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
This action is in reply to the communications filed on March 3, 2026. The Applicants’ Amendment and Request for Reconsideration has been received and entered.
Claims 1-20 are currently pending and have been examined. Claims 1-2, 9-10, and 17-18 have been amended.
The previous rejection of claims 1-20 under 35 USC 112(b) has been withdrawn.
Response to Arguments
Applicants’ amendments necessitated any new grounds of rejection.
The previous rejection of claims 1-20 under 35 USC 112(b) has been withdrawn in view of Applicants’ amendments.
Applicants’ arguments regarding the rejection under 35 USC 101 have been fully considered but they are not persuasive. Applicants argue at pages 2-3 of Applicants’ Reply dated March 3, 2026 (hereinafter “Applicants’ Reply”) that the claims “cannot practically be performed in the human mind” because a “human mind cannot practically train such a model, compute user-level counterfactual engagement predictions, or apply the trained model in real time to generate a sensitivity score for each query.” The Examiner respectfully disagrees with Applicants’ characterization of the claims.
Per MPEP 2106.04(a)(2)(III)(A), examples of claims that do not recite mental processes because they cannot be practically performed in the human mind include: a claim to a method for calculating an absolute position of a GPS receiver and an absolute time of reception of satellite signals, where the claimed GPS receiver calculated pseudoranges that estimated the distance from the GPS receiver to a plurality of satellites; a claim to detecting suspicious activity by using network monitors and analyzing network packets; a claim to a specific data encryption method for computer communication involving a several-step manipulation of data; and a claim to a method for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask, where the method required the manipulation of computer data structures (e.g., the pixels of a digital image and a two-dimensional array known as a mask) and the output of a modified computer data structure (a halftoned digital image).
In contrast, claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. Examples of claims that recite mental processes include: a claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind; claims to "comparing BRCA sequences and determining the existence of alterations," where the claims cover any way of comparing BRCA sequences such that the comparison steps can practically be performed in the human mind; a claim to collecting and comparing known information, which are steps that can be practically performed in the human mind; and a claim to identifying head shape and applying hair designs, which is a process that can be practically performed in the human mind).
Further, per MPEP 2106.04(a)(2)(III)(C), “Claims can recite a mental process even if they are claimed as being performed on a computer.” Thus, merely reciting the use of a computer is not sufficient to recite a technological improvement. MPEP 2106.04(a)(2)(III)(C) further indicates “In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification. For instance, examiners should review the specification to determine if the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite a mental process.”
With these examples in mind, the Examiner respectfully asserts that the instant claims recite mental processes because they are merely using a computer as a tool to perform the concept. First, the claims do not recite training the model. Instead, claim 1 discloses that the model has been previously trained to predict a sensitivity score—not the active training of it. Second, even assuming arguendo that claim 1 actively recited training the model, the models themselves are not recited and may be simple enough to be performed in the human mind and/or with the assistance of a computer, i.e., using the computer as a tool. For example, the model may be a simple linear score based on time until a user abandons the search results page, i.e., if a user abandons the search results page or starts a new search, the examiner’s score may be a 4 for 4 minutes until abandonment, a 5 for 5 minutes until abandonment, etc. That can easily be performed in the human mind or with the use of a computer as a tool. Further, claim 1 recites “applying the model”, which may be performed using the computer as a tool.
Applicants further argue at page 3 of Applicants’ Reply that selecting the content items may be based on sensitivity score by “weighting the relevance scores by the sensitivity score of applying a minimum relevance threshold based on the sensitivity score. This is an algorithmic selection mechanism in which a computed numerical output from a machine learning model dynamically modifies how relevance constraints are applied to a set of content items.” The Examiner respectfully disagrees.
First, per MPEP 2106.05(a), "if the specification sets forth an improvement in technology, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement." The Examiner respectfully notes that the claims do not currently recite anything about weighting the relevance scores or applying a minimum relevance threshold or any other limitations regarding how the content items are automatically selected according to an algorithm. Thus, as currently recited, any selection method based on sensitivity score could be used, including merely noting that a user is highly sensitive to relevance so that a high sensitivity score results in only highly relevant selections, which could practically be performed in the human mind.
Applicants further argue at page 4 of Applicants’ Reply that the dependent claims “recite additional technical limitations that further demonstrate the impossibility of mental performance” and point specifically to the two models recited in claim 2. The Examiner respectfully notes that claim 2 describes two different models and then only requires a calculation of a difference between the two models. The Examiner respectfully notes that subtraction is something that may be performed mentally or using the computer as a tool.
Applicants further argue at page 5 of Applicants’ Reply that dependent claim 4 recites a conditional treatment effect model and that “the human mind cannot practically compute conditional average treatment effects across user populations using statistical methodologies that require processing complex mathematical equations and large datasets.” The Examiner respectfully notes that, as discussed above, claim 1 recites “applying the model”, which may be performed using the computer as a tool and thus is still considered to recite a mental process.
Applicants further argue at page 6 of Applicants’ Reply that the “claims recite a specific technological solution to a problem arising in computerized search systems” and describe this problem as “how to incorporate sponsored content into search results without degrading user engagement due to individual differences in sensitivity to relevance of the content in the search results.” The Examiner respectfully disagrees.
Per MPEP 2106.05(a), improvements to computer functionality include a modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage; inventive distribution of functionality within a network to filter Internet content; a method of rendering a halftone digital image; a distributed network architecture operating in an unconventional fashion to reduce network congestion while generating networking accounting data records; a memory system having programmable operational characteristics that are configurable based on the type of processor, which can be used with different types of processors without a tradeoff in processor performance; technical details as to how to transmit images over a cellular network or append classification information to digital image data; a particular structure of a server that stores organized digital images; a particular way of programming or designing software to create menus; a method that generates a security profile that identifies both hostile and potentially hostile operations, and can protect the user against both previously unknown viruses and "obfuscated code," which is an improvement over traditional virus scanning; an improved user interface for electronic devices that displays an application summary of unlaunched applications, where the particular data in the summary is selectable by a user to launch the respective application; a specific interface and implementation for navigating complex three-dimensional spreadsheets using techniques unique to computers; and a specific method of restricting software operation within a license.
Per MPEP 2106.05(a), some examples that the courts have said “may not be sufficient to show an improvement in computer-functionality” include generating restaurant menus with functionally claimed features; accelerating a process of analyzing audit log data when the increased speed comes solely from the capabilities of a general-purpose computer; mere automation of manual processes, such as using a generic computer to process an application for financing a purchase; recording, transmitting, and archiving digital images by use of conventional or generic technology in a nascent but well-known environment, without any assertion that the invention reflects an inventive solution to any problem presented by combining a camera and a cellular telephone; affixing a barcode to a mail object in order to more reliably identify the sender and speed up mail processing, without any limitations specifying the technical details of the barcode or how it is generated or processed; instructions to display two sets of information on a computer display in a non-interfering manner, without any limitations specifying how to achieve the desired result; providing historical usage information to users while they are inputting data, in order to improve the quality and organization of information added to a database, because "an improvement to the information stored by a database is not equivalent to an improvement in the database’s functionality”; and arranging transactional information on a graphical user interface in a manner that assists traders in processing information more quickly.
With this guidance in mind, the Examiner respectfully asserts that the claims are not directed to a practical application. First, the stated problem of “how to incorporate sponsored content into search results without degrading user engagement due to individual differences in sensitivity to relevance of the content in the search results” is not a technical problem. Instead, this is a problem that existed in the pre-Internet world as well, namely for newspaper and magazine editors who had to balance advertising dollars with providing actual content to users. In light of the examples discussed above, this appears most similar to arranging transactional information on a graphical user interface in a manner that assists traders in processing information more quickly, i.e., that the content’s arrangement in terms of relevance assists users in engaging with the search contents. Thus, the Examiner respectfully asserts that the claims do not constitute a practical application of the abstract idea.
Applicants further argue at page 7 of Applicants’ Reply that the claims “also recite a specific improvement to user interface functionality” analogous to the subject matter in Example 37. Applicants argue at page 8 of Applicants’ Reply that the claims “improves the operation of a search results interface by automatically controlling how sponsored content is incorporated into that interface based on predicted user sensitivity to relevance” by reciting “a structural modification to how content is positioned within the interface.” The Examiner respectfully disagrees.
The Examiner respectfully notes that the claims merely recite selecting content items and “incorporating the selected content items into the set of search results”. In Example 37, the icons were ordered based on usage. However, in the instant case, there is no determination of what product to display or an order in which to display it or how displaying one product over another is an improvement to the graphical user interface. Per MPEP 2106.05a, arranging transactional information on a graphical user interface in a manner that assists traders in processing information more quickly is not sufficient to impart eligibility. Trading Technologies v. IBG LLC, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019). Similarly, displaying recommended items to a user is an alleged improvement to the abstract idea of recommending products to a user, not an improvement to the computer or technology itself. This falls under the category of mere automation of a manual process, which is not sufficient to impart eligibility. There is no indication of a particular arrangement of the content items on the interface relative to the search results based on user sensitivity that would make the claim analogous to Example 37.
Thus, the rejection under 35 USC 101 is maintained.
Applicants’ arguments regarding the rejection under Eberlein have been fully considered and they are persuasive.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Independent claims 1, 9, and 17 are directed to a method, a computer program product, and a system for providing search results to a user. With respect to claim 1, claim elements accessing a machine learning model, applying the machine learning model, selecting one or more content items, and incorporating the selected content items into the set of search results, as drafted, illustrate steps that, under their broadest reasonable interpretation, cover a mental process. That is, nothing in the claim precludes the steps from practically being performed in the mind. Claims 9 and 17 recite similar limitations.
The judicial exception is not integrated into a practical application. In particular, claims 1, 9, and 17 recite receiving/retrieving and sending (transmitting) steps. These limitations are considered to be insignificant extra-solution activity.
Further, claim 17 recites a processor and a non-transitory computer readable storage medium. These elements are recited at a high level of generality, i.e., as generic computer components performing generic computer functions. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, claims 1, 9, and 17 recite receiving/retrieving and sending (transmitting) steps. Per MPEP 2106.05(d)(II), elements such as receiving or transmitting data over a network, using the Internet to gather data, and storing and retrieving information in memory are considered to be computer functions that are well-understood, routine, and conventional functions. See Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPG2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network)).
Further, as discussed above, claim 17 recites a processor and a non-transitory computer readable storage medium. These elements are recited at a high level of generality (i.e., as generic computer components performing generic computer functions). Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
Thus, claims 1, 9, and 17 are directed to the abstract idea.
Claims 2-8, 10-16, and 18-20 depend from claims 1, 9, and 17. Claims 2, 10, and 18 are directed to a first model, a second model, and determining the sensitivity score as a difference between the outputs of the two models and are further directed to the abstract idea. Claims 3, 11, and 19 are directed to training the first and second model and are further directed to the abstract idea. Claims 4, 12, and 20 are directed to the type of model and are further directed to the abstract idea. Claims 5 and 13 are directed to obtaining additional data and retraining the model and are further directed to the abstract idea. Claims 6 and 14 are directed to determining a minimum relevance threshold, determining whether a relevance score of a content item is greater than the minimum relevance threshold, and selecting the content item and are further directed to the abstract idea. Claims 7 and 15 are directed to the sensitivity score and are further directed to the abstract idea. Claims 8 and 16 are directed to using the stored sensitivity score to select content items and are further directed to the abstract idea. Claims 8 and 16 are further directed to storing the sensitivity score which, as discussed above, is an activity that is considered to be well-understood, routine, and conventional.
Thus, the claims are not patent eligible.
Potentially Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
With respect to claim 1, the prior art of record, alone or combined, neither anticipates nor renders obvious, a method comprising receiving a query from a target user; retrieving a set of search results responsive to the query; retrieving a set of content items for inclusion within the set of search results, where each of the set of content items has a relevance score to the query; accessing a machine learning model trained to predict a sensitivity score that predicts a loss in engagement by a user with a set of search results caused by incorporating into the set of search results a content item that is selected without consideration of relevance to the set of search results; applying the machine learning model to user data of the target user to output a sensitivity score for the target user; selecting one or more content items from the set of content items, wherein the selecting is based on the sensitivity score and the relevance scores of the set of content items such that a higher sensitivity score results in selecting content items having greater relevance scores; incorporating the selected content items into the set of search results; and sending the set of search results with the selected content items for display to the target user, wherein the sending causes a device of the target user to display the set of search results and the selected content items.
With respect to claims 9 and 17, the prior art of record, alone or combined, neither anticipates nor renders obvious a computer program product and a system reciting similar limitations.
Conclusion
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 extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNE MARIE GEORGALAS whose telephone number is (571)270-1258 E.S.T.. The examiner can normally be reached on Monday-Friday 8:30am-5:00pm.
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/Anne M Georgalas/
Primary Examiner, Art Unit 3689
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