DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/12/2026 has been entered.
Status of Claims
This is in reply to the claim amendments and remarks of the RCE filed 3/12/2026.
Claims 21-40 have been amended.
Claims 21-40 are currently 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 .
Priority
This application claims priority as a continuation of Application 17/094044 filed on 11/10/2020 which claims further priority as a continuation of Application 14/541321 filed 11/14/2014. Applicant's claim for the benefit of this prior-filed application is acknowledged.
Response to Amendments
The previously pending double patenting rejection is withdrawn in response to Applicant’s filing of a Terminal Disclaimer, which has been accepted.
Applicant’s amendments have been fully considered, but do not overcome the previously pending 35 USC 101 and double patenting rejections.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
The Examiner notes that the data is not actually being transformed from one state to another, but rather merely analyzed and then stored in a database for later use.
With regard to the limitations of claims 21-40, Applicant argues that the claims are patent eligible under 35 USC 101 because the pending claims do not recite an abstract idea. The Examiner respectfully disagrees. The Examiner has already set forth a prima facie case under 35 USC 101. The Examiner has clearly pointed out the limitations directed towards the abstract idea, what the additional elements are and why they do not integrate the abstract idea into a practical application, and why the additional elements and remaining limitations do not amount to significantly more than the abstract idea. The Examiner asserts that separating and filtering out data between users in an anonymous fashion for use in marketing/advertising is an abstract idea as shown below. Applicant is merely implementing the abstract idea on a general purpose computer, which does not improve the computer itself. Applicant also does not recite what the technical problem is or how the claims amount to a solution. Applicant’s arguments are not persuasive.
Applicant argues the claims improve the technology. The Examiner respectfully disagrees. Applicant merely copy and pastes the amendments and alleges there is an improvement. The Examiner asserts that the claims are not even transforming data from one state to another, but rather are analyzing the data using rules and storing the results (which narrows the abstract idea). The claims recite “the one or more rules comprising text rules that result in outputs based on using one or more string inputs”, which appears to be generic filtering of data, where all this is being done on a general purpose computer. The Examiner asserts that Paragraph 0023 of Applicant’s specification further defines how the claimed hardware is merely general purpose computer components, where implementing the abstract idea on a general purpose computer does not improve the functioning of the computer itself (See MPEP 2106.05). Applicant’s arguments are not persuasive.
The Examiner notes that the standardizing of data as claimed is sorting data in a specific manner based on the users needs for marketing/advertising purposes and is recited at such a high level of generality that even if it was an additional element it would merely add the words apply it with the judicial exception (See MPEP 2106.05). The computer itself is not being improved, but rather merely being used as a tool for implementing the abstract idea. The Examiner notes that use of string matching expressions and mapping of the data further narrows the abstract idea as shown in the rejection below. Applicant’s arguments are not persuasive.
Applicant argues the claims amount to significantly more. The Examiner respectfully disagrees. The Examiner has analyzed each claim limitations individually and as an ordered combination as shown in the rejection below. In addition, the Examiner has clearly cited Applicant’s specification and the MPEP as the required support under Berkheimer. Applicant makes arguments stating Examiner’s rejection is in error, but does not point out specifically what is in error. The Examiner refers to the rejection below and MPEP 2106 for more information. Applicant’s arguments are not persuasive.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter;
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself.
In the instant case (Step 1), claims 21-40 are directed toward a process, a product, and a system; which are statutory categories of invention.
Additionally (Step 2A Prong One), the independent claims are directed toward a system for determining segments of online users from a correlated dataset and providing de-identified user identifiers, the system including: a data storage device storing instructions for determining segments from a correlated dataset; and a processor configured to execute the instructions to perform a method including: receiving, by a processor over a network, a plurality of datasets and one or more segment rules from a first data manager, the plurality of datasets including user-related data of a plurality of users; transforming the user related data based on the one or more segment rules, the one or more segment rules comprising text rules that result in outputs based on using one or more string inputs; storing, by the processor, the transformed user related data in one or more databases correlating to a global user identifier; correlating the plurality of datasets in the one or more databases with global user identifiers associated with the user-related data; receiving a segmentation request from the first data manager for determining a plurality of users that qualify for a plurality of segments; removing unnecessary data from the plurality of datasets in the one or more datasets to form remaining data of the plurality of datasets based on the one or more segment rules provided by the first data manager; transforming the remaining data of the plurality of datasets using the one or more segment rules to standardize the remaining data of the plurality of datasets, the one or more segment rules comprising string matching expressions; determining qualified global user identifiers, from the global user identifiers, based on the one or more segment rules of the segmentation request and a score for each of the plurality of segments; converting, by a de-identification operation, the qualified global user identifiers to a de-identified set of user identifiers by salting and hashing the qualified global user identifiers, to prevent re-identification of any one of the qualified global user identifiers, and to prevent incorporating user related data of the qualified global user identifiers by a second data manager; and providing the de-identified set of user identifiers to the first data manager by mapping the de-identified set of user identifiers to a format of identities of the first data manager (Organizing Human Activity), which are considered to be abstract ideas (See MPEP 2106.05). The steps/functions disclosed above and in the independent claims are directed toward the abstract idea of Organizing Human Activity because the claimed limitations are correlating the datasets with global user identifiers to segment users based on rules so a score can be given to the segment for deciding what information to provide to users, which is organizing humans for commercial purposes.
Dependent claims 22-26, 29-34, and 36-40 further narrow the abstract idea identified in the independent claims, where any additional elements introduced are discussed below.
Step 2A Prong Two: In this application, even if not directed toward the abstract idea, the independent claims additionally recite “a computer implemented method; by a processor over a network; by the processor; in one or more databases; by salting and hashing; by a first data manager; by a second data manager (claim 21)”; “a system, the system including: a data storage device storing instructions; and a processor configured to execute the instructions to perform a method including: by a processor over a network; by the processor; in one or more databases; by a first data manager; by salting and hashing; by a second data manager (claim 28)”; “non-transitory computer-readable storage medium storing program instructions; by a processor over a network; by the processor; in one or more databases; by salting and hashing; by a first data manager; by a second data manager (claim 35)”, which are additional elements that do not integrate the judicial exception (e.g. abstract idea) into a practical application because the claimed structure merely adds the words to apply it with the judicial exception and mere instructions to implement an abstract idea on a computer (See MPEP 2106.05) and are recited at such a high level of generality. These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. Even when viewed in combination, the additional elements in the claims do no more than use the computer components as a tool. There is no change to the computer or other technology that is recited in the claim, and thus the claims do not improve computer functionality or other technology.
The Examiner further notes that “salting and hashing the qualified global user identifiers” is recited at such a high level of generality that it merely adds the words apply it with the judicial exception (See MPEP 2106.05).
In addition, dependent claims 22-26, 29-34, and 36-40 further narrow the abstract idea and present no additional elements that integrate the abstract idea into a practical application (See MPEP 2106.05). The dependent claims narrow the abstract idea (e.g. the analysis) of the independent claims and do not recite any new additional elements.
Step 2B: When analyzing the additional element(s) and/or combination of elements in the claim(s) other than the abstract idea per se the claim limitations amount(s) to no more than: a general link of the use of an abstract idea to a particular technological environment and merely amounts to the application or instructions to apply the abstract idea on a computer (See MPEP 2106.05). Further, method; System; and Product Independent claims 21, 28, and 35 recite “a computer implemented method; by a processor over a network; by the processor; in one or more databases; by salting and hashing; by a first data manager; by a second data manager (claim 21)”; “a system, the system including: a data storage device storing instructions; and a processor configured to execute the instructions to perform a method including: by a processor over a network; by the processor; in one or more databases; by a first data manager; by salting and hashing; by a second data manager (claim 28)”; “non-transitory computer-readable storage medium storing program instructions; by a processor over a network; by the processor; in one or more databases; by salting and hashing; by a first data manager; by a second data manager (claim 35)”; however, these elements merely facilitate the claimed functions at a high level of generality and they perform conventional functions and are considered to be general purpose computer components which is supported by Applicant’s specification in Paragraphs 0061-0062 and Figures 1-2 and 7. The Applicant’s claimed additional elements are mere instructions to implement the abstract idea on a general purpose computer and generally link of the use of an abstract idea to a particular technological environment. When viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
In addition, claims 22-26, 29-34, and 36-40 further narrow the abstract idea identified in the independent claims. The Examiner notes that the dependent claims merely further define the data being analyzed and how the data is being analyzed, which further narrows the abstract idea. The claims additional analysis narrowing the abstract idea, like the independent claims, are merely being implemented on a general purpose computer, which merely amounts to the application or instructions to apply the abstract idea on a computer and does not move beyond a general link of the use of an abstract idea to a particular technological environment (See MPEP 2106.05). The limitations of the independent and dependent claim(s) when considered individually and as an ordered combination do not amount to significantly more than the abstract idea. The examiner has considered the dependent claims in a full analysis including the additional limitations individually and in combination as analyzed in the independent claim(s). Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Allowable over 35 USC 103
Claims 21-40 are allowable over the prior art, but remain rejected under §101 and double patenting for the reasons set forth above. Independent claims 21, 28, and 35 disclose a system, product, and method for determining segments of online users from correlated datasets, by receiving datasets, segmentation request, removing unnecessary data based on segment rules comprising string matching expressions, determining global user identifiers and scores for a segment, converting the qualified global user identifiers to a de-identified set of user identifiers with a salting and hashing technique, and mapping the de-identified set of user identities to a format of identities of the first data manager.
Regarding a possible 103 rejection: The closest prior art of record is:
Lawrence et al. (US 2008/0027788 A1) – which discloses object oriented system and method for optimizing the execution of marketing segmentations.
Reiskind (US 2016/0005041 A1) – which discloses maintaining privacy and compliance of account data.
Weinstein et al. (US 2014/0108139 A1) – which discloses marketing segmentation rule definition for processing data.
The prior art of record neither teaches nor suggests all particulars of the limitations as recited in claims 21, 28, and 35, such as determining segments of online users from correlated datasets, by receiving datasets, segmentation request, removing unnecessary data based on segment rules comprising string matching expressions, determining global user identifiers and scores for a segment, converting the qualified global user identifiers to a de-identified set of user identifiers with a salting and hashing technique, and mapping the de-identified set of user identities to a format of identities of the first data manager. While individual features may be known per se, there is no teaching or suggestion absent applicants’ own disclosure to combine these features other than with impermissible hindsight and the combination/arrangement of features are not found in analogous art. Specifically the claimed “a system for determining segments of online users from a correlated dataset and providing de-identified user identifiers, the system including: a data storage device storing instructions for determining segments from a correlated dataset; and a processor configured to execute the instructions to perform a method including: receiving, by a processor over a network, a plurality of datasets and one or more segment rules from a first data manager, the plurality of datasets including user-related data of a plurality of users; transforming the user related data based on the one or more segment rules, the one or more segment rules comprising text rules that result in outputs based on using one or more string inputs; storing, by the processor, the transformed user related data in one or more databases correlating to a global user identifier; correlating the plurality of datasets in the one or more databases with global user identifiers associated with the user-related data; receiving a segmentation request from the first data manager for determining a plurality of users that qualify for a plurality of segments; removing unnecessary data from the plurality of datasets in the one or more datasets to form remaining data of the plurality of datasets based on the one or more segment rules provided by the first data manager; transforming the remaining data of the plurality of datasets using the one or more segment rules to standardize the remaining data of the plurality of datasets, the one or more segment rules comprising string matching expressions; determining qualified global user identifiers, from the global user identifiers, based on the one or more segment rules of the segmentation request and a score for each of the plurality of segments; converting, by a de-identification operation, the qualified global user identifiers to a de-identified set of user identifiers by salting and hashing the qualified global user identifiers, to prevent re-identification of any one of the qualified global user identifiers, and to prevent incorporating user related data of the qualified global user identifiers by a second data manager; and providing the de-identified set of user identifiers to the first data manager by mapping the de-identified set of user identifiers to a format of identities of the first data manager (as required by independent claims 21, 28, and 35)”, thus rendering claims 21, 28, 35, and their dependent claims as allowable over the prior art.
Conclusion
The prior art made of record, but not relied upon is considered pertinent to Applicant's disclosure is listed on the attached PTO-892 and should be taken into account / considered by the Applicant upon reviewing this office action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW D HENRY whose telephone number is (571)270-0504. The examiner can normally be reached on Monday-Thursday 9AM-5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BRIAN EPSTEIN can be reached on (571)-270-5389. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW D HENRY/Primary Examiner, Art Unit 3625
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