DETAILED ACTION
This communication is in response to the request for continued examination filed 30 March 2026.
Claims 1, 8, and 15 have been amended.
Claims 1-20 are currently pending.
Claims 1-20 are rejected.
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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 30 March 2026 has been entered.
Response to Amendment/Remarks
Applicant’s remarks relating to the double patenting rejections are acknowledged. The rejections remain as shown below.
Regarding 35 USC § 101, Applicant’s remarks have been fully considered but they are not persuasive. Applicant argues that the “claims recite use of a targeting model which is trained using a machine learning algorithm on a set of sample user behavioral data. That is, the claims recite a specific machine learning algorithm that trains a model, thereby improving the model, which is an improvement to computer technology as described in Enfish. As such, the claims recite a practical application (i.e., an improvement to software) which should be considered patentable subject matter in light of the guidance set forth in the Ex parte Desjardins decision and the Squires Memo.” Remarks at 12. Applicant has not provided support for their conclusion that the model is improved, nor that the improved model is an improvement to computer technology. Applicant’s argument is conclusory and is not persuasive.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,423,983. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 10,423,983 anticipates the claim under examination. See MPEP 804(II)(B)(1) Anticipation Analysis.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,625,755. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 11,625,755 anticipates the claim under examination. See MPEP 804(II)(B)(1) Anticipation Analysis.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 10,423,983. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,423,983. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,625,755. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 10,423,983. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,625,755. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 10,423,983. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,625,755. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 10,423,983. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 10,423,983. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 11,625,755. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. 10,423,983. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 10,423,983. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 11,625,755. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 10,423,983. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 11,625,755. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 10,423,983. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 11,625,755. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 10,423,983. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 10,423,983. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 11,625,755. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 10,423,983. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 10,423,983. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 11,625,755. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 10,423,983. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 11,625,755. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 10,423,983. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. 11,625,755. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 10,423,983. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claim under examination.
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 a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1
Claims 1-7 recite a method which is considered a process. Claims 8-14 recite a non-transitory computer-readable medium which is considered a machine or manufacture. Claims 15-20 recite a system comprising a processor which is considered a machine or manufacture.
Step 2A-Prong One
(Claims 1, 8, and 15) The “segmenting a geographic region into a plurality of cells, wherein each cell has a cell identifier” step, as drafted, is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, but for the “processor” language in claims 8 and 15, the claims encompass a user manually dividing a region into cells. Claims 1 does not recite any additional elements for performing this step. Claims 1, 8, and 15 fall into the mental processes grouping of abstract ideas. Thus, claims 1, 8, and 15 recite an abstract idea.
(Claims 1, 8, and 15) The “calculating a behavior match metric for each cell based on behavioral information, wherein the behavior information includes time-stamped place visit data corresponding to visits to places by a plurality of users” step, as drafted, is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, but for the “processor” language in claims 8 and 15, the claims encompass a user manually determining a match metric for each cell. Claims 1 does not recite any additional elements for performing this step. Claims 1, 8, and 15 fall into the mental processes grouping of abstract ideas. Thus, claims 1, 8, and 15 recite an abstract idea.
(Claims 1, 8, and 15) The “applying a targeting model to the feature data to predict the conversion rate of one or more cells of the plurality of cells, wherein the targeting model is trained using a machine learning algorithm on a set of sample user behavioral data to predict a conversion rate of each cell, wherein the conversion rate provides a probability of a user in a cell performing a targeted behavior” step, as drafted, is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, but for the “processor” language in claims 8 and 15, the claims encompass a user manually utilizing a targeting model to predict conversion rate. Claims 1 does not recite any additional elements for performing this step. Claims 1, 8, and 15 fall into the mental processes grouping of abstract ideas. This limitation and these claims additionally fall into the mathematical concepts grouping of abstract ideas because they recite the use of a machine learning algorithm. Thus, claims 1, 8, and 15 recite an abstract idea.
(Claims 1, 8, and 15) The “identifying targeting information based on the conversion rates of the one or more cells” step, as drafted, is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, but for the “processor” language in claims 8 and 15, the claim encompasses a user manually identifying targeting information based on the conversion rates of the cells. Claims 1 does not recite any additional elements for performing this step. Claims 1, 8, and 15 fall into the mental processes grouping of abstract ideas. Thus, claims 1, 8, and 15 recite an abstract idea.
Additionally, the claims recite the concept of a method for utilizing known information to predict a conversion rate for a particular area. This concept falls into the certain methods of organizing human activity grouping including advertising activities.
The dependent claims further limit the abstract idea recited in the independent claims but do not recite limitations such that the claims no longer fall into the mental processes or certain methods of organizing human activity groupings of abstract ideas.
Claims 7 and 14 recite “the targeting model is a machine learning mode.” This limitation does not take the claims out of the above-identified groupings of abstract ideas. Humans are capable of applying a machine learning model.
The mere nominal recitation of a generic data processing device does not take the claim limitations out of the mental processes grouping. Thus, the claims recite an abstract idea.
Additionally, the claims recite the concept of a method for utilizing known information to predict a conversion rate for a particular area. This concept falls into the certain methods of organizing human activity grouping including advertising activities.
Step 2A-Prong Two
This judicial exception is not integrated into a practical application. The claims recite the additional element of (claims 8-14) a non-transitory computer-readable medium storing computer-executable instructions (executed by at least one processor) or (claims 15-20) a system comprising at least one processor and memory encoding computer-executable instructions and includes no more than mere instructions to apply the exception using a generic computer component. The computer-readable medium or system does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Claims 1-7 do not recite any additional elements.
Additionally, the step of “receiving feature data” in claims 1, 8, and 14 is mere data gathering and is considered insignificant extra-solution activity and does not integrate the abstract idea into a practical application.
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed previously with respect to Step 2A-Prong Two, the additional element in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. See MPEP 2106.05(f). The claims do not provide an inventive concept (significantly more than the abstract idea). The claims are ineligible.
As to the extra-solution activity steps, the act of receiving data over a network is considered routine, conventional, and well-understood. See MPEP 2106.05(d)(II) i. Receiving or transmitting data over a network, e.g., using the Internet to gather data.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEREDITH A LONG whose telephone number is (571)272-3196. The examiner can normally be reached Mon - Fri 9:30 - 6.
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/MEREDITH A LONG/Primary Examiner, Art Unit 3622
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