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 .
DETAILED ACTION
1. This Final Office action is in reply to the Applicant amendment filed on 13 March 2026.
2. Claims 1, 6, 20 have been amended. Claims 7, 8 are cancelled.
3. Claims 1-6, 9-20 are currently pending and have been examined.
Response to Amendment
In the previous office action, Claims 1-20 were rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (abstract idea). Applicants have not amended now Claims 1-6, 9-20 to provide statutory support and the rejection is maintained.
Response to Arguments
Applicant’s arguments filed 13 March 2026 have been fully considered but they are not persuasive. In the remarks regarding the 35 USC § 101 rejection for Claims 1-6, 9-20, Applicant argues that: (1) the claims are not directed to an abstract idea, and even if they were, they would amount to significantly more than the abstract idea. Examiner respectfully disagrees. Still commensurate to the two-part subject matter eligibility framework decision in the Federal court decision in Alice Corp. Pty. Ltd. V. CLS Bank International et al., (Alice), 2019 revised patent subject matter eligibility guidance (2019 PEG) and the October 2019 Update: Subject Matter Eligibility (“October 2019 Update), and the new “July 2024 Guidance Update on Patent Subject Matter Eligibility Examples, including on Artificial Intelligence”, and the Examiner details the maintained rejection under 35 U.S.C. 101 in the below rejection with further explanation. Applicant argues that as amended, Applicant states, basically: “traverses this rejection [because the claimed invention is directed to judicial exception without significantly more]; recitations of multiple Court cases to support Applicant’s claimed invention; and the vague recitation of the so called “Kim Memo” regarding Examples 39 and 47” (see Remarks/Arguments pages 10-27). However the Examiner respectfully disagrees. The claims still recite Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations; Certain methods of organizing human activity –marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion). Although the broad recitation of a neural network is utilized in the claim limitations, there is no further indication within the claims to recite a positive improvement to computer technology nor the limitations of the claims do not transform the abstract idea that they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea using generally-recited computer components. In summary as indicated in more detail below through Steps 1-2B, the recitation of a computer (hardware processor; neural network; graphical user interface; non-transitory machine-readable medium, etc.) to perform the claim limitations amount to no more than mere instruction to apply the exception using generic computer components. Even when considered in combination, these additional elements represent mere instructions to implement an abstract idea or other exception on a computer and insignificant extra-solution activity, which do not provide an inventive concept. For at least these reasons, the rejection is maintained.
Applicants’ amendments have overcome the previous cited prior art rejection.
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 1-6, 9-20 are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, natural phenomenon, or an abstract idea) because the claimed invention is directed to a judicial exception (i.e., a law of nature, natural phenomenon, or an abstract idea) without significantly more. The claims as a whole recite certain grouping of an abstract idea and are analyzed in the following step process:
Step 1: Broadly recited Claims 1-6, 9-20 are each focused to a statutory category of invention, namely “method; system; non-transitory machine-readable medium” sets.
Step 2A: Prong One: Broadly recited Claims 1-6, 9-20 recite limitations that set forth the abstract ideas, namely, the claims as a whole recite the claimed invention is directed to an abstract idea without significantly more. The claims recite steps for, generally:
“for each skill in a plurality of skills, by the hardware processor, obtaining a plurality of features for the skill, each feature in the plurality of features comprising a different type of signal indicating a relationship between the skill and a first user, wherein the plurality of features for the skill comprises a value indicating a measure of relevance of the skill to a career of the first user and a value indicating a measure of proficiency of the first user in the skill;
computing a unified embedding of the plurality of features of the plurality of skills for the first user using a neural network and the plurality of features for each skill in the plurality of skills, the computing the unified embedding comprising inputting the plurality of features for each skill into the neural network, the neural network comprising a dense layer and a neural network layer, the dense layer for computing a skill embedding for each skill to form a plurality of skill embeddings, and the neural network layer for computing the unified embedding from the plurality of skill embeddings, wherein the neural network layer comprises at least one of an average layer, an encoder layer, or a dense layer;
computing a relevance score between a content item and the unified embedding;
and using the unified embedding for the first user in an application of an online service, the using the unified embedding comprising causing the content item to be presented within a graphical user interface of the application based on the relevance score, wherein the graphical user interface comprises a custom search filter panel for selecting and entering search terms into a search field for a search engine that uses the unified embedding for obtaining search results”
Step 2A, Prong 1 Analysis
The provided claim language recites several elements that fall under an Abstract Idea category. Based on current USPTO standards and Federal Circuit case law (e.g., Recentive Analytics, Inc. v. Fox Corp., April 2025), the analysis is as follows:
Mathematical Concepts: The steps of "computing a unified embedding" and "computing a relevance score" involve mathematical correlations and operations. The USPTO identifies mathematical formulas, relationships, and calculations as abstract ideas. Using a "neural network" with a "dense layer" and "encoder layer" to compute embeddings involves high-dimensional vector space manipulations, which are often characterized as mathematical algorithms or relationships. The computation of the "unified embedding" using a neural network and dense/average layers, as well as the calculation of the "relevance score," rely heavily on numerical analysis, mathematical models, and algorithms. However there is no further indication within the claims to recite a positive improvement to computer technology.
Mental Processes: "obtaining a plurality of features; indicating a relationship between the skill and a first user; computing a relevance score”. These steps represent "organizing information and manipulating information through mathematical correlations". In Recentive (2025), the court held that applying generic machine learning to analyze data and predict outcomes is a process that can be conceptually performed in the human mind (mental process), even if impractical at scale. The conceptual act of comparing skill features and determining relevance and proficiency measures can be performed entirely in the human mind.
Certain Methods of Organizing Human Activity: "indicating a relationship between the skill and a first user" and "presenting [a content item]...based on “the relevance score". The use of custom search filters, processing search engine terms, and causing content to be presented in a GUI represents the abstract idea of organizing, collecting, and displaying information for a user. The Federal Circuit has frequently classified the selection and recommendation of content for users based on interests or skills as a "method of organizing human activity" or a "fundamental economic practice". For example, suggesting categories of video content or tailoring search results are considered abstract ideas within this group.
See MPEP § 2106.04(a) II C. Hence, the claims are ineligible under Step 2A Prong one. Furthermore, the dependent claims are merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exception.
Prong Two: Broadly recited Claims 1-6, 9-20: With regard to this step of the analysis (as explained in MPEP § 2106.04 (b) (c) (d)), the judicial exception is not integrated into a practical application. The limitations of the claims do not transform the abstract idea that they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea using generally-recited computer components. The additional elements of “hardware processor; neural network; graphical user interface; non-transitory machine-readable medium”, etc.. Therefore, the claims contain computer components that are cited at a high level of generality and are merely invoked as a tool to perform the abstract idea. Simply implementing an abstract idea on a computer is not a practical application of the abstract idea. It is notable that mere physicality or tangibility of an additional element or elements is not a relevant consideration in Step 2A Prong Two. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception does not guarantee eligibility. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1983-84 (2014) (“The fact that a computer ‘necessarily exist[s] in the physical, rather than purely conceptual, realm,’ is beside the point”). See also Genetic Technologies Ltd. v. Merial LLC, 818 F.3d 1369, 1377, 118 USPQ2d 1541, 1547 (Fed. Cir. 2016) (steps of DNA amplification and analysis are not “sufficient” to render claim 1 patent eligible merely because they are physical steps). Conversely, the presence of a non-physical or intangible additional element does not doom the claims, because tangibility is not necessary for eligibility under the Alice/Mayo test. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 118 USPQ2d 1684 (Fed. Cir. 2016) (“that the improvement is not defined by reference to ‘physical’ components does not doom the claims”). See also McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315, 120 USPQ2d 1091, 1102 (Fed. Cir. 2016), (holding that a process producing an intangible result (a sequence of synchronized, animated characters) was eligible because it improved an existing technological process). Furthermore, the dependent claims are merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exception. The limitations of the claims do not transform the abstract idea that they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea using generally-recited computer components, and furthermore do not amount to an improvement to a computer or any other technology, and thus are ineligible.
Step 2B: As explained in MPEP § 2106.05), Broadly recited Claims 1-6, 9-20 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea nor recites additional elements that integrate the judicial exception into a practical application. The additional elements of “hardware processor; neural network; graphical user interface; non-transitory machine-readable medium”, etc. are generically-recited computer-related elements that amount to a mere instruction to “apply it” (the abstract idea) on the computer-related elements (see MPEP § 2106.05 (f) – Mere Instructions to Apply an Exception). These additional elements in the claims are recited at a high level of generality and are merely limiting the field of use of the judicial exception (see MPEP §2106.05 (h) – Field of Use and Technological Environment). There is no indication that the combination of elements improves the function of a computer or improves any other technology. Furthermore, the dependent claims are merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exception. The limitations of the claims do not transform the abstract idea that they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea using generally-recited computer components, and furthermore do not amount to an improvement to a computer or any other technology, and thus are ineligible.
Examiner interprets that the steps of the claimed invention both individually and as an ordered combination result in Mere Instructions to Apply a Judicial Exception (see MPEP §2106.05 (f)). These claims recite only the idea of a solution or outcome with no restriction on how the result is accomplished and no description of the mechanism used for accomplishing the result. Here, the claims utilize a computer or other machinery (e.g., see Applicants’ published Specification ¶’s 22-28) regarding using existing computer processors as well as program products comprising machine-readable media for carrying or having machine-executable instructions or data structures stored. “online service 100” in its ordinary capacity for performing tasks (e.g., to receive, analyze, transmit and display data) and/or use computer components after the fact to an abstract idea (e.g., a fundamental economic practice and certain methods of organization human activities) and does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016)). Software implementations are accomplished with standard programming techniques with logic to perform connection steps, processing steps, comparison steps and decisions steps. These claims are directed to being a commonplace business method being applied on a general-purpose computer (see Alice Corp. Pty, Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347, 1357, 110 USPQ2d 1976, 1983 (2014)); Versata Dev. Group, Inc., v. SAP Am., Inc., 793 D.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015)) and require the use of software such as via a server to tailor information and provide it to the user on a generic computer. Based on all these, Examiner finds that when viewed either individually or in combination, these additional claim element(s) do not provide meaningful limitation(s) that raise to the high standards of eligibility to transform the abstract idea(s) into a patent eligible application of the abstract idea(s) such that the claim(s) amounts to significantly more than the abstract idea(s) itself. Accordingly, Claims 1-6, 9-20 are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception (i.e. abstract idea exception) without significantly more.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure:
Wray et al. (US 11,922,332)
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS L MANSFIELD whose telephone number is (571)270-1904. The examiner can normally be reached M-Thurs, alt. Fri. (9-6).
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THOMAS L. MANSFIELD
Examiner
Art Unit 3623
/THOMAS L MANSFIELD/Primary Examiner, Art Unit 3624
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