Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Status of Claims
This action is in reply to the communication filed on 04/10/2026.
Claims 1-6, 8-10, 15, 18-19 have been amended.
Claims 7, 11-14, 16-17 have been canceled.
Claims 1-6, 8-10, 15, 18-19 are currently pending and have been examined.
Response to Applicant’s Arguments
Applicant’s amendments and arguments filed on 04/10/2026 have been fully considered and discussed in the next section. Applicant is reminded that the claims must be given its broadest, reasonable interpretation.
With regard to claims 1,9-10 objection. Applicant amended the claims. therefore, the claims objection of claims 1,9-10 is withdrawn.
With regard to claims 1,9-10 under 35 USC § 112, second paragraph, Applicant’s amended the claims. Therefore, the claim rejection of claims 1,9-10 under 35 USC § 112, second paragraph is withdrawn.
With regard to claims 16-17 rejection under 35 USC § 112, second paragraph, Applicant’s canceled the claims. Therefore, the claim rejection of claims 16-17 under 35 USC § 112, second paragraph is withdrawn.
With regard to claims 1-6, 8-10, 15, 18-19 rejection under 35 USC § 101:
Applicant argues that “the amended claims warrant a different outcome under the Desjardins framework. As a threshold matter, the Desjardins Memorandum revises MPEP §2106.05(a) to instruct that examiners should be "careful to avoid oversimplifying the claims by looking at them generally and failing to account for the specific requirements of the claims," and that "Examiners and panels should not evaluate claims at such a high level of generality" that potentially meaningful technical limitations are dismissed without adequate explanation. Applicant respectfully submits that characterizing the amended claims as merely "gathering information, performing calculations, and transmitting results" does not account for the specific technical requirements recited, including dual-axis similarity computation, time-decayed cumulative reward counters with a discount factor that decreases with reward age (Paragraphs [0047]-[0048], Equations 5A-5B), prior distribution estimation based on both similarities (Paragraph [0049], Equation 4), posterior beta distribution derivation through additive incorporation of cumulative counters with hyperparameters and pseudo-counts (Paragraph [0050], Equation 6), and sampling from the posterior beta distribution (Paragraph [0053], Algorithm 1 step S6). The Desjardins guidance instructs that each of these limitations should be accounted for individually and as an ordered combination. The Desjardins Memorandum further revises MPEP §2106.05(a) to state that examiners "should not dismiss additional elements as mere 'generic computer components' without considering whether such elements confer a technological improvement to a technical problem." The memorandum adds new example (xiv) recognizing as eligible "Improvements to computer component or system performance based upon adjustments to parameters of a machine learning model associated with tasks or workstreams." The amended claims recite adjustments to parameters (a, 3) of a Bayesian machine learning model based on similarity-weighted, time- decayed rewards which falls within this new example. These adjustments enable the model to estimate expected rewards for new content with insufficient history information, overcoming the cold start problem identified at Paragraphs [0002] and [0005]-[0006]. This parallels Desjardins, where the ARP found that a machine learning method overcoming "catastrophic forgetting" constituted an improvement to how the machine learning model itself operates, even though the claims recited mathematical concepts at Prong One. Regarding the Examiner's observation that the specification does not explicitly state that the invention improves machine learning technology, the Desjardins Memorandum revises MPEP §2106.04(d)(1) to state that "the 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. The specification describes a "new learning model" (Paragraph [0036]) identified as the "dynamic collaborative filtering Thompson sampling strategy" (Paragraph [0051]), distinct from the original Thompson sampling strategy. The specification describes how this model dynamically adapts to changing user preferences through time-decayed rewards (Paragraph [0047]) and enables evaluation of rewards "for new advertisements with less history information" through cross-domain knowledge transfer (Paragraph [0054]). Applicant respectfully submits that one of ordinary skill would recognize these as improvements to how the learning model itself operates. The Desjardins Memorandum states that such improvements are "tantamount to how the machine learning model itself would function in operation and therefore not subsumed in the identified mathematical calculation." Finally, the Desjardins Memorandum reaffirms that an important consideration is "the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome." Amended Claim 1 recites a particular way the specific ordered combination of dual-axis similarity acquisition, time-decayed reward counters, prior estimation, posterior beta distribution derivation, Thompson sampling, and widget-based carousel delivery constituting a particular technical solution to the cold start problem, not the abstract idea of a solution. In view of the foregoing, Applicant respectfully requests withdrawal of the § 101 rejection of Claims 1-6, 8-10, and 15-19 (page 4/8)”.
Examiner disagrees. MPEP § 2106.04(d), subsection III: In Ex Parte Desjardins, Appeal No. 2024-000567 (PTAB September 26, 2025, Appeals Review Panel Decision) (precedential), the claimed invention was a method of training a machine learning model on a series of tasks. The Appeals Review Panel (ARP) overall credited benefits including reduced storage, reduced system complexity and streamlining, and preservation of performance attributes associated with earlier tasks during subsequent computational tasks as technological improvements that were disclosed in the patent application specification. Specifically, the ARP upheld the Step 2A Prong One finding that the claims recited an abstract idea (i.e., mathematical concept). In Step 2A Prong Two, the ARP then determined that the specification identified improvements as to how the machine learning model itself operates, including training a machine learning model to learn new tasks while protecting knowledge about previous tasks to overcome the problem of “catastrophic forgetting” encountered in continual learning systems. Importantly, the ARP evaluated the claims as a whole in discerning at least the limitation “adjust the first values of the plurality of parameters to optimize performance of the machine learning model on the second machine learning task while protecting performance of the machine learning model on the first machine learning task” reflected the improvement disclosed in the specification. Accordingly, the claims as a whole integrated what would otherwise be a judicial exception instead into a practical application at Step 2A Prong Two, and therefore the claims were deemed to be outside any specific, enumerated judicial exception (Step 2A: NO). the claim recited a technological solution to a technological problem. Id. Finally, in Ex Parte Desjardins, the claims reflected a specific improvement that addressed the technical problem of “catastrophic forgetting” in continual learning systems, while allowing artificial intelligence systems to variously optimize system performance, use less storage capacity and reduce system complexity. Ex Parte Desjardins, Appeal No. 2024-000567 (PTAB September 26, 2025, Appeals Review Panel Decision) (precedential).
The instant claims bear no similarity to the Ex Parte Desjardins Holdings decision, because the instant claim (s) do not recite Machine learning and / or train a machine learning model whereas Ex Parte Desjardins (claims to a method of training a machine learning model were directed to improvements in the machine learning technology itself and additionally included data structure elements reciting adjustments in values to plurality of performance parameters while preserving prior values). Ex Parte Desjardins, Appeal No. 2024-000567 (PTAB September 26, 2025, Appeals Review Panel Decision) (precedential), in which the specification identified the improvement to machine learning technology by explaining how the machine learning model is trained to learn new tasks while protecting knowledge about 2 previous tasks to overcome the problem of “catastrophic forgetting,” and that the claims reflected the improvement identified in the specification. Indeed, enumerated improvements identified in the Desjardins specification included disclosures of the effective learning of new tasks in succession in connection with specifically protecting knowledge concerning previously accomplished tasks; allowing the system to reduce use of storage capacity; and the enablement of reduced complexity in the system. Such improvements were tantamount to how the machine learning model itself would function in operation and therefore not subsumed in the identified mathematical calculation. Accordingly, the claim rejection of claims 1-6, 8-10, 15, 18-19 rejection under 35 USC § 101 is maintained.
Claim Rejections - 35 USC § 101
35 U.S.C. §101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-6, 8-10, 15, 18-19 are directed to a system and a method which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes). However, claims 1-6, 8-10, 15, 18-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) the following abstract idea:
maintain a locality-sensitive-hashing index of user feature vectors and a locality- sensitive-hashing index of content feature vectors;
acquire a content-to-content similarity that is a similarity between a target content and one or more pieces of other content, and a user-to-user similarity that is a similarity between a target user and one or more other users;
update, for the target user and the target content item, a time-decayed cumulative positive-reward counter and a time-decayed cumulative negative-reward counter in which each newly observed reward is multiplied by a discount factor that decreases with reward age;
estimate a prior distribution of expected rewards obtained as a result of execution processing performed by the target user on the target content, based on the content-to-content similarity and the user-to-user similarity;
derive parameters of a posterior beta distribution of the expected rewards, using the prior distribution by incrementally adding the time-decayed cumulative reward counters to the prior distribution without recomputing historical rewards;
sample an expected-reward value from the posterior beta distribution; and
transmit, based on the sampled expected-reward value satisfying a delivery criterion, a control signal that causes a user associated with the target user to display the target content item in an advertisement display frame provided by a widget executing on the user;
provide the target content to the user associated with the target user based on the sampled expected-reward value, and perform control to display the target content, wherein the target content is displayed by a widget that is application software having a function of displaying advertisements, and wherein a set of advertisements consisting of a plurality of advertisements are displayed based on a source and are configured to be switched and displayed using a carousel function that enables a user to perform an operation to switch between the plurality of advertisements to be displayed in one advertisement display frame;
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely commercial or legal interactions because they recite advertising, marketing and sales activities or behaviors. The limitations of “ update, for the target user and the target content item, a time-decayed cumulative positive-reward counter and a time-decayed cumulative negative-reward counter in which each newly observed reward is multiplied by a discount factor that decreases with reward age; estimate a prior distribution of expected rewards obtained as a result of execution processing performed by the target user on the target content, based on the content-to-content similarity and the user-to-user similarity; derive parameters of a posterior beta distribution of the expected rewards, using the prior distribution by incrementally adding the time-decayed cumulative reward counters to the prior distribution without recomputing historical rewards; sample an expected-reward value from the posterior beta distribution”, also fall within mathematical concepts groupings of abstract ideas as it relates to (relations, equations and/or calculations. Accordingly, the claim recites an abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application because the claim only recites the additional elements of a computer with one or more hardware processors coupled to a non-transitory memory and configured to execute software instructions, user device (e.g. a general purpose computer with generic computer components) and a display (e.g. a generic computer component).
The following limitations, if removed from the abstract idea and considered additional elements, merely perform generic computer function of processing, storing, communicating (e.g., transmitting and receiving), and displaying data and, as such, are insignificant extra-solution activities (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
transmit, based on the sampled expected-reward value satisfying a delivery criterion, a control signal that causes a user device associated with the target user to display the target content item in an advertisement display frame provided by a widget executing on the user device;
More The additional technical elements above are recited at a high-level of generality (i.e., as a generic processor and generic computer components performing a generic computers function of processing, communicating and displaying) such that it amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and generic computer components. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (see MPEP 2106.05(e) and Vanda memo).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on one or more computers, or merely uses computers as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
Thus, the claim is “directed to” an abstract idea (i.e. “PEG” Revised Step 2A Prong Two=Yes).
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea. Specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using a computer with one or more hardware processors coupled to a non-transitory memory and configured to execute software instructions, user device (e.g. a general purpose computer with generic computer components) and a display (e.g. a generic computer component). to perform the claimed functions amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and one or more generic computer component.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on one or more computers, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent-eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires one or more general-purpose computer and generic computer components (as evidenced from paragraphs 25, 36, 55 of the Applicant’s specification); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility.
Finally, the following limitations, if removed from the abstract idea and considered additional elements, would be considered insignificant extra solution activity as they are directed to merely receiving, displaying, storing, and/or transmitting data (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
transmit, based on the sampled expected-reward value satisfying a delivery criterion, a control signal that causes a user device associated with the target user to display the target content item in an advertisement display frame provided by a widget executing on the user device;
Thus, taken individually and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea) (i.e., “PEG” Step 2B=No). For the same reason these elements are not sufficient to provide an inventive concept. For these reasons, there is no inventive concept in the claim, and thus the claim is not patent eligible. Same Judicial analysis is applied here to independent claims 9-10.
The dependent claims 2-6,8,15,18-19 appear to merely further limit the abstract idea and therefore only further limit the abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes), does/do not include any new additional elements that are sufficient to amount to significantly more than the judicial exception, and as such are “directed to” said abstract idea (i.e. “PEG” Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. “PEG” Step 2B=No). Thus, based on the detailed analysis above, claims 1-6, 8-10, 15, 18-19 are not patent eligible.
Possible Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Independent claims recite combination of features of which Examiner is unable to find a prior art that discloses the claimed features . The most relevant prior the examiner has found is:
Bernhardsson et al, US Pub No: 2019/0138551 A1, teaches A method of selecting content items based on user interactions with provided content is performed at a server system. A subset of content items selected from a plurality of available content items is provided to a first user of the service. An amount of time that the subset of content items is provided to the first user is determined. Content item selection criteria for a second user of the service is adjusted based on the amount of time that the subset of content items is provided to the first user. In response to receiving -a request for a content item from the second user, a content item is selected items for the second user from the plurality of available content according to the adjusted content item selection criteria. The selected content item is provided to the second user.
Wu et al, US Pub No: 2020/0177942 A1 , teaches techniques for efficiently detecting similarity among electronic content items are provided. A vector is generated for each of multiple content items and is used to assign its corresponding content item to a group among multiple groups. A set of content items that is assigned to a particular group of the plurality of groups is identified. For each pair of content items in the set, a similarity score is generated and used to determine whether to classify the pair as similar to each other. Similarity data is updated if to identify the pair if it is determined to classify the pair of content items as similar to each other. The similarity data associates a first content item with a second content item. The second content item is prevented from being presented to a particular user for a period of time after the first content item is presented to the particular user.
As thus, claims 1-6, 8-10, 15, 18-19 recite subject matter that would be allowable over the prior art if the Applicant were to be able to overcome the 35 USC § 101 rejection above
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant' s disclosure.
Watterson, US Pub No:2013/0330694 A1, teaches A system incentivizes people to engage in physical activity. A person's physical activity may be monitored over a period of time. Such monitoring may occur by using a sensing device carried or worn by the user. In the system, one or more thresholds for physical activity are established. Information tracked using the sensing device can be compared to the thresholds. A percentage of physical activity relative to the threshold can be translated to a reward established for the physical activity, and the percentage may be used to determine a reward value for an electronic device relative to a full available value. Rewards may include times or amounts. Time values may indicate durations during which particular activities or devices may be used. Amount values may indicate an amount of a battery charge, a number of communications, a currency value, or other values relative to use of an electronic device.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. THIS ACTION IS MADE FINAL. 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 files within TWO MONTHS from 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 mailing date of this final.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Affaf Ahmed whose telephone number is 571-270-1835. The examiner can normally be reached on [ Mon-Thursday 8-6 pm ].
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached at 571-270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AFAF OSMAN BILAL AHMED/Primary Examiner, Art Unit 3622
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