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
This final Office action is in response to applicants’ communication received on June 30, 2026, wherein claims 1, 5-6, 8, 10-13 are currently pending.
Response to Arguments
Applicant's arguments filed have been fully considered but they are geared towards newly amended claims with newly added limitations. The newly amended claims with the newly added limitations are considered for the first time in the rejection below.
35 USC §101 discussion:
The amendment to the claims do not help the claims overcome the §101 rejection. The amended claims are directed to predicting/forecasting using abstract user information (behavior, location/position, no location, visits) on where ethe user will visit (provides a technique for constructing a relationship between information regarding online behavior of a user and information regarding offline behavior of the user). The technical term/elements (additional elements) (for example, apparatus, memory, program code, processor, train code, (generically recited ML technique without technical details – also with generically stated convolution layers, encoder network, autoencoder, neural networks, layers, etc.,), internet/web elements (online, offline), etc., (in Independent claim 1 and its dependent claims 5, 10-11); computer processor, train/training, (generically recited ML technique without technical details – also with generically stated convolution layers, encoder network, autoencoder, neural networks, layers, etc.,), etc., (in independent claim 6 and its dependent claims 12-13); and non-transitory computer program product, processor, computing system, fuel dispenser, train/training, (generically recited ML technique without technical details – also with generically stated convolution layers, encoder network, autoencoder, neural networks, layers, etc.,), transmitting using generic/general-purpose communication devices/components, etc., (independent claim 8)) shown in the claims, without more, is just referring to generic/general-purpose technology and/or computing elements/devices/etc., used in an ”apply-it” fashion. MPEP 2106.05(f). The well-known generic/general-purpose computing/computer elements/components/etc., (for example, apparatus, memory, program code, processor, train code, (generically recited ML technique without technical details – also with generically stated convolution layers, encoder network, autoencoder, neural networks, layers, etc.,), internet/web elements (online, offline), etc., (in Independent claim 1 and its dependent claims 5, 10-11); computer processor, train/training, (generically recited ML technique without technical details – also with generically stated convolution layers, encoder network, autoencoder, neural networks, layers, etc.,), etc., (in independent claim 6 and its dependent claims 12-13); and non-transitory computer program product, processor, computing system, fuel dispenser, train/training, (generically recited ML technique without technical details – also with generically stated convolution layers, encoder network, autoencoder, neural networks, layers, etc.,), transmitting using generic/general-purpose communication devices/components, etc., (independent claim 8)) recited in the claims are mere instructions to implement an abstract idea or other exception on a generic/general-purpose computer/machine.
It should be noted that mere automation of a manual process or claiming the improved speed or efficiency inherent with applying the abstract idea on a computer where these purported improvements come solely from the capabilities of a general-purpose computer are not sufficient to transform an abstract idea into a patent-eligible invention. See MPEP 2106.04(a); MPEP 2106.05(a); MPEP 2106.05(f); FairWarning IP, LLC v. Iatric Sys., 120 USPQ2d 1293, 1296 (Fed. Cir. 2016); Credit Acceptance Corp. v. Westlake Services, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017); Intellectual Ventures I LLC v. Capital One Bank (USA), 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). The core claimed (with amendments) concepts is still an abstract idea as the independent claims (1, 6, 8) and dependent claims (5, 10-13) still recite receiving/collecting/obtaining information/data (where the information itself is abstract in nature – e.g. user information, position/location, behavior, place/location, including information that shows lack of (missing/unavailable) information (no position data, etc.,), usage data, etc.,), data analysis and manipulation to determine more abstract information/data (e.g. comparing information, making predictions, estimations), and providing this determined data for further analysis and decision-making based on user information and predictions (from the relationship constructed between information regarding online behavior of a user and information regarding offline behavior of the user – in broad purposes/industries e.g. internet shopping, an online supermarket, or a service relating to communication, finance, real estate, sports, or travel (see specification para. 0020)). The limitations of the independent claims (1, 6, 8) and dependent claims (5, 10-13), under the broadest reasonable interpretation, covers methods of organizing human activity (managing personal behavior or relationships and commercial interactions (behavior and relationship in various commercial activities)).
Additionally, the claims as a whole do not integrate the recited judicial exception into a practical application.
The additional elements (for example, apparatus, memory, program code, processor, train code, (generically recited ML technique without technical details – also with generically stated convolution layers, encoder network, autoencoder, neural networks, layers, etc.,), internet/web elements (online, offline), etc., (in Independent claim 1 and its dependent claims 5, 10-11); computer processor, train/training, (generically recited ML technique without technical details – also with generically stated convolution layers, encoder network, autoencoder, neural networks, layers, etc.,), etc., (in independent claim 6 and its dependent claims 12-13); and non-transitory computer program product, processor, computing system, fuel dispenser, train/training, (generically recited ML technique without technical details – also with generically stated convolution layers, encoder network, autoencoder, neural networks, layers, etc.,), transmitting using generic/general-purpose communication devices/components, etc., (independent claim 8)) are just generic/general-purpose computers and computing components/devices/etc., used in an apply it fashion. It should be noted that a “claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” MPEP 2106.04(d). The U.S. Supreme Court has described “the concern that drives this exclusionary principle [i.e., the exclusion of abstract ideas from patent eligible subject matter] as one of pre-emption.” Alice, 573 U.S. at 216. However, characterizing preemption as a driving concern for patent eligibility is not the same as characterizing preemption as the sole test for patent eligibility. As the courts have explained, “[t]he Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability,” and “[f]or this reason, questions on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 573 U.S. at 216). And, although “preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Id. Moreover, “[w]here a patent’s claims are deemed only to disclose patent ineligible subject matter under the [Alice/Mayo] framework . . ., preemption concerns are fully addressed and made moot.” Id.; see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701 (2015)(“[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract.”). Further, Appellant’s claims are different from those claims that the Courts have found to be patent eligible by virtue of reciting technological improvements to a computer system. See, e.g., DDR Holdings, 773 F.3d at 1249, 1257 (holding that claims reciting computer processor for serving “composite web page” were patent eligible because “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks”); Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259 (Fed. Cir. 2017) (holding that claims directed to “an improved computer memory system” having many benefits were patent eligible). In McRO1, the Federal Circuit concluded that the claim, when considered as a whole, was directed to a “technological improvement over the existing, manual 3-D animation techniques” through the “use [of] limited rules . . . specifically designed to achieve an improved technological result in conventional industry practice.” McRO, 837 F.3d at 1316 (McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1303 (Fed. Cir. 2016)). Specifically, the Federal Circuit found that the claimed rules allowed computers to produce accurate and realistic lip synchronization and facial expressions in animated characters that previously could only be produced by human animators; and the rules were limiting because they defined morph weight sets as a function of phoneme sub-sequences. McRO, 837 F.3d at 1313.
The present situation is not like the one in McRO where computers had been unable to make certain subjective determinations, e.g., regarding morph weight and phoneme timings, which could only be made prior to the claimed invention by human animators. The Background section of one of the patents at issue in McRO, Rosenfeld (US Patent 6,307,576 B1; issued Oct. 23, 2001), includes a description of the admitted prior art method and the shortcomings associated with that prior method. See McRO, 837 F.3d at 1303-06. There is no comparable discussion in Appellant’s Specification or elsewhere of record. Further, as the Federal Circuit has explained, a “claim for a new abstract idea is still an abstract idea.” Synopsis, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). Even assuming the technique claimed was “[groundbreaking, innovative, or even brilliant,” that would not be enough for the claimed abstract idea to be patent eligible. See Ass ’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
Applicants’ claims do not show any improvement to the functioning of the devices themselves. See Enflsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016) (“[W]e find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea ... the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.”). The claims do not recite an additional element or elements that reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field. See Alice, 573 U.S. at 222 (“In holding that the process was patent ineligible, we rejected the argument that ‘implement[ing] a principle in some specific fashion’ will ‘automatically fal[l] within the patentable subject matter of § 101.”’ (Alterations in original) (quoting Parker v. Flook, 437 U.S. 584, 593 (1978))).
To be a patent-eligible improvement to computer functionality, the courts have required the claims to be directed to an improvement in the functionality of the computer or network platform itself. In Ancora Techs. Inc. v. HTC America, Inc., for example, the CAFC held that claims directed to storing a verification structure in computer memory were directed to a non-abstract improvement in computer functionality because they improved computer security. 908 F.3d 1343, 1347–49 (Fed. Cir. 2018). The CAFC determined the claims addressed the “vulnerability of license authorization software to hacking” and were thus “directed to a solution to a computer-functionality problem.” Id. at 1349. Likewise, in Finjan, Inc. v. Blue Coat System, Inc., the CAFC held that claims to a “behavior-based virus scan” provided greater computer security and were thus directed to a patent eligible improvement in computer functionality. 879 F.3d 1299, 1304–06 (Fed. Cir. 2018). In Data Engine Techs. LLC v. Google LLC, the CAFC held patent eligible claims reciting “a specific method for navigating through three-dimensional electronic spreadsheets” because the claimed invention “improv[ed] computers’ functionality as a tool able to instantly access all parts of complex three-dimensional electronic spreadsheets.” 906 F.3d 999, 1007–08 (Fed. Cir. 2018); see also Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1359–63 (Fed. Cir. 2018) (holding patent eligible claims reciting an improved user interface for electronic devices that improved the efficiency of the electronic device, particularly those with small screens”). And in SRI Int’l, Inc. v. Cisco Sys. Inc., the CAFC held patent eligible claims directed to an improved method of network security “using network monitors to detect suspicious network activity…generating reports of that suspicious activity, and integrating those reports using hierarchical monitors.” 930 F.3d 1295, 1303 (Fed. Cir. 2019). The CAFC concluded that the “focus of the claims was on the specific asserted improvement in computer capabilities,” namely “providing a network defense system that monitors network traffic in real-time to automatically detect large-scale attacks.” Id. at 1303–04.
The CAFC has consistently stated that it is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool (which the Applicant does in the current case). For example, in Affinity Labs. of Texas, LLC v. DIRECTV, LLC, the CAFC held that claims to a method of providing out-of-region access to regional broadcasts were directed to an abstract idea. 838 F.3d 1253, 1258 (Fed. Cir. 2016). The CAFC determined the claims were not a patent-eligible improvement in computer functionality because they simply used cellular telephones “as tools in the aid of a process focused on an abstract idea.” Id. at 1262; see also In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (holding ineligible claims reciting concrete physical components merely as “a generic environment in which to carry out the abstract idea of classifying and storing digital images in an organized manner”). Likewise, in Intellectual Ventures I LLC v. Capital One Bank (USA), the CAFC held that claims reciting a system for providing web pages tailored to an individual user were directed to an abstract idea. 792 F.3d 1363, 1369–70 (Fed. Cir. 2015). The CAFC held that “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” was insufficient to render the claims patent eligible as an improvement to computer functionality. Id. at 1367, 1370; see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715–16 (Fed. Cir. 2014) (holding that displaying an advertisement in exchange for access to copyrighted material is an abstract idea). And in SAP Am., Inc. v. InvestPic, LLC, the CAFC held patent ineligible claims directed to “selecting certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis.” 898 F.3d 1161, 1167–68 (Fed. Cir. 2018). The CAFC determined the claims were focused not on a physical-realm improvement to computers as tools but rather an improvement in wholly abstract ideas. Id. at 1168. The CAFC has also held that improving a user’s experience while using a computer application is not, without more, sufficient to render the claims directed to an improvement in computer functionality. For example, in Trading Techs. I, the CAFC held patent ineligible claims directed to a computer-based method for facilitating the placement of a trader’s order. Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1092–93 (Fed. Cir. 2019) (Trading Techs. I). Although the claimed display purportedly “assist[ed] traders in processing information more quickly,” the CAFC held that this purported improvement in user experience did not “improve the functioning of the computer, make it operate more efficiently, or solve any technological problem.” Id.; see also Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1381, 1384–85 (Fed. Cir. 2019) (Trading Techs. II) (holding that claims “focused on providing information to traders in a way that helps them process information more quickly” did not constitute a patent-eligible improvement to computer functionality). In sum, “software can make non-abstract improvements to computer technology just as hardware improvements can.” Enfish, 822 F.3d at 1335. But to be directed to a patent-eligible improvement to computer functionality, the claims must be directed to an improvement to the functionality of the computer or network platform itself. See, e.g., id. 1336–39; DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014). Thus, this inquiry “often turns on whether the claims focus on ‘the specific asserted improvement in computer capabilities…or, in-stead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool.’” Finjan, 879 F.3d at 1303 (quoting Enfish, 822 F.3d at 1335–36). Against this background, Applicant’s claims are not directed to a practical application and are not patent eligible as they are only directed to the abstract idea of predicting/forecasting using abstract user information (behavior, location/position, no location, visits) on where the user will visit (provides a technique for constructing a relationship between information regarding online behavior of a user and information regarding offline behavior of the user) which covers methods of organizing human activity (managing personal behavior or relationships and commercial interactions (behavior and relationship in various commercial activities)). (see discussion above and the rejection below).
Accordingly, the claims do not integrate the judicial exception into a practical application. See Memorandum, Section 111(A)(2) (Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether the Judicial Exception Is Integrated Into a Practical Application).
Furthermore, under step 2B, the recitations of the core inventive steps amount to little more than reciting that the computer system applies the abstract idea (see rejection below). These activities as claimed by the Applicant are all well-known and routine tasks in the field of art – as can been seen in the specification of Applicant's application and/or the specification of the below cited art and/or also as noted in the court cases in §2106.05 in the MPEP. Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d)). The elements in combination (or alone) (for example, apparatus, memory, program code, processor, train code, (generically recited ML technique without technical details – also with generically stated convolution layers, encoder network, autoencoder, neural networks, layers, etc.,), internet/web elements (online, offline), etc., (in Independent claim 1 and its dependent claims 5, 10-11); computer processor, train/training, (generically recited ML technique without technical details – also with generically stated convolution layers, encoder network, autoencoder, neural networks, layers, etc.,), etc., (in independent claim 6 and its dependent claims 12-13); and non-transitory computer program product, processor, computing system, fuel dispenser, train/training, (generically recited ML technique without technical details – also with generically stated convolution layers, encoder network, autoencoder, neural networks, layers, etc.,), transmitting using generic/general-purpose communication devices/components, etc., (independent claim 8)) do not provide any material drawn to something significantly more than the claimed method of organizing these known activities. The claims require no more than a generic computer to perform generic computer functions. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Simply requiring the selection and manipulation of information—to provide a “humanly comprehensible” amount of information useful for users, by itself does not transform the otherwise-abstract processes of information collection and analysis. See Electric Power Group v Alstom S.A. (Fed Cir, 2015-1778, 8/1/2016). The claims recite using known and/or generic computing devices and software. For the role of a computer in a computer implemented invention to be deemed meaningful in the context of this analysis, it must involve more than performance of "well-understood, routine, [and] conventional activities previously known to the industry." Alice, at 2359 (quoting Mayo, 132 S. Ct. at 1294 (internal quotation marks and brackets omitted)). For the role of a computer in a computer implemented invention to be deemed meaningful in the context of this analysis, it must involve more than performance of "well-understood, routine, [and] conventional activities previously known to the industry." Alice Corp. v. CLS Bank Int'l, 110 USPQ2d 1976 (U.S. 2014), at 2359 (quoting Mayo, 132 S. Ct. at 1294 (internal quotation marks and brackets omitted)). These activities as claimed by the Applicant are all well-known and routine tasks in the field of art – as can been seen in the specification of Applicant’s application (for example, see Applicant’s specification at, for example, Figs. 1 and 8; and ¶¶ 0049-0054 [where Applicant recites general-purpose/generic computers/processors/etc., and generic/general-purpose computing components/devices/etc., in Applicant’s specification]) and/or the specification of the below cited art (used in the rejection below and on the PTO-892) and/or also as noted in the court cases in §2106.05 in the MPEP. Further, "the mere recitation of a generic computer cannot transform a patent ineligible abstract idea into a patent-eligible invention." Alice at 2358. None of the hardware offers a meaningful limitation beyond generally linking the system to a particular technological environment, that is, implementation via computers. Adding generic computer components to perform generic functions that are well‐understood, routine and conventional, such as gathering data, performing calculations, and outputting a result would not transform the claims into eligible subject matter. Abstract ideas are excluded from patent eligibility based on a concern that monopolization of the basic tools of scientific and technological work might impede innovation more than it would promote it. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims require no more than a generic computer to perform generic computer functions. The additional elements (see list/listing above) or combination of elements in the claims other than the abstract idea per se amount(s) to no more than: (i) mere instructions to implement the idea on a computer, and/or (ii) recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. Applicant is directed to the following citations and references: Digitech Image., LLC v. Electronics for Imaging, Inc. (758 F.3d 1344 (2014) discussing U.S. Patent No. 6,128,415); and (2) Federal register/Vol. 79, No 241 issued on December 16, 2014, page 74629, column 2, Gottschalk v. Benson. Viewed as a whole, the independent claims (1, 6, 8) and dependent claims (5, 10-13) do not purport to improve the functioning of the computer itself, or to improve any other technology or technical field. Use of an unspecified, generic computer does not transform an abstract idea into a patent-eligible invention. Thus, the independent claims (1, 6, 8) and dependent claims (5, 10-13) do not amount to significantly more than the abstract idea itself. See Alice Corp. v. CLS Bank Int'l, 110 USPQ2d 1976 (U.S. 2014).
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, 5-6, 8, 10-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Note: The above discussion regarding §101 in the “Response to Arguments” section is also fully incorporated in this rejection.
Regarding Step 1 (MPEP 2106.03) of the subject matter eligibility test per MPEP 2106.03, claims 1, 5, and 10-11 are directed to an apparatus (i.e. machine), claims 6 and 12-13 are directed to a method (i.e., process), and claim 8 is directed to non-transitory computer readable medium (i.e. product or article of manufacture). Accordingly, all claims are directed to one of the four statutory categories of invention.
(Under Step 2A, Prong 1 (MPEP 2106.04)) The independent claims (1, 6, 8) and dependent claims (5, 10-13) recite receiving/collecting/obtaining information/data (where the information itself is abstract in nature – e.g. user information, position/location, behavior, place/location, including information that shows lack of (missing/unavailable) information (no position data, etc.,), usage data, etc.,), data analysis and manipulation to determine more abstract information/data (e.g. comparing information, making predictions, estimations), and providing this determined data for further analysis and decision-making based on user information and predictions (from the relationship constructed between information regarding online behavior of a user and information regarding offline behavior of the user – in broad purposes/industries e.g. internet shopping, an online supermarket, or a service relating to communication, finance, real estate, sports, or travel (see specification para. 0020)).
The limitations of the independent claims (1, 6, 8) and dependent claims (5, 10-13), under the broadest reasonable interpretation, covers methods of organizing human activity (managing personal behavior or relationships and commercial interactions (behavior and relationship in various commercial activities)). If a claims limitation, under its broadest reasonable interpretation, covers the performance of the limitation as fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including scheduling, social activities, teaching, and following rules or instructions), then it falls within the “organizing human activities” grouping of abstract ideas. (MPEP 2106.04; and also see 2019 Revised Patent Subject Matter Eligibility Guidance – Federal Register, Vol. 84, Vol. 4, January 07, 2019, pages 50-57).
Accordingly, since Applicant's claims fall under organizing human activities grouping, the claims recite an abstract idea.
(Under Step 2A, prong 2 (MPEP 2106.04(d))) This judicial exception is not integrated into a practical application because but for the recitation of old/well-known generic/general-purpose computing/technology components/elements/terms (see listing below), in the context of the independent claims (1, 6, 8) and dependent claims (5, 10-13), the independent claims (1, 6, 8) and dependent claims (5, 10-13) encompass the above stated abstract idea (organizing human activity (managing personal behavior or relationships and commercial interactions (behavior and relationship in various commercial activities))). The old/well-known generic/general-purpose computing/technology components/elements/terms/limitations used in the claims (and in the specification) by the Applicant are in the following list/listing (additional elements):
apparatus, memory, program code, processor, train code, (generically recited ML technique without technical details – also with generically stated convolution layers, encoder network, autoencoder, neural networks, layers, etc.,), internet/web elements (online, offline), etc., (in Independent claim 1 and its dependent claims 5, 10-11);
computer processor, train/training, (generically recited ML technique without technical details – also with generically stated convolution layers, encoder network, autoencoder, neural networks, layers, etc.,), etc., (in independent claim 6 and its dependent claims 12-13); and
non-transitory computer program product, processor, computing system, fuel dispenser, train/training, (generically recited ML technique without technical details – also with generically stated convolution layers, encoder network, autoencoder, neural networks, layers, etc.,), transmitting using generic/general-purpose communication devices/components, etc., (independent claim 8).
(hereinafter the above list/listing will be referred to as “generic/general-purpose computing/technology components/elements/terms/limitations (see list/listing above)” or “additional elements (see list/listing above)” in the rest of the §101 rejection – i.e. whenever “generic/general-purpose computing/technology components/elements/terms/limitations (see list/listing above)” or “additional elements (see list/listing above)” is used/stated in the rest of the §101 rejection it is referring to and incorporates the above list/listing).
As shown above, the independent claims (1, 6, 8) and dependent claims (5, 10-13) and specification recite generic/general-purpose computing/technology components/elements/terms/limitations (see list/listing above) which are recited at a high level of generality performing generic/general purpose computer/computing functions. (MPEP 2106.04). The generic/general-purpose computing/technology components/elements/terms/limitations are no more than mere instructions to apply the judicial exception (the above abstract idea) in an apply-it fashion using generic/general-purpose computing/technology components/elements/terms/limitations (see list/listing above). The CAFC has stated that it is not enough, however, to merely improve abstract processes by invoking a computer merely as a tool. Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020). The focus of the claims is simply to use computers and a familiar network as a tool to perform abstract processes (discussed above) involving simple information exchange. Carrying out abstract processes involving information exchange is an abstract idea. See, e.g., BSG, 899 F.3d at 1286; SAP America, 898 F.3d at 1167-68; Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1261-62 (Fed. Cir. 2016). And use of standard computers and networks to carry out those functions—more speedily, more efficiently, more reliably—does not make the claims any less directed to that abstract idea. See Alice Corp., 573 U.S. at 222-25; Customedia, 951 F.3d at 1364; Trading Techs. Int'l, Inc. v. IBG LLC, 921 F.3d 1084, 1092-93 (Fed. Cir. 2019); SAP America, 898 F.3d at 1167; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1314 (Fed. Cir. 2016); Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353, 1355 (Fed. Cir. 2016); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 1370 (Fed. Cir. 2015); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014). Accordingly, the additional elements (see list/listing above) do not integrate the abstract idea in to a practical application because it does not impose any meaningful limits on practicing the abstract idea – i.e. they are just post-solution/extra-solution activities.
(Under Step 2B (MPEP 2106.05)) The independent claims (1, 6, 8) and dependent claims (5, 10-13) do not include additional elements (see list/listing above) that are sufficient to amount to significantly more than the judicial exception because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The independent claims (1, 6, 8) and dependent claims (5, 10-13) recite using known generic/general-purpose computing/technology components/elements/terms/limitations (see list/listing above). For the role of a computer in a computer implemented invention to be deemed meaningful in the context of this analysis, it must involve more than performance of "well-understood, routine, [and] conventional activities previously known to the industry." Alice Corp. v. CLS Bank Int'l, 110 USPQ2d 1976 (U.S. 2014), at 2359 (quoting Mayo, 132 S. Ct. at 1294 (internal quotation marks and brackets omitted)). These activities as claimed by the Applicant are all well-known and routine tasks in the field of art – as can been seen in the specification of Applicant’s application (for example, see Applicant’s specification at, for example, Figs. 1 and 8; and ¶¶ 0049-0054 [where Applicant recites general-purpose/generic computers/processors/etc., and generic/general-purpose computing components/devices/etc., in Applicant’s specification]) and/or the specification of the below cited art (used in the rejection below and on the PTO-892) and/or also as noted in the court cases in §2106.05 in the MPEP. Further, "the mere recitation of a generic computer cannot transform a patent ineligible abstract idea into a patent-eligible invention." Alice at 2358. None of the hardware offers a meaningful limitation beyond generally linking the system to a particular technological environment, that is, implementation via computers. Adding generic computer components to perform generic functions that are well‐understood, routine and conventional, such as gathering data, performing calculations, and outputting a result would not transform the claims into eligible subject matter. Abstract ideas are excluded from patent eligibility based on a concern that monopolization of the basic tools of scientific and technological work might impede innovation more than it would promote it. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims require no more than a generic computer to perform generic computer functions. The additional elements (see list/listing above) or combination of elements in the claims other than the abstract idea per se amount(s) to no more than: (i) mere instructions to implement the idea on a computer, and/or (ii) recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. Applicant is directed to the following citations and references: Digitech Image., LLC v. Electronics for Imaging, Inc. (758 F.3d 1344 (2014) discussing U.S. Patent No. 6,128,415); and (2) Federal register/Vol. 79, No 241 issued on December 16, 2014, page 74629, column 2, Gottschalk v. Benson. Viewed as a whole, the independent claims (1, 6, 8) and dependent claims (5, 10-13) do not purport to improve the functioning of the computer itself, or to improve any other technology or technical field. Use of an unspecified, generic computer does not transform an abstract idea into a patent-eligible invention. Thus, the independent claims (1, 6, 8) and dependent claims (5, 10-13) do not amount to significantly more than the abstract idea itself. See Alice Corp. v. CLS Bank Int'l, 110 USPQ2d 1976 (U.S. 2014).
The dependent claims (5, 10-13) further define the independent claims and merely narrow the described abstract idea, but not adding significantly more than the abstract idea. The above rejection fully includes and details the discussion of dependent claims and the above rejection applies to all the dependent claim limitations. In summary, the dependent claims (5, 10-13) further state using obtained data/information (where the information itself is abstract in nature – as shown above), data analysis/manipulation to determine more abstract information/data (e.g. comparing information, making predictions, estimations), and providing this determined data for further analysis and decision-making based on user information and predictions (from the relationship constructed between information regarding online behavior of a user and information regarding offline behavior of the user – in broad purposes/industries e.g. internet shopping, an online supermarket, or a service relating to communication, finance, real estate, sports, or travel (see specification para. 0020). These dependent claims covers methods of organizing human activity (managing personal behavior or relationships and commercial interactions (behavior and relationship in various commercial activities)). This judicial exception is not integrated into a practical application because the claims and specification recite generic/general-purpose computing/technology components/elements/terms/limitations (see list/listing above) performing generic computer/computing/technology functions. (MPEP 2106.04). The additional elements (see list/listing above) do not integrate the abstract idea in to a practical application because they does not impose any meaningful limits on practicing the abstract idea – i.e. they are just post-solution/extra-solution activities. The dependent claims merely use the same general technological environment and instructions to implement the abstract idea without adding any new additional elements. Also, the dependent claims also do not include additional elements that are sufficient to amount to significantly more than the juridical exception because the additional elements (see list/listing above) either individually or in combination are merely an extension of the abstract idea itself.
Prior art discussion – not rejected under prior art
The prior art of record most closely resembling Applicant’s claimed invention is Vanpariya et al., (US 2021/0153014) in view of Ramer et al., (US 2011/0258049). However, neither Vanpariya nor Ramer individually nor in combination specifically disclose the independent claims’ (1, 6, and 8) concept of training a first learning model (as shown in the claims)…training a second learning model (as described the claims)…training third learning model so as to receive, as an input, the offline behavior feature vector of the user having the position information, and output information representing offline behavior of the user having the position information, wherein the information representing offline behavior of the user includes information regarding a place predicted to be visited by the user…estimating an online behavior feature vector of a user having no position information by inputting online information of the user having no position information to the first learning model; estimating an offline behavior feature vector of the user having no position information by inputting the online behavior feature vector of the user having no position information to the second learning model; and estimating information regarding offline behavior of the user having no position information by inputting the offline behavior feature vector of the user having no position information to the third learning model, wherein the offline behavior of the user having no position information is estimated without acquiring position information from a device of the user having no position information. Additionally note that although a specific portion is stated above that overcomes the prior art, it is the entire claimed concept described by the limitations collectively coming together that overcomes the prior art (no individual limitation is solely the reason for not rejecting under prior art as the core concept is shown in the claim as a whole — limitations coming together collectively to form the concept). The prior art of record does not teach or suggest Applicant’s current independent claims as a whole in its entirety.
As per the dependent claims, these claims depend on the not rejected independent claims above and incorporate the limitations thereof, and are therefore not rejected under prior art for at least the same rationale as applied to the independent claims above, and incorporated herein.
Note that all the claims remain rejected under §101 above and therefore are not allowable as they are not subject matter eligible.
Conclusion
The prior art made of record on the PTO-892 and not relied upon is considered pertinent to applicant's disclosure. For example, some of the pertinent art is as follows:
Schulz et al., (US 2015/0221016): Illustrates facilitating efficient shopping for a user. A real or virtual shopping cart can be pre-filled for a user before the user arrives at a merchant location. The shopping cart can be pre-filled with items that are based on the user's previous behavior and/or purchases. The items can include repeat purchase items that the user has repeatedly purchased at the merchant and is likely to purchase again. The system may generate smart shopping lists that can be used to pre-fill the shopping cart. The smart shopping list may include user selected items, repeat purchase items, predicted items for the user, and/or merchant recommended items. The items can be provided in corresponding sections of the shopping cart. The system can also offer to deliver the items to the user and to pick up and deliver additional items along a delivery route for the user.
Acharyya et al., (US 2015/0088598): Discusses cross-retail marketing based on analysis of multichannel clickstream data that comprises a client application capturing, aggregating, and analyzing multiple clickstreams of a user. These clickstreams may be captured from multiple unrelated or competing sales or distribution channels and from multiple electronic platforms. The analysis may use methods of artificial intelligence, text analytics, semantic analytics, or other analytical methods to infer characteristics of the user, of the user's online commercial behavior and other commercial activities, and of products or services that the user may be interested in purchasing. The output of this analysis is forwarded to other channels or platforms visited by the user in order to allow those other channels or platforms to perform targeted commercial marketing functions related to the user's prior activities. In preferred embodiments, this method may be require an active consent or other authorization from the user.
Liu (US 2018/0314998): Discloses predicting future demand across geos and time periods and to position providers based on predicted demand. In some embodiments, a demand prediction module generates and trains an optimization model to predict user demand over upcoming time periods using stored data including historical trip data and data regarding service options presented to and selected by users. The trained optimization model is used to position providers across and within geos to optimize the number of trip requests that the network system is able to fulfill and improve the performance of the network system by reducing inefficiencies and providing additional benefits such as a reduction in pollution and wasted energy
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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/Gurkanwaljit Singh/
Primary Examiner, Art Unit 3625
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