does not provide an inventive concept (“significantly more”) under Step 2B, and is therefore ineligible for patenting.
Dependent claims 2-7 recite limitations which are similarly directed to and elaborate on the judicial exception (abstract idea) of claim 1. Thus, each of claims 2-7 are held to recite a judicial exception under Step 2A (prong 1) for at least similar reasons as discussed above.
Furthermore, claims 2-7 do not set forth further additional elements. Considered both individually and as a whole, claims 2-7 do not integrate the recited exception into a practical application for at least similar reasons as discussed above.
Lastly, under step 2B, dependent claims 2-7 do not provide an inventive concept (i.e. they do not amount to “significantly more” than the exception itself). This is again because the claims merely apply the exception on generic computing hardware, generally link the exception to a technological environment, and specified at a high level of generality.
Claims 8-20 are parallel, i.e. recite similar concepts and elements, to claims 1-7, analyzed above, and the same rationale is applied.
In view of the above, claims 1-20 do not provide an inventive concept (“significantly more”) under Step 2B, and are therefore ineligible for patenting.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Dimitrov et al., US PG Pub 2013/0305149 A1 (hereafter “Dimitrov”), previously cited, in view of Kohlschuetter et al., US PG Pub 2018/0349472 A1 (hereafter “Kohlschuetter”), previously cited, and in further view of Cragun et al., US PG Pub 2014/0146053 A1 (hereafter "Cragun").
Regarding claim 1, Dimitrov teaches a method comprising:
receiving a search query including a set of search terms associated with a merchant system (¶¶0096-0097 and 0106-0116);
executing, by a processing device, a machine-learning model trained to identify, from the search query, a first subset of one or more multi-term phrases of the set of search terms associated with one or more named entity types (Figure 6 and ¶¶0068, 0079-0083, and 0096-0116);
generating a set of tokens corresponding to the search query, wherein the set of tokens comprises a subset of tokens associated with each of the one or more multi-term phrases associated with the one or more named entity types (¶¶0097-0105);
executing a comparison of the set of tokens to a document index associated with the merchant system to identify one or more matching documents (¶¶0091-0093, 0096-0109, 0130, and 0197); and
generating, based on the comparison, a set of search results comprising the one or more matching documents (¶¶0095-0118).
Dimitrov does not teach wherein each of the one or more multi-term phrases comprises two or more search terms of the set of search terms. Kohlschuetter teaches methods and systems for providing query suggestions including the known technique wherein each of the one or more multi-term phrases comprises two or more search terms of the set of search terms (¶¶0234-0237, 0267-0279, 0293-0297, and 0304-0309). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Dimitrov, to include phrases comprises two or more search terms as taught by Kohlschuetter, in order to “effectively determine whether terms in the index structure likely represent documents that may be interested to the user,” as suggested by Kohlschuetter (¶0010).
Further, the claimed invention is merely a combination of old elements in a similar field of endeavor, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that, given the existing technical ability to combine the elements as evidenced by Kohlschuetter, the results of the combination were predictable.
Dimitrov teaches identifying document keywords and key phrases (¶0087) but does not explicitly teach wherein the comparison identifies a match of an entire multi-term phrase in the one or more documents of the document index. Cragun teaches the known technique wherein the comparison identifies a match of an entire multi-term phrase in the one or more documents of the document index (¶0064). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Dimitrov, to include matching an entire phrase as taught by Cragun, in order to "have a higher relevance rating value," as suggested by Cragun (¶0064).
Further, the claimed invention is merely a combination of old elements in a similar field of endeavor, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that, given the existing technical ability to combine the elements as evidenced by Cragun, the results of the combination were predictable.
Regarding claim 2, Dimitrov in view of Kohlschuetter and Cragun teaches the method of claim 1, wherein the machine-learning model comprises a named entity recognition (NER) model (Dimitrov ¶¶0098 and 0161).
Regarding claim 3, Dimitrov in view of Kohlschuetter and Cragun teaches the method of claim 1, wherein the first subset of one or more multi-term phrases comprise one or more NER phrases (Dimitrov ¶¶0083, 0098, and 0161).
Regarding claim 4, Dimitrov in view of Kohlschuetter and Cragun teaches the method of claim 3, further comprising identifying a second subset of one or more multi-term phrases comprising one or more custom phrases, wherein the one or more custom phrases are defined by the merchant system (Dimitrov ¶¶0078, 0098, 0126, 0161, 0201, and 0205).
Regarding claim 5, Dimitrov in view of Kohlschuetter and Cragun teaches the method of claim 1, wherein the one or more matching documents include all search terms of a first multi-term phrase of the one or more multi-term phrases, and wherein all the search terms are in a same order as the first multi-term phrase in the search query (Dimitrov ¶¶0078, 0092-0107, and 0198).
Regarding claim 6, Dimitrov in view of Kohlschuetter and Cragun teaches the method of claim 1, further comprising receiving one or more selections of the one or more named entity types identifiable by the machine-learning model (Dimitrov ¶¶0065, 0069, 0079-0083, 0093, and 0161).
Regarding claim 7, Dimitrov in view of Kohlschuetter and Cragun teaches the method of claim 1, wherein the one or more matching documents include a sequence of terms matching at least a portion of a first multi-term phrase of the one or more multi-term phrases and another term associated with a token of the search query (Dimitrov ¶¶0097-0105 and 0135-0136).
Regarding claims 8-20, all of the limitations in claims 8-20 are closely parallel to the limitations of method claims 1-7, analyzed above, and are rejected on the same bases.
Response to Arguments
Applicant's arguments filed 3/17/2026 have been fully considered but they are not persuasive. In response to applicant’s arguments regarding the §101 rejection (Remarks p. 7-8), the examiner disagrees. Applicant states that the claims are integrated into a practical application because they recite a machine learning model at a high level of generality. All of the claim limitations are abstract but for the mere instructions to perform them by a processing device and a machine learning model. This is the mere instructions to "apply" the abstract idea on a generic computer recited at a high level of generality. There are no details recited as to what hardware is required by the claims or what the machine learning model may comprise. The examiner cannot identify any improvement to machine learning or processing devices in the specification, and to the extent that applicant believes such an improvement is described by the specification it is not reflected in the claims. As shown in the rejection the recited additional elements of a processing device, a machine-learning model, and memory are not integrated into a practical application and do not constitute significantly more than the abstract idea for the reasons stated above.
In response to applicant's argument that Dimitrov does not order the documents (Remarks p. 8-9), the examiner disagrees. Dimitrov describes in ¶0069 and ¶0093 that the Document Processing Pipeline method processes the search terms of the documents in order. Dimitrov teaches another embodiment in Figure 10 in which the order of the terms does not prevent finding the most relevant document, however the prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives. MPEP 2123. Therefore, Dimitrov teaches the limitation. The newly cited reference explicitly teaches the amended limitation of claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Venkoba et al., US PG Pub 2020/0265055 A1, teaches a method and system for improving relevancy and ranking of search results.
Non-patent literature Ristoski, Petar, et al. teaches a machine learning approach for product matching and categorization.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER B SEIBERT whose telephone number is (571)272-5549. The examiner can normally be reached Monday - Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeff Smith can be reached at 571-272-6763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER B SEIBERT/Primary Examiner, Art Unit 3688
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