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 .
Status of Claims
Claims 1, 11, and 20 have been amended in the response filed November 10, 2025.
Claims 1-20 are pending.
Claims 1-20 are rejected.
Detailed rejections begin on page 3.
Response to Arguments begins on page 12.
Subject Matter Free of Prior Art
Claims 1-20 are ineligible under 35 U.S.C. 101, set forth in this Office Action. However, the prior art fails to obviously teach the recited claims. For a detailed explanation of subject matter overcoming the prior art, see the Office Action dated August 11, 2025.
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 without significantly more. The claims recite an abstract idea. This judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
The steps for determining eligibility under 35 U.S.C. 101 can be found in the MPEP § 2106.03-2106.05.
Under Step 1, the claims are directed to statutory categories. Specifically, the method, as claimed in claims 1-10, is directed to a process. Additionally, the computer program product comprising a non-transitory computer-readable storage medium, as claimed in claims 11-19, is directed to an article of manufacture. Furthermore, the computer system, as claimed in claim 20, is directed to a machine.
While the claims fall within statutory categories, under Step 2A, Prong 1, the claimed invention recites the abstract idea of product recommendation. Specifically, representative claim 1 recites the abstract idea of:
receiving information describing one or more items included in one or more orders placed by a customer and a sequence of events included in a shopping session associated with each order of the one or more orders;
identifying an impulse item from the one or more items based at least in part on one or more of: a set of impulse item identification rules, a set of item attributes of each item of the one or more items, or the sequence of events included in the shopping session associated with each order of the one or more orders;
predict a measure of similarity between two items using customer satisfaction information about replacement items, and item attribute embeddings generated, and updating weights until a first loss function satisfies a first convergence threshold;
for each candidate item of a plurality of candidate items included among an inventory of a retailer associated with the online concierge system, applying a first set of item attribute embeddings that represent the set of item attributes of the impulse item and a second set of item attribute embeddings that represent the set of item attributes of a corresponding candidate item to predict the measure of similarity between the impulse item and the corresponding candidate item;
identifying, from the plurality of candidate items, a set of larger-size variants of the impulse item based at least in part on the predicted measure of similarity between the impulse item and each candidate item of the plurality of candidate items, one or more item attributes of the impulse item, and the one or more item attributes of each candidate item;
predict a likelihood that the customer will order an item using item attribute embeddings and customer attribute embeddings generated, and updating weights until a second loss function satisfies a second convergence threshold;
for each larger-size variant of the set of larger-size variants:
applying the set of item attributes of a corresponding larger-size variant and a set of customer attribute embeddings that represent a set of customer attributes of the customer to predict the likelihood that the customer will order the corresponding larger-size variant,
computing a recommendation score for the corresponding larger-size variant based at least in part on the predicted likelihood that the customer will order the corresponding larger-size variant, and
determining whether to recommend the corresponding larger-size variant to the customer based at least in part on the recommendation score for the corresponding larger-size variant;
generating a recommendation for one or more larger-size variants based at least in part on the determining; and
sending the recommendation for display to a customer.
Under Step 2A, Prong 1, it is necessary to evaluate whether the claim recites a judicial exception by referring to subject matter groupings articulated in the guidance. When considering MPEP §2106.04(a), the claims recite an abstract idea. For example, representative claim 1 recites the abstract idea of product recommendations, as noted above. This concept is considered to be a certain method of organizing human activity. Certain methods of organizing human activity are defined in the MPEP as including “fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, 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).” MPEP §2106.04(a)(2) subsection II. In this case, the abstract idea recited in representative claim 1 is a certain method of organizing human activity because receiving information describing one or more items included in one or more orders placed by a customer and a sequence of events included in a shopping session associated with each order of the one or more orders and predict a likelihood that the customer will order an item is a sales activity. Thus, representative claim 1 recites an abstract idea.
The recited limitations of representative claim 1 also recite an abstract idea because they are considered to be mental processes. As described in the MPEP, mental processes are “concepts performed in the human mind (including an observation, evaluation, judgment, opinion)”. MPEP §2106.04(a)(2) subsection III. In this case, receiving information describing one or more items included in one or more orders placed by a customer and a sequence of events included in a shopping session associated with each order of the one or more orders is a type of observation. Additionally, identifying an impulse item from the one or more items based at least in part on one or more of: a set of impulse item identification rules, a set of item attributes of each item of the one or more items, or the sequence of events included in the shopping session associated with each order of the one or more orders; for each candidate item of a plurality of candidate items included among an inventory of a retailer associated with the online concierge system, applying a first set of item attribute embeddings that represent the set of item attributes of the impulse item and a second set of item attribute embeddings that represent the set of item attributes of a corresponding candidate item to predict the measure of similarity between the impulse item and the corresponding candidate item; identifying, from the plurality of candidate items, a set of larger-size variants of the impulse item based at least in part on the predicted measure of similarity between the impulse item and each candidate item of the plurality of candidate items, one or more item attributes of the impulse item, and the one or more item attributes of each candidate item; generating a recommendation for one or more larger-size variants based at least in part on the determining; and sending the recommendation for display to a customer are types of judgement. Furthermore, predict a measure of similarity between two items using customer satisfaction information about replacement items, and item attribute embeddings generated, and updating weights until a first loss function satisfies a first convergence threshold; predict a likelihood that the customer will order an item using item attribute embeddings and customer attribute embeddings generated, and updating weights until a second loss function satisfies a second convergence threshold; for each larger-size variant of the set of larger-size variants: applying the set of item attributes of a corresponding larger-size variant and a set of customer attribute embeddings that represent a set of customer attributes of the customer to predict the likelihood that the customer will order the corresponding larger-size variant, computing a recommendation score for the corresponding larger-size variant based at least in part on the predicted likelihood that the customer will order the corresponding larger-size variant, and determining whether to recommend the corresponding larger-size variant to the customer based at least in part on the recommendation score for the corresponding larger-size variant are types of evaluation. Thus, representative claim 1 recites an abstract idea.
The recited limitations of representative claim 1 further recite an abstract idea because they are considered to be mathematical concepts. As described in the MPEP, mathematical concepts are “mathematical relationships, mathematical formulas or equations, mathematical calculations”. MPEP §2106.04(a)(2) subsection I. In this case, predict a measure of similarity between two items using customer satisfaction information about replacement items, and item attribute embeddings generated, and updating weights until a first loss function satisfies a first convergence threshold; predict a likelihood that the customer will order an item using item attribute embeddings and customer attribute embeddings generated, and updating weights until a second loss function satisfies a second convergence threshold; for each larger-size variant of the set of larger-size variants: applying the set of item attributes of a corresponding larger-size variant and a set of customer attribute embeddings that represent a set of customer attributes of the customer to predict the likelihood that the customer will order the corresponding larger-size variant, computing a recommendation score for the corresponding larger-size variant based at least in part on the predicted likelihood that the customer will order the corresponding larger-size variant are mathematical calculations. Thus, representative claim 1 recites an abstract idea.
Under Step 2A, Prong 2, if it is determined that the claims recite a judicial exception, it is then necessary to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of that exception. See MPEP §2106.04(d). In this case, representative claim 1 includes additional elements such as a computer system comprising a processor and a computer-readable medium; an online concierge system; accessing a first machine learning model trained, wherein the first machine learning model is trained using training labels and embeddings generated by applying a first embedding model and updating learned weights of the first machine learning model; accessing a second machine learning model trained, wherein the second machine learning model is trained using embeddings generated by applying a second embedding model and updating learned weights of the second machine learning model, and a client device associated with the customer.
Although reciting additional elements, the additional elements do not integrate the abstract idea into a practical application because they merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a computer as a tool to perform the abstract idea. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. Similar to the limitations of Alice, representative claim 1 merely recites a commonplace business method (i.e., product recommendation) being applied on a general purpose computer. See MPEP §§2106.04(d) and 2106.05(f). Thus, the claimed additional elements are merely generic elements and the implementation of the elements merely amounts to no more than an instruction to apply the abstract idea using a generic computer. Since the additional elements merely include instructions to implement the abstract idea on a generic computer or merely use a generic computer as a tool to perform an abstract idea, the abstract idea has not been integrated into a practical application. As such, representative claim 1 is directed to an abstract idea.
Under Step 2B, if it is determined that the claims recite a judicial exception that is not integrated into a practical application of that exception, it is then necessary to evaluate the 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). See MPEP §2106.05.
In this case, as noted above, the additional elements recited in independent claim 1 are recited and described in a generic manner merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea.
Even when considered as an ordered combination, the additional elements of representative claim 1 do not add anything that is not already present when they considered individually. In Alice, the court considered the additional elements “as an ordered combination,” and determined that “the computer components ... ‘ad[d] nothing ... that is not already present when the steps are considered separately’ and simply recite intermediated settlement as performed by a generic computer.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1983-84 (2014). (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Also see MPEP §2106.05(f). Similarly, when viewed as a whole, representative claim 1 simply conveys the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B, there are no meaningful limitations in representative claim 1 that transforms the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
As such, representative claim 1 is ineligible.
Dependent claims 2-10 do not aid in the eligibility of independent claim 1. For example, claims 7 and 9 merely further define the abstract limitations of claim 1. Also, claims 2-6, 8, and 10 merely provide further embellishments of the abstract limitations recited in claim 1.
Additionally, it is noted that claim 2 includes additional elements of a client device associated with the customer, an ordering interface. However, these additional elements do not integrate the abstract idea into a practical application because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea. These additional elements are merely generic elements and are likewise described in a generic manner in Applicant’s specification. Additionally, the additional elements do not amount to significantly more because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea.
Furthermore, claims 3-10 do not include further additional elements. Therefore, the claims do not integrate the abstract idea into a practical application because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea. The claims also do not amount to significantly more than the abstract idea because they merely amount to instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea.
Thus, dependent claims 2-10 are also ineligible.
Lastly, the analysis above applies to all statutory categories of invention. Although literally invoking an article of manufacture and a machine, respectively, claims 11-19 and 20 remain only broadly and generally defined, with the claimed functionality paralleling that of claims 1-9 and 1, respectively. It is noted that claim 11 includes further additional elements of a computer program product comprising a non-transitory computer-readable storage medium having instructions encoded thereon that, when executed by a processor, cause the processor to perform, and claim 20 includes further additional elements of a computer system comprising: a processor; and a non-transitory computer-readable storage medium storing instructions that, when executed by the processor, perform actions. However, these additional elements do not integrate the abstract idea into a practical application because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea. These additional elements are merely generic elements and are likewise described in a generic manner in Applicant’s specification. Additionally, the additional elements do not amount to significantly more because they merely amount to an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea. As such, claims 11-20 are rejected for at least similar rationale as discussed above.
Response to Arguments
With respect to the rejections under 35 U.S.C. 101, Applicant’s arguments have been considered but are not persuasive. However, in view of the amendments, new grounds of rejection have been applied. These new grounds of rejection have been necessitated by Applicant’s amendments.
With respect to pages 14-16 of the Remarks, Applicant argues “[the] additional elements define a particular data processing architecture and multi-model prediction pipeline that improves the functioning of the computer system itself and provides a technical improvement in the field of machine learning technologies. The claimed sequence of operations . . . is not a generic implementation of mental processes or human activities, but rather a specialized approach to integrating similarity prediction and purchase likelihood prediction in a coordinated workflow.” However, Examiner respectfully disagrees.
The MPEP at §§ 2106.04(d)1 and 2106.05(a) provides guidance on how to evaluate whether claims recite an improvement in the functioning of a computer or an improvement to other technology or technical field. For example, the MPEP states “the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.” The MPEP further states that “[t]he specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art,” and that, “conversely, if the specification explicitly sets forth an improvement but in a conclusory manner…the examiner should not determine the claim improves technology.” That is, the claim includes the components or steps of the invention that provide the improvement described in the specification.
Looking to the specification is a standard that the courts have employed when analyzing claims as it relates to improvements in technology. For example, in Enfish, the specification provided teaching that the claimed invention achieves benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements. Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). Additionally, in Core Wireless the specification noted deficiencies in prior art interfaces relating to efficient functioning of the computer. Core Wireless Licensing v. LG Elecs. Inc., 880 F.3d 1356 (Fed Cir. 2018). With respect to McRO, the claimed improvement, as confirmed by the originally filed specification, was “…allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters…’” and it was “…the incorporation of the claimed rules, not the use of the computer, that “improved [the] existing technological process” by allowing the automation of further tasks”. McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, (Fed. Cir. 2016).
In this case, Applicant’s claims do not reflect an improvement to the functioning of a computer or other technology. Rather, the claims focus “on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool”. Id citing Enfish at 1327, 1336. This is reflected in paragraph [0002] of Applicant’s specification, which describes Applicant’s claimed invention as directed toward solving abstract problems such as recommending impulse purchases to a user that are a larger size than previous impulse purchases. Although the claims include computer technology such as multiple trained machine learning models, such elements are merely peripherally incorporated in order to implement the abstract idea of recommending larger sized product variants. This is unlike the improvements recognized by the courts in cases such as Enfish, Core Wireless, and McRO.
Unlike the precedential cases, the claims of the instant invention identify such a specific improvement to computer capabilities. The instant claims are not directed to improving “the existing technological process” but are directed to improving the commercial, mental, and mathematical task of making product recommendations. The claimed process is not providing any improvement to another technology or technical field as the claimed process is not, for example, improving the processor and/or computer components that operate the system. Rather, the claimed process is utilizing different data while employing generic processor and/or computer components to improve making recommendations for impulse purchases, e.g. commercial, mental, and mathematical process. As such, the claims do not recite specific technological improvements, and the rejection is maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Sharma et. al. (2020 NPL) was used to understand other methods of implementing a machine learning ensemble for predicting item purchases.
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 KATHERINE A BARLOW whose telephone number is (571)272-5820. The examiner can normally be reached Monday-Friday 10am-6pm EST.
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/KATHERINE A BARLOW/Examiner, Art Unit 3689
/MARISSA THEIN/Supervisory Patent Examiner, Art Unit 3689