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 .
Response to Amendment
This Office action is in response to Applicant's amendment submitted on 5/4/2026. By this amendment, claims 1, 11, 16 and 19-20 are amended. Claims 3 and 10 are canceled. Claims 21 and 22 are newly added claims. Therefore, claims 1-2, 4-9 and 11-22 have been examined.
Any claim objections and rejections not repeated below is withdrawn due to Applicant's amendment.
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.
Claim 1-2, 4-9, and 11-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding claims 1 and 16, the limitations "identifying a current use state of the plurality of use states, wherein the current use state indicates that the software application is in an incomplete condition" and "determining, based on the state information and the current use state, an activity to perform via the software application or a further software application" as drafted, are functions that, under its broadest reasonable interpretation, recite the abstract idea of a mental process. These limitations encompass a human mind carrying out the function through observation, evaluation judgment and/or opinion, or even with the aid of pen and paper. Thus, this limitation recites and falls within the "Mental Processes" grouping of abstract ideas under Prong 1.
Under Prong 2, the judicial exception is not integrated into a practical application. The additional elements "obtaining state information characterizing a software application, wherein the state information indicates a plurality of use states of the software application, and providing a message including the activity “do nothing more than add insignificant extra solution activity to the judicial exception of merely gathering data, and outputting data. Accordingly, the additional elements do not integrate the recited judicial exception into a practical application and the claim is therefore directed to the judicial exception. See MPEP 2106.05(g).
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As stated above in prong 2, the limitations "obtaining state information characterizing a software application, wherein the state information indicates a plurality of use states of the software application," and providing a message including the activity" are mere gathering data, and outputting data which the courts have identified as well-understood, routine conventional activity. See for example Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362, MPEP 2106.05(d). Therefore, mere data gathering and outputting data do not amount to significantly more, thus, cannot provide an inventive concept. Accordingly, the claims are not patent eligible under 35 USC 101. The additional element “and causing the software application to perform the activity, wherein performing the activity involves continuing use of the software application from the incomplete condition until the current use state has transitioned to a further use state that completes the incomplete condition” is well-understood, routine, and conventional, as evidenced by U.S. Pat. No. 9,6660,37 B2, No. 8,726,082 B2, and U.S. Pub. No. 2009/0282396 A1. These references demonstrate that automatically resuming or completing an interrupted application state was a known, conventional computer function well before the effective filing date of the instant application.
Claim 20 is rejected for the same reasons explained for claims 1 and 16, and claim 20 recites additional elements "one or more processors," and "memory, containing program instructions that, upon execution by the one or more processors, cause the system to perform operations." These elements are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using generic computer, and/or generic computer components. See MPEP 2106.05(f). Therefore, the additional elements recited in claim 20 do not integrate the judicial exception into a practical application under prong 2, nor amount to significantly more under step 2B.
Claim 2 merely recites intended use of the claimed invention which does not render the claim eligible under 35 USC 101.
Regarding claims 7, 8, 9 and 19, each of the "determining" recited in these claims, as drafted, are functions that, under its broadest reasonable interpretation, recite the abstract idea of a mental process. These limitations encompass a human mind carrying out the function through observation, evaluation judgment and/or opinion, or even with the aid of pen and paper.
Regarding claims 4 and 17, the "determining" recites additional mental process, and the additional element of "receiving" is mere data gathering which is neither a practical application, nor significantly more for the reasons explained above in the rejection of claim 1.
Claims 5, 6, 11-13 and 18 merely describes the information obtained in claim 1 which are not indicative of either a practical application, nor amount to significantly more than the judicial exception, as explained in the rejection of claim 1.
Claim 14 merely describes the information being provided in claim 1, thus, amounts to displaying data which is neither a practical application, nor amounts to significantly more than the judicial exception, as explained in the rejection of claim 1.
Regrading claim 15, the limitation "applying rule definitions to the event data to determine the activity to perform" recites a mental process, and "obtaining event data" is merely data gathering, which are not indicative of either a practical application, nor amount to significantly more than the judicial exception, as explained in the rejection of claim 1.
Regarding claims 21 and 22, the limitations “identifying the plurality of use states from application log data”, “for each state of the plurality of use states, determining respective state transition rules based on the application log data”, and “and determining respective expected state durations for each state of the plurality of use states, wherein the activity is based on the respective expected state durations” merely recite additional abstract ideas of a mental process since this limitation encompasses a human mind carrying out the function through observation, evaluation, judgment, and/or opinion, or even with the aid of pen and paper. Thus, this limitation recites and falls within the “Mental Processes” grouping of abstract ideas, and is not indicative of either a practical application under Prong 1, nor an inventive concept under Step 2B for the reasons explained in claim 1.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 4-9, and 11-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 16, and 20 have been amended to recite "causing the software application to perform the activity, wherein performing the activity involves continuing use of the software application from the incomplete condition until the current use state has transitioned to a further use state that completes the incomplete condition".
The Examiner has reviewed the specification as originally filed, including the written description, drawings, and original claims, and finds insufficient written description support for the amended limitation for the reasons set forth below.
“Causing the Software Application to Perform the Activity”
The specification as originally filed does not provide adequate written description support for the system autonomously causing the software application to perform the determined activity. The disclosure, as understood by the Examiner, describes determining an activity and providing a message including the activity. This describes a notification or recommendation paradigm wherein a user is informed of an activity to perform. However, the amended limitation requires that the system itself causes the software application to perform the activity — i.e., automatic execution without user intervention. The Examiner finds no disclosure of a mechanism, process, or embodiment in which the system autonomously initiates, triggers, or executes the determined activity within the software application. The mere disclosure of determining an activity and providing a message does not inherently convey possession of a system that causes execution of that activity. See MPEP § 2163.05(I) (“An amendment to a claim . . . that results in a new combination of elements without basis in the originally-filed disclosure constitutes new matter.”).
“Continuing Use of the Software Application from the Incomplete Condition”
The specification as originally filed does not provide adequate written description support for the concept of “continuing use” of the software application “from the incomplete condition.”
This language requires that the activity specifically involves resuming or continuing the software application’s operation from the precise point at which the incomplete condition exists — i.e., picking up from where the application left off. The Examiner finds no disclosure of: A mechanism for resuming application use from a specific incomplete state; A process for saving, storing, or referencing the incomplete condition as a starting point for continued execution; or An embodiment describing continuation of the same workflow or process from the point of incompletion. The specification may describe identifying an incomplete state and determining an activity associated therewith, but does not describe the particular concept of continuing operation from that state.
“Until the Current Use State Has Transitioned to a Further Use State”
The specification as originally filed does not provide adequate written description support for execution that continues “until” a state transition has occurred. The word “until” implies an ongoing, iterative, or conditional execution loop in which: The system monitors the current use state during performance of the activity; The system evaluates whether the state has transitioned; and the system continues execution conditionally based on whether the transition has been achieved. The Examiner finds no disclosure of: a monitoring mechanism that tracks state transitions during activity execution; a conditional or iterative loop that continues operation pending a state change; or a termination condition based on detection of a completed state transition. This constitutes subject matter beyond the scope of the original disclosure. See MPEP § 2163.06 (“If new matter is added to the claims, the examiner should reject the claims under 35 U.S.C. 112(a) . . . .”).
“A Further Use State That Completes the Incomplete Condition”
The specification as originally filed does not adequately describe a defined further use state that specifically “completes” the identified incomplete condition. This limitation requires: A defined mapping or correspondence between a specific incomplete condition and a specific further use state that resolves it; Criteria by which the system determines that the incomplete condition has been “completed”; and A characterization of what “completes the incomplete condition” means in the context of the application’s operation. While the specification describes a plurality of use states and the identification of an incomplete condition, the Examiner finds no disclosure of a specific completion state defined in relation to the incomplete condition, or criteria for evaluating that the incompletion has been resolved.
The claimed amendment describes a desired outcome (completing an incomplete condition through autonomous execution) without the specification having disclosed the particular combination of operations by which this outcome is achieved. For the forgoing reasons, claims 1, 16, and 20 are rejected under 35 U.S.C. § 112(a) as containing new matter not supported by the originally-filed disclosure. Any claim not specifically mentioned above, is rejected due to its dependency on a rejected claim.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-2, 4-9, 11-18, and 20-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dotan-Cohen (US 11429883 B2) in view of US 12056036 B2 (hereinafter referred to as Edwards).
As per claim 1:
Dotan-Cohen teaches a method comprising:
Obtaining state information characterizing (Data corresponding to user activity may be gathered over time using sensors on one or more user devices associated with a user – [col 3; lines 27-29]; Please note that user activity corresponds to the Applicant’s “state information”) a software application (the user activity may be related to a user’s application (or app) related activity, such as usage – [col 3; lines 66-67]; a user’s application (or app) related activity/usage corresponds to the Applicant’s “software application”) wherein the state information indicates a plurality of use states of the software application (application usage, which may include usage duration, launches, files accessed via the application or in conjunction with the application usage, or content associated with the application – [col 4; lines 1 - 4]; The plurality of usage cases corresponds to the Applicant’s “plurality of use states of the software application”).
Identifying a current use state of the plurality of use states (Based on … and in some cases current sensor data regarding user activity – [col 5; lines 18-20]; current sensor data corresponds to Applicant’s “current use state”);
Determining, based on the state information and the current use state, an activity to perform via the software application (From the activity logs or user activity data, historical user activity information may be determined and provided to an inference engine. Based on an analysis of historical user activity, and in some cases current sensor data regarding user activity, a set of one or more likely user activity patterns may be determined – [col 5; lines 16 - 22]; activity logs or user activity data corresponds to Applicant’s “state information”. Current sensor data corresponds to Applicant’s “current use state”. A set of one or more likely activity patterns corresponds to Applicant’s “activity to perform”), and providing a message including the activity (For example, some embodiments may provide timely, relevant delivery or presentation of content … incorporation of the user's routine into recommendations and notifications – [col 6; lines 55-60]; presentation of content corresponds to Applicant’s “message including the activity”).
Dotan-Cohen does not teach:
wherein the current use state indicates that the software application is in an incomplete condition
and causing the software application to perform the activity, wherein performing the activity involves continuing use of the software application from the incomplete condition until the current use state has transitioned to a further use state that completes the incomplete condition.
However, Edwards, in the analogous art of application workflow management, teaches them:
wherein the current use state indicates that the software application is in an incomplete condition (For instance, a computer-implemented method for inactivity-based prompting of task completion may include identifying a task related to an account as an incomplete task and a task status related to the task as incomplete – [col 2; lines 23-27]).
and causing the software application to perform the activity, wherein performing the activity involves continuing use of the software application from the incomplete condition until the current use state has transitioned to a further use state that completes the incomplete condition (For instance, a computer-implemented method for inactivity-based prompting of task completion may include identifying a task related to an account as an incomplete task and a task status related to the task as incomplete, storing the task and the task status in a data store in association with an account identifier, and receiving a session inactivity indication for an account session established via an application executing on a user computing device. The method may also include querying the data store, using the account identifier, to determine the task status for the task in response to receiving the session inactivity indication, and determining the task status remains incomplete. The method may further include generating a notification indicating the task is incomplete, determining a communication channel for transmission of the notification that increases a likelihood of notification engagement to prompt task completion, and transmitting the notification via the communication channel – [col 1-2 lines 53-2]; There is no support for the “software application” of the claim “performing the activity” in Applicant’s specification. However, there is support for prompting the user to perform the activity in order to resolve the incomplete condition. This quote from Edwards teaches the prompting a user to resolve an incomplete condition).
Therefore, it would have been obvious for one of ordinary skill in the art before effective filing date to combine the inactivity-based notification system of Edwards to the activity prediction system of Dotan-Cohen. This combination would have been obvious because of the stated negative effects of task incompletion in Edwards: “If the user logs out of the system without completing the task, the likelihood that the task falls out of the user's mind and the user fails to timely complete the task significantly increases. Depending on the task, failure to complete the task may lead to significant negative impacts to the account and/or user and result in additional time the user may spend with service agents of the provider to remedy the task completion failure” [col 1; lines 17-34].
As per claim 2:
The combination of Dotan-Cohen and Edwards teaches the method of claim 1. Dotan-Cohen further teaches:
wherein a user of the software application is in the current use state of the software application (Based on … and in some cases current sensor data regarding user activity – [col 5; lines 18-20]; current sensor data corresponds to Applicant’s “current use state”);
As per claim 4:
The combination of Dotan-Cohen and Edwards teaches the method of claim 1. Dotan-Cohen further teaches:
wherein identifying the current use state of the plurality of use states comprises: receiving a feed of events from an event log associated with the software application; and determining the current use state based on at least some of the events (As shown in example system 200, user activity monitor 280 comprises a user activity detector 282 … User activity detector 282, in general, is responsible for determining (or identifying) a user action or activity event has occurred. Embodiments of activity detector 282 may be used for determining current user activity or one or more historical user actions. – [col 11-12 lines 62-23]; At a high level, activity pattern inference engine 260 may receive user activity-related information, which may be uploaded from user activity logs from client-side applications or services associated with user activity monitor 280 – [col 15; lines 35-39]; The user activity monitor, which encompasses the user activity monitor, the actions of obtaining activity logs and determining current activity, which correspond to the Applicant’s “receiving a feed of events from an event log associated with the software application; and determining the current use state based on at least some of the events”).
As per claim 5:
The combination of Dotan-Cohen and Edwards teaches the method of claim 1. Dotan-Cohen further teaches:
wherein the plurality of use states of the software application were generated based on an event log of previous events generated by the software application (From the activity logs or user activity data, historical user activity information may be determined and provided to an inference engine. Based on an analysis of historical user activity, and in some cases current sensor data regarding user activity, a set of one or more likely user activity patterns may be determined. – [col 5; lines 16-21]; The activity logs correspond to the Applicant’s “event log” and a set of one or more likely user activity patterns corresponds to the Applicant’s “plurality of use states” that were generated based on the event log).
As per claim 6:
The combination of Dotan-Cohen and Edwards teaches the method of claim 1. Dotan-Cohen further teaches:
wherein the plurality of use states of the software application are part of an empirical workflow, wherein the use states and transitions therebetween characterize patterns of previous usage of the software application (For example, patterns may be determined based on similar instances of observation of user activity or associated contextual information, which may be referred to as “in-common features” of user activity-related information. The inferred activity pattern information may be provided to an activity pattern consumer 270 and/or used to generate a pattern-based prediction regarding likely future user action(s). In some embodiments, a corresponding confidence is also determined for the patterns (or predictions based on the patterns), as described herein. Further, the activity pattern (or prediction of future action based on a pattern) may comprise a single (future-occurring) user activity likely to occur, a sequence of future user actions– [col 15; lines 35-39]; the activity patterns being determined based on historical data corresponds to the Applicant’s “wherein the use states and transitions therebetween characterize patterns of previous usage of the software application”)
As per claim 7:
The combination of Dotan-Cohen and Edwards teaches the method of claim 1. Dotan-Cohen further teaches:
wherein determining the activity to perform comprises determining that at least a predefined amount of time has passed since the current use state was entered (In some embodiments, once an activity pattern is determined, it can be used to determine that a probable future activity event will occur at a future time that is a threshold time from a present time … by analyzing the exercise pattern and/or current or recent information about user activity. – [col 34; lines 22-28]; A probable future activity corresponds to Applicant’s “activity to perform”. A threshold from a present time corresponds to Applicant’s “predefined amount of time”. Current or recent information about user activity corresponds to Applicant’s “current use state”).
As per claim 8:
The combination of Dotan-Cohen and Edwards teaches the method of claim 1. Dotan-Cohen further teaches:
wherein determining the activity to perform is also based on use states of the plurality of use states that were occupied during a predefined lookback period of time (the probable future activity is determined by looking at a periodic or behavior context – [col 35; lines 20-28]; The probable future activity corresponds to Applicant’s “activity to perform”. Looking at a periodic or behavior context corresponds to Applicant’s “use states of the plurality of use states that were occupied during a predefined lookback period”).
As per claim 11:
The combination of Dotan-Cohen and Edwards teaches the method of claim 1. Dotan-Cohen further teaches:
wherein the current use state indicates that use of the software application has been unable to resolve a condition and wherein the activity is to use a further software application to resolve the condition (For example, a user activity event comprising an email sent to someone who works with the user may be characterized as a work-related activity. Thus, where the user emails some person she works with every Sunday night, but not necessarily the same person, a pattern may be determined (using activity pattern determiner 266) that the user performs work-related activities every Sunday night. Accordingly, it may be appropriate to surface a notification, such as a reminder, relating to the user's work to the user on Sunday night – [col 17; lines 25-34]; In this example, a user having not sent an email on a Sunday night corresponds to the Applicant’s unresolved condition and recommending performing the work-related activity corresponds to the Applicant’s “using the further software application to resolve the condition”).
As per claim 12:
The combination of Dotan-Cohen and Edwards teaches the method of claim 1. Dotan-Cohen further teaches:
wherein the state information includes one or more criteria under which the message is to be provided (For example, in an embodiment, the enhanced user experience comprises one of a recommendation, notification, request, or suggestion related to the probable future activity. In one embodiment, it comprises automatically carrying out actions related to the probable future activity at a time or location consistent with the inferred activity pattern – [col 36; lines 11-18]; carrying out the actions (notifications, suggestions, etc.) related to the probable future activity at a time or location … corresponds to the Applicant’s “criteria under which the message is to be provided”) and wherein determining the activity to perform comprises determining that the one or more criteria are met (In some embodiments, the probable future activity may comprise a context, which may be defined by a location, time, user behavior, or other condition, and may be determined based at least in part on sensor data – [col 35; lines 15-19]; The context of the probable future activity and sensor data correspond to the Applicant’s “one or more criteria”).
As per claim 13:
The combination of Dotan-Cohen and Edwards teaches the method of claim 1. Dotan-Cohen further teaches:
wherein the state information includes a channel through which the message is to be provided, and wherein providing the message comprises providing the message via the channel (In some embodiments, presentation component 220 generates user interface features associated with the personalized content. Such features can include interface elements (such as graphics buttons, sliders, menus, audio prompts, alerts, alarms, vibrations, pop-up windows, notification-bar or status-bar items, in-app notifications, or other similar features for interfacing with a user), queries, and prompts. – [col 28; lines 33 - 39]; presentation component corresponds to Applicant’s “channel through which the message is to be provided”).
As per claim 14:
The combination of Dotan-Cohen and Edwards teaches the method of claim 1. Dotan-Cohen further teaches:
wherein providing the message comprises providing the message as a notification, via a layout change to a user interface, via an event (In some embodiments, presentation component 220 generates user interface features associated with the personalized content. Such features can include interface elements (such as graphics buttons, sliders, menus, audio prompts, alerts, alarms, vibrations, pop-up windows, notification-bar or status-bar items, in-app notifications, or other similar features for interfacing with a user), queries, and prompts. – [col 28; lines 33 - 39]; The enumerated interface elements correspond to the Applicant’s “providing the message as a notification, via a layout change to a user interface, via an event”), or by invoking an application or workflow (For example, where the user typically browses her bank account near the beginning of the month and copies financial information from the bank website into a spreadsheet, an embodiment of step 530 may automatically perform the operations of launching a browser, navigating to the bank website, and loading the spreadsheet file in a spreadsheet application – [col 36; lines 18-24]; This example demonstrates the Applicant’s “invoking an application or workflow”)
As per claim 15:
The combination of Dotan-Cohen and Edwards teaches the method of claim 1. Dotan-Cohen further teaches:
wherein identifying the current use state of the plurality of use states comprises obtaining, event data from an event log or database table (User activity monitor 280 may determine current or near-real-time user activity information – [col 10; lines 66 - 67]; The user activity monitor corresponds to the Applicant’s “event log or database table”) and wherein determining the activity to perform comprises applying rule definitions to the event data to determine the activity to perform (From the activity logs or user activity data, historical user activity information may be determined and provided to an inference engine. Based on an analysis of historical user activity, and in some cases current sensor data regarding user activity, a set of one or more likely user activity patterns may be determined. – [col 5; lines 16 – 21]; analysis of historical user activity and current sensor data corresponds to the Applicant’s “applying rule definitions”)
As per claim 16:
Dotan-Cohen teaches a non-transitory computer-readable medium, having stored thereon program instructions that, upon execution by a computing system, cause the computing system to perform operations comprising (Computing device 600 typically includes a variety of computer-readable media … Computer storage media does not comprise signals per se.” – [col 37; lines 25-44]):
Obtaining state information characterizing (Data corresponding to user activity may be gathered over time using sensors on one or more user devices associated with a user – [col 3; lines 27-29]; Please note that user activity corresponds to the Applicant’s “state information”) a software application (the user activity may be related to a user’s application (or app) related activity, such as usage – [col 3; lines 66-67]; a user’s application (or app) related activity/usage corresponds to the Applicant’s “software application”) wherein the state information indicates a plurality of use states of the software application (application usage, which may include usage duration, launches, files accessed via the application or in conjunction with the application usage, or content associated with the application – [col 4; lines 1 - 4]; The plurality of usage cases corresponds to the Applicant’s “plurality of use states of the software application”)
wherein the current use state indicates that the software application is in an incomplete condition (For example, a user activity event comprising an email sent to someone who works with the user may be characterized as a work-related activity. Thus, where the user emails some person she works with every Sunday night, but not necessarily the same person, a pattern may be determined (using activity pattern determiner 266) that the user performs work-related activities every Sunday night. Accordingly, it may be appropriate to surface a notification, such as a reminder, relating to the user's work to the user on Sunday night – [col 17; lines 25-34]; In this example, a user having not sent an email on a Sunday night corresponds to the Applicant’s incomplete condition).
Determining, based on the state information and the current use state, an activity to perform via the software application (From the activity logs or user activity data, historical user activity information may be determined and provided to an inference engine. Based on an analysis of historical user activity, and in some cases current sensor data regarding user activity, a set of one or more likely user activity patterns may be determined – [col 5; lines 16 - 22]; activity logs or user activity data corresponds to Applicant’s “state information”. Current sensor data corresponds to Applicant’s “current use state”. A set of one or more likely activity patterns corresponds to Applicant’s “activity to perform”), and providing a message including the activity (For example, some embodiments may provide timely, relevant delivery or presentation of content … incorporation of the user's routine into recommendations and notifications – [col 6; lines 55-60]; presentation of content corresponds to Applicant’s “message including the activity”).
Dotan-Cohen does not teach:
wherein the current use state indicates that the software application is in an incomplete condition
and causing the software application to perform the activity, wherein performing the activity involves continuing use of the software application from the incomplete condition until the current use state has transitioned to a further use state that completes the incomplete condition.
However, Edwards, in the analogous art of application workflow management, teaches them:
wherein the current use state indicates that the software application is in an incomplete condition (For instance, a computer-implemented method for inactivity-based prompting of task completion may include identifying a task related to an account as an incomplete task and a task status related to the task as incomplete – [col 2; lines 23-27]).
and causing the software application to perform the activity, wherein performing the activity involves continuing use of the software application from the incomplete condition until the current use state has transitioned to a further use state that completes the incomplete condition (For instance, a computer-implemented method for inactivity-based prompting of task completion may include identifying a task related to an account as an incomplete task and a task status related to the task as incomplete, storing the task and the task status in a data store in association with an account identifier, and receiving a session inactivity indication for an account session established via an application executing on a user computing device. The method may also include querying the data store, using the account identifier, to determine the task status for the task in response to receiving the session inactivity indication, and determining the task status remains incomplete. The method may further include generating a notification indicating the task is incomplete, determining a communication channel for transmission of the notification that increases a likelihood of notification engagement to prompt task completion, and transmitting the notification via the communication channel – [col 1-2 lines 53-2]; There is no support for the “software application” of the claim “performing the activity” in Applicant’s specification. However, there is support for prompting the user to perform the activity in order to resolve the incomplete condition. This quote from Edwards teaches the prompting a user to resolve an incomplete condition).
As per claim 17:
The combination of Dotan-Cohen and Edwards teaches the non-transitory computer readable medium of claim 16. Dotan-Cohen further teaches:
wherein identifying the current use state of the plurality of use states comprises: receiving a feed of events from an event log associated with the software application; and determining the current use state based on at least some of the events (As shown in example system 200, user activity monitor 280 comprises a user activity detector 282 … User activity detector 282, in general, is responsible for determining (or identifying) a user action or activity event has occurred. Embodiments of activity detector 282 may be used for determining current user activity or one or more historical user actions. – [col 11-12 lines 62-23]; At a high level, activity pattern inference engine 260 may receive user activity-related information, which may be uploaded from user activity logs from client-side applications or services associated with user activity monitor 280 – [col 15; lines 35-39]; The user activity monitor, which encompasses the user activity monitor, the actions of obtaining activity logs and determining current activity, which correspond to the Applicant’s “receiving a feed of events from an event log associated with the software application; and determining the current use state based on at least some of the events”)
As per claim 18:
The combination of Dotan-Cohen and Edwards teaches the non-transitory computer readable medium of claim 16. Dotan-Cohen further teaches:
wherein the plurality of use states of the software application are part of an empirical workflow, wherein the use states and transitions therebetween characterize patterns of previous usage of the software application (For example, patterns may be determined based on similar instances of observation of user activity or associated contextual information, which may be referred to as “in-common features” of user activity-related information. The inferred activity pattern information may be provided to an activity pattern consumer 270 and/or used to generate a pattern-based prediction regarding likely future user action(s). In some embodiments, a corresponding confidence is also determined for the patterns (or predictions based on the patterns), as described herein. Further, the activity pattern (or prediction of future action based on a pattern) may comprise a single (future-occurring) user activity likely to occur, a sequence of future user actions– [col 15; lines 35-39]; the activity patterns being determined based on historical data corresponds to the Applicant’s “wherein the use states and transitions therebetween characterize patterns of previous usage of the software application”).
As per claim 20:
Dotan-Cohen teaches a system comprising:
Obtaining state information characterizing (Data corresponding to user activity may be gathered over time using sensors on one or more user devices associated with a user – [col 3; lines 27-29]; Please note that user activity corresponds to the Applicant’s “state information”) a software application (the user activity may be related to a user’s application (or app) related activity, such as usage – [col 3; lines 66-67]; a user’s application (or app) related activity/usage corresponds to the Applicant’s “software application”) wherein the state information indicates a plurality of use states of the software application (application usage, which may include usage duration, launches, files accessed via the application or in conjunction with the application usage, or content associated with the application – [col 4; lines 1 - 4]; The plurality of usage cases corresponds to the Applicant’s “plurality of use states of the software application”).
Identifying a current use state of the plurality of use states (Based on … and in some cases current sensor data regarding user activity – [col 5; lines 18-20]; current sensor data corresponds to Applicant’s “current use state”);
Determining, based on the state information and the current use state, an activity to perform via the software application (From the activity logs or user activity data, historical user activity information may be determined and provided to an inference engine. Based on an analysis of historical user activity, and in some cases current sensor data regarding user activity, a set of one or more likely user activity patterns may be determined – [col 5; lines 16 - 22]; activity logs or user activity data corresponds to Applicant’s “state information”. Current sensor data corresponds to Applicant’s “current use state”. A set of one or more likely activity patterns corresponds to Applicant’s “activity to perform”)
and providing a message including the activity (For example, some embodiments may provide timely, relevant delivery or presentation of content … incorporation of the user's routine into recommendations and notifications – [col 6; lines 55-60]; presentation of content corresponds to Applicant’s “message including the activity”).
Dotan-Cohen does not teach:
wherein the current use state indicates that the software application is in an incomplete condition
and causing the software application to perform the activity, wherein performing the activity involves continuing use of the software application from the incomplete condition until the current use state has transitioned to a further use state that completes the incomplete condition.
However, Edwards, in the analogous art of application workflow management, teaches them:
wherein the current use state indicates that the software application is in an incomplete condition (For instance, a computer-implemented method for inactivity-based prompting of task completion may include identifying a task related to an account as an incomplete task and a task status related to the task as incomplete – [col 2; lines 23-27]).
and causing the software application to perform the activity, wherein performing the activity involves continuing use of the software application from the incomplete condition until the current use state has transitioned to a further use state that completes the incomplete condition (For instance, a computer-implemented method for inactivity-based prompting of task completion may include identifying a task related to an account as an incomplete task and a task status related to the task as incomplete, storing the task and the task status in a data store in association with an account identifier, and receiving a session inactivity indication for an account session established via an application executing on a user computing device. The method may also include querying the data store, using the account identifier, to determine the task status for the task in response to receiving the session inactivity indication, and determining the task status remains incomplete. The method may further include generating a notification indicating the task is incomplete, determining a communication channel for transmission of the notification that increases a likelihood of notification engagement to prompt task completion, and transmitting the notification via the communication channel – [col 1-2 lines 53-2]; There is no support for the “software application” of the claim “performing the activity” in Applicant’s specification. However, there is support for prompting the user to perform the activity in order to resolve the incomplete condition. This quote from Edwards teaches the prompting a user to resolve an incomplete condition).
As per claim 21:
The combination of Dotan-Cohen and Edwards teaches the method of claim 1. Dotan-Cohen further teaches:
wherein obtaining the state information characterizing the software application comprises: identifying the plurality of use states from application log data (As shown in example system 200, user activity monitor 280 comprises a user activity detector 282 … User activity detector 282, in general, is responsible for determining (or identifying) a user action or activity event has occurred. Embodiments of activity detector 282 may be used for determining current user activity or one or more historical user actions. – [col 11-12 lines 62-23]; At a high level, activity pattern inference engine 260 may receive user activity-related information, which may be uploaded from user activity logs from client-side applications or services associated with user activity monitor 280 – [col 15; lines 35-39]; The user activity monitor, which encompasses the user activity monitor, the actions of obtaining activity logs and determining current activity, which correspond to the Applicant’s “identifying the plurality of use states from the application log data”).
for each state of the plurality of use states, determining respective state transition rules based on the application log data (For example, patterns may be determined based on similar instances of observation of user activity or associated contextual information, which may be referred to as “in-common features” of user activity-related information. The inferred activity pattern information may be provided to an activity pattern consumer 270 and/or used to generate a pattern-based prediction regarding likely future user action(s). In some embodiments, a corresponding confidence is also determined for the patterns (or predictions based on the patterns), as described herein. Further, the activity pattern (or prediction of future action based on a pattern) may comprise a single (future-occurring) user activity likely to occur, a sequence of future user actions– [col 15; lines 35-39]; The pattern-based prediction regarding likely future user actions based on user activity corresponds to “determining respective state transition rules based on the application log data”).
and determining respective expected state durations for each state of the plurality of use states, wherein the activity is based on the respective expected state durations (In some embodiments, once an activity pattern is determined, it can be used to determine that a probable future activity event will occur at a future time that is a threshold time from a present time … by analyzing the exercise pattern and/or current or recent information about user activity. – [col 34; lines 22-28]; determining a probable future activity based on a specified elapsed time from the present time corresponds to “determining expected state durations for each … based on the respective expected state durations”).
As per claim 22:
The combination of Dotan-Cohen and Edwards teaches the non-transitory computer-readable medium of claim 16. Dotan-Cohen further teaches:
wherein obtaining the state information characterizing the software application comprises: identifying the plurality of use states from application log data (As shown in example system 200, user activity monitor 280 comprises a user activity detector 282 … User activity detector 282, in general, is responsible for determining (or identifying) a user action or activity event has occurred. Embodiments of activity detector 282 may be used for determining current user activity or one or more historical user actions. – [col 11-12 lines 62-23]; At a high level, activity pattern inference engine 260 may receive user activity-related information, which may be uploaded from user activity logs from client-side applications or services associated with user activity monitor 280 – [col 15; lines 35-39]; The user activity monitor, which encompasses the user activity monitor, the actions of obtaining activity logs and determining current activity, which correspond to the Applicant’s “identifying the plurality of use states from the application log data”).
for each state of the plurality of use states, determining respective state transition rules based on the application log data (For example, patterns may be determined based on similar instances of observation of user activity or associated contextual information, which may be referred to as “in-common features” of user activity-related information. The inferred activity pattern information may be provided to an activity pattern consumer 270 and/or used to generate a pattern-based prediction regarding likely future user action(s). In some embodiments, a corresponding confidence is also determined for the patterns (or predictions based on the patterns), as described herein. Further, the activity pattern (or prediction of future action based on a pattern) may comprise a single (future-occurring) user activity likely to occur, a sequence of future user actions– [col 15; lines 35-39]; The pattern-based prediction regarding likely future user actions based on user activity corresponds to “determining respective state transition rules based on the application log data”).
and determining respective expected state durations for each state of the plurality of use states, wherein the activity is based on the respective expected state durations (In some embodiments, once an activity pattern is determined, it can be used to determine that a probable future activity event will occur at a future time that is a threshold time from a present time … by analyzing the exercise pattern and/or current or recent information about user activity. – [col 34; lines 22-28]; determining a probable future activity based on a specified elapsed time from the present time corresponds to “determining expected state durations for each … based on the respective expected state durations”).
Claim(s) 9 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dotan-Cohen in view of Edwards further in view of Raju (US 9571536 B2).
As per claim 9:
The combination of Dotan-Cohen and Edwards teach the method of claim 1.
It does not teach:
wherein determining the activity to perform comprises: determining that a first client device was used to bring the software application into the current use state; and determining that the software application has been accessed from a second client device.
However, Raju, in the same field of software management, teaches determining that a first client device was used to bring the software application into the current use state (At block 702, an activity feed engine engages a task on a source device, such as device 102, 200, 408, 506, and/or 606. – [col 16; lines 53-61]; A source device corresponds to Applicant’s “first client device” and engages a task corresponds to Applicant’s “bring the software application into the current use state); and determining that the software application has been accessed from a second client device (In block 712, the activity feed engine launches an application on the target device, respective to the task selection in block 710. In some examples, the activity feed engine can launch the same application in which the task was last presented and/or modified on the source device. – [col 17; lines 27 - 31]; launching the same application on a target device corresponds to the Applicant’s “the software application” being accessed from a “second client device”).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date to combine Raju’s teaching of determining that a first client device was used to bring the software application into the current use state, and determining that the software application has been accessed from a second client device with the activity prediction system of Edwards. This implementation would have been obvious to one of ordinary skill at the time because it would enable activity data to be tracked accurately when users engage with one activity over multiple devices, which further enhances the user experience.
As per claim 19:
The combination of Dotan-Cohen and Edwards teaches the non-transitory computer-readable medium of claim 16.
It does not teach:
wherein determining the activity to perform comprises: determining that a first client device was used to bring the software application into the current use state; and determining that the software application has been accessed from a second client device.
However, Raju, in the same field of software management, teaches determining that a first client device was used to bring the software application into the current use state (At block 702, an activity feed engine engages a task on a source device, such as device 102, 200, 408, 506, and/or 606. – [col 16; lines 53-61]; A source device corresponds to Applicant’s “first client device” and engages a task corresponds to Applicant’s “bring the software application into the current use state); and determining that the software application has been accessed from a second client device (In block 712, the activity feed engine launches an application on the target device, respective to the task selection in block 710. In some examples, the activity feed engine can launch the same application in which the task was last presented and/or modified on the source device. – [col 17; lines 27 - 31]; launching the same application on a target device corresponds to the Applicant’s “the software application” being accessed from a “second client device”).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date to combine Raju’s teaching of determining that a first client device was used to bring the software application into the current use state, and determining that the software application has been accessed from a second client device with the activity prediction system of Edwards. This implementation would have been obvious to one of ordinary skill at the time because it would enable activity data to be tracked accurately when users engage with one activity over multiple devices, which further enhances the user experience.
Response to Arguments
Applicant’s arguments for 101 rejections filed 5/4/2026 have been fully considered but are not persuasive. The rejection under 35 U.S.C. § 101 is MAINTAINED for the reasons set forth below.
The Applicant's arguments are summarized as below:
a) Applicant’s Argument Regarding USPTO Policy Change
b) Applicant’s “Technical Improvements” Argument
c) Applicant’s Step 2A, Prong 2 Argument
d) Applicant’s Step 2B Argument
In response to a), Applicant cites the December 5, 2025 memo from Deputy Commissioner for Patents Charles Kim titled “Advance notice of change to the MPEP in light of Ex Parte Desjardins” (“101 Memo”) and asserts that the new policy is applicable to the amended claims.
The Examiner has considered the 101 Memo and its guidance regarding Enfish and Ex Parte Desjardins. However, the Examiner respectfully notes that the 101 Memo and Enfish support the Examiner’s position, not Applicant’s.
The central holding of Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), is that claims directed to improvements in computer functionality itself — as opposed to claims that merely use a computer as a tool to perform an abstract idea — are not directed to an abstract idea at Step 2A. In Enfish, the claims were directed to a specific data structure (a self-referential table) that improved how a computer stored and retrieved data. The Federal Circuit emphasized that the claims were “directed to a specific improvement to the way computers operate” — namely, a “specific type of data structure designed to improve the way a computer stores and retrieves data in memory.” Enfish, 822 F.3d at 1336.
The Enfish framework requires a two-part inquiry: (1) Does the claim focus on a specific improvement to computer functionality? Or (2) Does the claim merely invoke computers as a tool to perform an otherwise abstract process?
As discussed in detail below (Section II), Applicant’s claims fall squarely in category (2). The claims do not recite a new data structure, a new algorithm for memory management, a specific improvement to how a processor operates, or any architectural innovation. They recite the abstract concept of task completion monitoring and use generic computer components to implement it. The fact that completing a task might incidentally free memory does not transform the claim into one directed to a computer functionality improvement under Enfish.
Similarly, Ex Parte Desjardins and the 101 Memo do not stand for the proposition that any claim touching on computer operations is automatically eligible. The guidance instructs examiners to carefully evaluate whether claims reflect genuine technical improvements under Enfish — which is precisely the analysis performed here.
In response to b), Applicant points to specification paragraphs 201-203 and argues that the claims provide a “technical solution to a technical problem” — specifically, that uncompleted application interactions “take up memory and will remain in memory perpetually unless they are specifically examined,” and that the claimed invention enables “memory usage [to] be reduced and made more efficient.”
The Examiner has carefully reviewed ¶¶ 201-203 and finds this argument unpersuasive for the following reasons:
The Alleged “Technical Problem” Is Not a Technical Problem Under § 101
The “problem” identified in ¶ 201 — “determining when a user has interacted with one or more applications to something other than a point of completion” — is not a technical problem in the functioning of the computer. It is a user behavior problem — specifically, the problem that users sometimes abandon tasks before completing them. This is not a deficiency in how the computer’s processor, memory, operating system, or network functions. It is a deficiency in human follow-through.
A technical problem, as understood in the § 101 context, involves a limitation or deficiency in the computer’s own operation — such as the slow database retrieval in Enfish, the vulnerability to malware in Finjan, or the inability of prior art systems to handle a specific data format in McRO. The problem here — users not finishing tasks — exists regardless of whether a computer is involved. A person using a paper-based system faces the same problem of incomplete tasks.
The “Memory” Justification Is Conclusory and Insufficient
Applicant asserts that “uncompleted application interactions take up memory and will remain in memory perpetually” and that the claimed invention enables “memory usage [to] be reduced and made more efficient” (¶ 203). The Examiner finds this memory-reduction rationale to be conclusory, incidental, and insufficient to establish a technical improvement under § 101 for the following reasons:
(1) The claim does not recite any memory management operations.
Claim 1 does not recite: Freeing memory, Deallocating memory resources, Managing memory allocation or garbage collection, or any memory-related operation whatsoever. The claim recites obtaining state information, identifying an incomplete condition, determining an activity, providing a message, and causing the application to perform the activity. These are task management operations, not memory management operations.
(2) The memory benefit is an inherent, incidental consequence — not a claimed technical improvement.
Any completed software operation will eventually result in resources (including memory) being freed. Closing a web browser tab frees memory. Completing a file upload and closing the upload dialog frees memory. Finishing any application task frees associated memory. This is an inherent consequence of how all computers operate — not a specific technical improvement attributable to the claimed invention.
Under Enfish, the claimed improvement must be reflected in the claims themselves and must constitute a specific, non-conventional improvement to computer functionality. Here, the “improvement” is simply the completion of a task — which incidentally frees memory as all completed operations do. This is not analogous to Enfish’s self-referential table (which fundamentally changed how data was stored and retrieved) or McRO’s specific rules (which enabled automated lip synchronization that was previously impossible).
(3) The specification’s assertion of technical benefit is insufficient without claim support.
Even accepting arguendo that memory reduction is a genuine technical benefit, the claims must actually recite the technical improvement — not merely perform an abstract process that might, as an incidental byproduct, achieve a technical result. The specification’s assertions in ¶¶ 201-203 do not control the § 101 analysis when the claims themselves do not reflect the alleged technical improvement.
The “Prior Art” Argument Does Not Establish Eligibility
Applicant’s specification at ¶ 202 states: “In the prior art, there was no solution with respect to determining when a user has not completed such an interaction with applications, much less how to prompt the user to complete the interaction.”
The Examiner notes that novelty and non-obviousness under §§ 102/103 are distinct from eligibility under § 101. A claim may be novel and non-obvious yet still directed to an abstract idea.
In response to c), Applicant argues that the claim integrates the abstract idea into a practical application because the system “decreases the memory used by applications left in an incomplete state” and “facilitates reduced usage of computing resources.”
The Examiner finds this argument unpersuasive for the following reasons:
The Claim Does Not Recite a Practical Application
Under MPEP § 2106.05(a)-(h), the Examiner evaluates whether the additional elements: Improve the functioning of a computer or other technology, apply the judicial exception with a particular machine, effect a transformation of a particular article, or apply the judicial exception in some other meaningful way beyond generally linking it to a technological environment.
Under § 2106.05(a) — Improvement to technology, the claims do not improve how a computer operates. It improves whether a user’s tasks get done — a business/personal improvement. The incidental memory savings asserted in the spec is not recited in the claim and is an inherent consequence of any completed computer operation.
Under 2106.05(b) — Particular machine - No particular machine is recited. The claim applies to any generic computing device running any software application.
Under § 2106.05(c) - No transformation of a particular article is recited. Data states changing (incomplete → complete) is the manipulation of abstract data, not a physical transformation.
Under § 2106.05(e) — Other meaningful limitations - The claimed elements merely implement the abstract task-management concept using generic computer functions.
Under § 2106.05(f) — “Apply it” - “Causing the software application to perform the activity” is an instruction to apply the abstract concept using a generic computer
Under § 2106.05(g) — Insignificant extra-solution - “Obtaining state information” and “providing a message” are data gathering/output activities.
In response to d), Applicant argues that even if the claims are directed to an abstract idea, “the identification of applications in incomplete condition and subsequent performance of activities to complete such conditions provides an inventive concept that is not well-understood, routine, or conventional in the art” and cites Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).
The Examiner finds this argument unpersuasive for the following reasons: Applicant identifies the “inventive concept” as “the identification of applications in incomplete condition and subsequent performance of activities to complete such conditions.” However, this is simply a restatement of the abstract idea identified at Step 2A, Prong 1. The abstract idea cannot supply its own inventive concept. Importantly, the Berkheimer inquiry at Step 2B focuses on whether the additional elements beyond the abstract idea are well-understood, routine, and conventional — not whether the abstract idea itself is novel. In order not to repeat himself, the examiner identifies additional elements beyond the abstract idea and their conventional nature in the above 101 rejections.
For the above reasons, claims 1-2, 4-9 and 11-22 remain rejected under 35 U.S.C. § 101.
Applicants’ arguments for the 102 and 103 rejections filed 5/4/2026 have been fully considered.
Applicants’ arguments are summarized below:
The disclosure of “a set of one or more likely user activity patterns” in Dotan-Cohen does not teach the limitation “identifying a current use state of the plurality of use states” of the independent claims 1, 16, and 20
Dotan-Cohen fails to teach newly amended claim limitations of “wherein the current use state indicates that the software application is in an incomplete condition” and “causing the software application to perform the activity, wherein performing the activity involves continuing use of the software application from the incomplete condition until the current use state has transitioned to a further use state that completes the incomplete condition”
In regards to (a), Applicants’ argument is respectfully considered. However, the Examiners’ interpretation is that, rather, the disclosure of “Based on … and in some cases current sensor data regarding user activity” [col. 5; lines 18-20] was used to teach the stated limitation of the claim. Specifically, the usage of current sensor data to determine “a set of one or more likely user activity patterns” corresponds to “identifying a current use state of the plurality of use states”. Therefore, the rejection regarding this element is maintained.
In regards to (b), Applicant’s arguments, filed 5/4/2026 with respect to the newly amended claim limitations in the independent claims 1, 16 and 20 under Dotan-Cohen and Raju have been fully considered and are persuasive. Therefore, the Dotan-Cohen rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Edwards as applied above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hemphill et al. (US 6167448 A) discusses an event notification system that uses management agents to detect events and provide event notification messages.
Wylie et al. (US 10673958 B1) discusses maintaining user sessions across multiple devices and/or platforms.
Casati et al. (US 11734150 B1) discusses a system that monitors user event activity on a software application/s and analyzes common paths users take when navigating them.
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.
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/JOSEPH MAXEN LANE/Examiner, Art Unit 2196
/APRIL Y BLAIR/Supervisory Patent Examiner, Art Unit 2196