DETAILED ACTION
Status of Claims
This action is in reply to the response received on 08 July 2026.
No claims are amended.
Claim 9 has been previously canceled.
Claims 1-8 and 10-20 are pending and have been examined.
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 .
Allowable Subject Matter
As stated in the Office Action mailed on 14 April 2026, the claims recite allowable subject matter and the claims would be allowable if they were re-written or amended to overcome the 101 rejection indicated in this Office Action below.
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 1-8 and 10-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea without significantly more).
Under step 1, it is determined whether the claims are directed to a statutory category of invention (see MPEP 2106.03(II)). In the instant case, claims 1-8 & 10 are directed to a method, claims 11-15 are directed to product of manufacture (non-transitory computer-readable storage medium), and claims 16-20 are directed to a system.
While the claims fall within statutory categories, under revised Step 2A, Prong 1 of the eligibility analysis (MPEP 2106.04), the claimed invention recites an abstract idea of identifying a set of news articles for a user. Specifically, representative claim 1 recites the abstract idea of:
identifying, a plurality of news articles;
parsing, the plurality of news articles to determine information related to each news article in the plurality of news articles;
indexing, based on the determined information, the plurality of news articles, each indexed news article having corresponding tags indicating a location, context, and a location aboutness score, the location aboutness score representing a relevancy of the location to content of a respective news article, the location aboutness score being determined based on a position of a corresponding location named entity within the respective news article;
identifying, based on a detected user action, a user, the user being associated with a user location and having a set of predetermined interests, the user location corresponding to a resource,
querying, an indexed data of the plurality of news articles;
identifying, a set of news articles based on the query, the set of news articles comprising content corresponding to the user location, the context of the set of news articles corresponding to the predetermined interests of the user; and
communicating, the set of news articles to a user, while the user is at the user location.
Under revised Step 2A, Prong 1 of the eligibility analysis, it is necessary to evaluate whether the claim recites a judicial exception by referring to subject matter groupings articulated in 2106.04(a) of the MPEP. Even in consideration of the analysis, the claims recite an abstract idea. Representative claim 1 recites the abstract idea of identifying a set of news articles for a user, as noted above. This concept is considered to be a method of organizing human activity. Certain methods of organizing human activity include “fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).” MPEP 2106.04(a)(2)(II). In this case, the abstract idea recited in representative claim 1 is a certain method of organizing human activity because relates to marketing or sales activities or behaviors since the claims specifically recite the activities of identifying, a plurality of news articles, parsing the plurality of news articles to determine information related to each news article in the plurality of news articles, indexing, the plurality of news articles, each indexed news article having corresponding tags indicating a location, context, and a location aboutness score, the location aboutness score representing a relevancy of the location to content of a respective news article, the location aboutness score being determined based on a position of a corresponding location named entity within the respective news article, identifying based on a detected user action, a user location that has predetermined interests, querying news articles that have corresponding tags indicating a location and context of the article, identifying a set of articles comprising content corresponding to the user’s location, the context of the set of articles that also correspond to the predetermined interests of the user, and communicating to the user the set of news articles while the user is at the user location, thereby making these activities sales behaviors and marketing activities.
Thus, representative claim 1 recites an abstract idea.
Under Step 2A, Prong 2 of the eligibility analysis, if it is determined that the claims recite a judicial exception, it is then necessary to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of that exception. MPEP 2106.04(d). The courts have identified limitations that did not integrate a judicial exception into a practical application include limitations merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP 2106.05(f). MPEP 2106.04(d). In this case, representative claim 1 includes additional elements: a device, over a network, the device, the device, the device, over the network, the location corresponding to a network resource on a network, the device, a device of the user, and the location on the network.
Although reciting such additional elements, the additional elements do not integrate the abstract idea into a practical application because they merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a computer as a tool to perform the abstract idea. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. Similar to the limitations of Alice, representative claim 1 merely recites a commonplace business method (i.e., identifying a set of news articles for a user) being applied on a general-purpose computer using general purpose computer technology. MPEP 2106.05(f). Thus, the claimed additional elements are merely generic elements and the implementation of the elements merely amounts to no more than an instruction to apply the abstract idea using a generic computer. Since the additional elements merely include instructions to implement the abstract idea on a generic computer or merely use a generic computer as a tool to perform an abstract idea, the abstract idea has not been integrated into a practical application.
Additionally, the Examiner notes that the claim recites the step of communicating, by the device, the set of news articles to a device of the while the user is at the user location on the network which is considered to be insignificant extra-solution activity. Extra-solution activity can be understood as activities that are incidental to the primary process or product that are merely a nominal or tangential addition the claim (see MPEP 2106.05(g)). In this case, the activity of communicating (e.g., transmitting data) is merely nominal or tangential additions to the primary process of item ordering.
Under Step 2B of the eligibility analysis, if it is determined that the claims recite a judicial exception that is not integrated into a practical application of that exception, it is then necessary to evaluate the additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). MPEP 2106.05. In this case, as noted above, the additional elements of a device, over a network, the device, the device, the device, over the network, the location corresponding to a network resource on a network, the device, a device of the user, and the location on the network, recited in independent claim 1 are recited and described in a generic manner merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea.
Even when considered as an ordered combination, the additional elements of representative claim 1 do not add anything that is not already present when they considered individually. In Alice, the court considered the additional elements “as an ordered combination,” and determined that “the computer components…‘ad[d] nothing…that is not already present when the steps are considered separately’… [and] [v]iewed as a whole…[the] claims simply recite intermediated settlement as performed by a generic computer.” Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217, (2014) (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Similarly, when viewed as a whole, representative claim 1 simply conveys the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B of the Alice/Mayo test, there are no meaningful limitations in representative claim 1 that transforms the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
Further, the step communicating, by the device, the set of news articles to a device of the while the user is at the user location on the network does not provide significantly more than the judicial exception because they are merely well-understood, routine, and conventional activities previously known to the industry of data management and processing. The courts have recognized the computer functions as well-understood, routine, and conventional functions when they are claimed in a generic manner or as insignificantly extra-solution activity. Receiving or transmitting data over a network (e.g., using the Internet to gather data) are recognized computer functions that are considered insignificant extra-solution activity (see MPEP 2106.05(d)(II)). This is similar to the steps and additional elements that are recited in the claims. For example, the step of communicating by the device, the set of news articles to a user device would be the same as the activity of transmitting data over a network in this case. Further, the step of communicating would be the same as the function of transmitting and receiving the data over a network, such as the internet. For examples of court cases, see Versata Dev. Group, Inc. v. SAP Am, Inc., 793 F.3d 1306, 1344 (Fed. Cir. 2015) and Intellectual Ventures I v. Symantec Corp., 838 F. 3d 1307, 1315 (Fed. Cir. 2016).
As such, representative claim 1 is ineligible.
Independent claims 11 and 16 are similar in nature to representative claim 1 and Step 2A, Prong 1 analysis is the same as above for representative claim 1. It is noted that in independent claim 11 includes the additional elements of a non-transitory computer-readable storage medium tangibly encoded with computer-executable instructions, that when executed by the device performs the method, and independent claim 16 includes the additional element of a processor configured to. The Applicant’s specification does not provide any discussion or description of the claimed additional elements as being anything other than generic elements. Thus, the claimed additional elements of claims 11 and 16 are merely generic elements and the implementation of the elements merely amounts to no more than an instruction to apply the abstract idea using a generic computer. As such, the additional elements of claims 11 and 16 do not integrate the judicial exception into a practical application of the abstract idea. Additionally, the additional elements of claim 11 and 16, considered individually and in combination, do not provide an inventive concept because they merely amount to no more than an instruction to apply the abstract idea using a generic computer.
As such, claims 11 and 16 are also ineligible.
Dependent claims 2-10, 12-15, and 17-20, depending from claims 1, 11, and 16, respectively, do not aid in the eligibility of the independent claim 1. The claims of 2-10, 12-15, and 17-20 merely act to provide further limitations of the abstract idea and are ineligible subject matter.
It is noted that amended dependent claims do not include any further additional elements to consider in the analysis. Since the dependent claims do not recite any further additional elements, the dependent claims do not integrate into a practical application and do not provide an inventive concept (see MPEP 2106.05(f)). Additionally, since there are no further additional elements to considered individually and in combination, the dependent claims do not provide an inventive concept.
As such, dependent claims 2-8, 10, 12-15, and 17-20 are ineligible.
Response to Arguments
With respect to the rejections made under 35 USC § 101, the Applicant’s arguments filed on 08 July 2026, have been fully considered but are not considered persuasive.
In response to the Applicant’s arguments found on pages 7-8 of the remarks stating “The Claim Does Not Recite a Certain Method of Organizing Human Activity,” and “Applicant respectfully submits that the claims recite no such exception,” and “The claims recite none of the enumerated categories,” and further “because the recited operations are performed by a device rather than organizing human activity, the claims do not recite a judicial exception under Prong One, and the rejection cannot be sustained on that basis,” the Examiner respectfully disagrees.
The claims are directed to an abstract idea under Step 2A, Prong One of the eligibility analysis. As stated in the office action above, the claims do not fall into all of the enumerated groupings, however, the abstract idea in this case does fall into the enumerated sub-grouping of a certain method of organizing human activity. The abstract idea of identifying a set of news articles for a user and the activities recited in the claims fall into the grouping of a certain method of organizing human activity, as the activities recited are related to sales activities or behaviors, stated in the Office Action above. The steps recited are still directed to the abstract idea, as the claims specifically describe identifying, a plurality of news articles, parsing the plurality of news articles to determine information related to each news article in the plurality of news articles, indexing, the plurality of news articles, each indexed news article having corresponding tags indicating a location, context, and a location aboutness score, the location aboutness score representing a relevancy of the location to content of a respective news article, the location aboutness score being determined based on a position of a corresponding location named entity within the respective news article, identifying based on a detected user action, a user location that has predetermined interests, querying news articles that have corresponding tags indicating a location and context of the article, identifying a set of articles comprising content corresponding to the user’s location, the context of the set of articles that also correspond to the predetermined interests of the user, and communicating to the user the set of news articles while the user is at the user location. Further, even though the claims recite the steps performed on the device (analyzed as additional element under Step 2A, Prong Two of the analysis), the device is considered to be generic in nature. As articulated in MPEP 2106.05(b), the claims must not merely add “a generic computer, generic computer components, or a programmed computer to perform a generic computer functions” and claiming the device to carry out the operations of the claims “does not automatically overcome an eligibility rejection”. Therefore, the Examiner maintains that the claims are directed to the abstract idea which falls into the grouping of a certain method of organizing human activity.
In response to the Applicant’s arguments found on pages 8-9 of the remarks stating “Any Recited Exception Is Integrated Into a Practical Application,” and “Even assuming arguendo that the claims recite a judicial exception, the claims integrate any such exception into practical application and is therefore not ‘directed to’ the exception,” and “The claims reflect a specific improvement to how articles are indexed and retrieved – the touchstone of eligibility under Enfish,” and further “Particular rules producing a concrete result. As in McRO,” and “Solution rooted in the technology to a problem arising in that technology,” and “This location-aware, in-situ delivery over the network is a solution,” and “Because the claim recite a specific improvement to information indexing and retrieval and a network-rooted delivery solution, rather than a generic linkage to a technical environment, any recited exception is integrated into a practical application and the claim is eligible at Step 2A,” the Examiner respectfully disagrees. Under Step 2A, Prong Two of the eligibility analysis, the claims do not integrate the abstract idea into a practical application. Although the claims recite additional elements that are beyond the abstract idea, the additional elements are still recited in a generic manner and are still being used to apply the abstract idea with generically recited computing components and a generically recited computer (i.e., device, the network, etc.). When considering the additional elements individually and in combination, they are described and recited at a high-level of generality and are not considered to be sufficient to integrate the abstract idea into a practical application.
Further, the claims do not reflect an improvement to the technology itself, nor do they provide at technical solution to a technical problem, and therefore would not integrate the abstract idea into a practical application. The claims do not provide improvements or solutions to the technology that would be similar to those claims found eligible in the cases of Enfish, McRO, or DDR. The MPEP (2106.05(a)) provides further guidance on how to evaluate whether claims recite an improvement in the functioning of a computer or an improvement to other technology or technical field. For example, as indicated in 2106.05(d)(1) of the MPEP “the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement,” and that “[t]he specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art.” Looking to the specification is a standard that the courts have employed when analyzing claims as it relates to improvements in technology. For example, in Enfish, the specification provided teaching that the claimed invention achieves benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements. Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). With respect to McRO, the claimed improvement, as confirmed by the originally filed specification, was “…allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters…’” and it was “…the incorporation of the claimed rules, not the use of the computer, that “improved [the] existing technological process” by allowing the automation of further tasks”. McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, (Fed. Cir. 2016). And further, in regard to the decision in DDR Holdings in which the court found that the “claimed solution [was] necessarily rooted in computer technology to overcome a problem specifically arising in the realm of computer networks.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). The court noted that the problem addressed by the claimed invention was a problem specific to the Internet and/or computer networks –that is the problem of retaining website visitors that, if adhering to the routine and convention functioning of Internet link protocol, would instantly be transported away from a host's website after “clicking” on an advertisement and activating a hyperlink. Id. The court noted that the DDR Holdings claims did not broadly and generically claim "use of the Internet" to perform an abstract business practice and, unlike Ultramercial, the DDR Holdings claims “specif[ied] how interactions with the Internet are manipulated to yield a desired result—a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” Id. Furthermore, the court noted that the claims in DDR Holdings did not “recite a commonplace business method aimed at processing business information, applying a known business process to the particular technological environment of the Internet, or creating or altering contractual relations using generic computer functions and conventional network operations.” Id.
In this case, Applicant’s specification provides no explanation of an improvement to the functioning of a computer or other technology, nor are the claims “necessarily rooted in computer technology to overcome a problem specifically arising in the real of computer networks”. Rather, the claims focus “on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool”. Id citing Enfish at 1327, 1336. This is reflected in paragraph [0002] of Applicant’s specification, which describes Applicant’s claimed invention as directed toward solving problems related to providing content recommendations to users based on their geographical location and interests. Although the claims include computer technology such as a device, over a network, the device, the device, the device, over the network, the location corresponding to a network resource on a network, the device, a device of the user, and the location on the network, such elements are merely peripherally incorporated in order to implement the abstract idea. This is unlike the improvements recognized by the courts in cases such as Enfish, Core Wireless, and McRO. Unlike precedential cases, neither the specification nor the claims of the instant invention identify such a specific improvement to computer capabilities. The instant claims are not directed to improving the existing technological process but are directed to improving the commercial task of identifying a set of news articles for a user. Unlike the claims in DDR Holdings, the present claims recite functions that could be performed outside of the Internet or computing networks. The claimed process, while arguably resulting in improved recommendations of news articles for users, is not providing any improvement to another technology or technical field as the claimed process is not, for example, improving the processor and computer components that operate the system. Rather, the claimed process is utilizing different data while still employing the same processor and computer components used in conventional systems to improve providing and identifying a set of news articles for a user, e.g. commercial process. As such, the claims do not recite specific technological improvements, such as improvements to computerized location-aware content indexing and retrieval, do provide a network-rooted delivery solution, and do not integrate the abstract idea into a practical application.
In response to the Applicant’s arguments found on pages 9-10 of the remarks stating “The Claims Recite Significantly More Than Any Exception,” and “the claims recite an inventive concept sufficient to transform any exception into a patent-eligible application,” and regarding similarity to BASCOM stating “Even if individual elements were assumed known, their particular arrangement supplies the inventive concept,” the Examiner respectfully disagrees. Under Step 2B of the eligibility analysis, the claims do not amount to significantly more than the abstract idea itself, do not provide an inventive concept, and are not similar to those in BASCOM. In BASCOM the court found that, although individually the additional elements were a generic computer, network, and Internet components that did not amount to significantly more, the non-conventional and non-generic arrangement of the various computer components for filtering internet content did amount to significantly more. BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). However, in making such a determination, the court noted that “the claims do not merely recite the abstract idea of filtering content along with the requirement to perform it on the Internet or to perform it on a set of generic computer components". Id. Furthermore, the court noted that the “patent describes how its particular arrangement of elements is a technical improvement over prior art ways of filtering such content”. Id.
In contrast, Applicant's claims do not describe how the particular arrangement of elements is a technical improvement, in fact, the claims only merely recite the abstract idea of identifying a set of news articles for a user, along with the requirement to perform it on a set of generic computer components (i.e., a device and the network). While these additional elements are included within the claims, they are claimed in a generic manner. Applicant’s disclosure does not articulate or suggest how these additional elements function, individually or in combination, in any manner other than using them in a generic manner, nor does the disclosure articulate how the elements are particularly arranged in order to provide a technical solution. As such, the comparison of Applicant's claims to BASCOM in inapposite, the claims do not amount to significantly more than the abstract idea, and therefore the Examiner maintains the 101 rejection.
Conclusion
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 filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ASHLEY D PRESTON/Primary Examiner, Art Unit 3688
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