DETAILED ACTION
This FINAL office action is in response to Applicant’s amendment filed January 13, 2026. Applicant’s January 13th amendment amended claims 1, 4, 7, 18, and 20. Currently Claims 1-15 and 17-21. Claims 1, 18 and 20 are the independent claim.
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 .
Response to Amendment
The 35 U.S.C. 101 rejection of claims 1-15 and 17-21 in the previous office action is maintained.
Applicant’s amendments to the claims necessitated the new grounds of rejection.
Response to Arguments
Applicant's arguments filed February 13, 2026 have been fully considered but they are not persuasive. Specifically, Applicant argues the claims are patent eligible under 35 U.S.C. 101 as the claims do not recite a judicial exception/not directed to an abstract idea (e.g. cannot be practically performed in human mind; Remarks: Page 14); the claims integrate the abstract idea into practical application (e.g. improve another technology/technical field; improve technical field of generating a model - estimating a metric of interest over time, estimate effect in the hours streamed due to the addition of different languages; dictionary; improvement in how the model operates itself; Specification: Paragraph 16; Remarks: Last Paragraph, Page 14; Page 15); the claims are similar to the Dejardnis et al. (e.g. model improvement is akin to machine learning improvement; reduce storage, reduces number of entries in the table/dictionary; Remarks: Last Paragraph, Page 15; Pages 16, 17); and the claims recite significantly more than the abstract idea (e.g. forward/reverse modeling, use of delayed releases; Remarks: Paragraph 1, Page 16)
In response to Applicant’s argument that the claims are patent eligible under 35 U.S.C. 101 as the claims are not directed to an abstract idea/not one of the enumerated categories of abstract ideas, the examiner respectfully disagrees.
The claims remain directed to a well-known business process – determining whether or not to release a content item (e.g. streaming movie, video) in a second language based on estimated change in a metric (e.g. interest metrics, number of playback accounts, number of hours streamed, etc.; Specification: Figure 7 – i.e. assist a company in making a business decision as to what, if any, additional languages to release a movie in) as well as mental process capable of being performing by a human mind or via pen and paper. More specifically the claims perform a series of method steps to generating a model to calculate/predict various metrics for instances of content ((mathematical model – Figure 4 – graph; Paragraph 30 – model to forecast streaming hours; and based on that model estimate a change in one of the metrics for the content item being released in a second language and country ; rank the content based on a change in the metric/effect if released in the second language and country and then then translate the content via a generic ‘machine’ (e.g. add a soundtrack in the second language; wherein the machine is recited at a high level of generality, and merely is a tool/conduit for the abstract idea; see Specification Paragraph 2 – disclosing manual translation) the first instance of content into a second language.
While the claims may represent an improvement to the fundamental economic process in assisting business in deciding whether or not to release a movie (content) in another language and country (i.e. which ‘content’ to translate into another language based on collected business metrics – such as streaming hours), the claims in no way either claimed or disclosed integrate the abstract into an practical application (see detailed discussion below) nor do the claims provide a technical solution to a technical problem; nor do the claims improve the functioning of any of the underlying technology (video delivery system, computing device, machine, computer readable storage medium having stored computer instructions, computer processors) or another technology or technical field (e.g. deciding what movie to translate into a second language based on an analysis of collected data/metrics is not a technical field – it is a well-known business problem).
Additionally, the claims are directed to a mental processing practically capable of being performed in the human mind via observation, evaluation, judgement and opinion. Representative claim 1: The step of releasing instances of content tor delivery, wherein a first group of instances of content are delivered by streaming using the video delivery system with a first language and second language at a respective first time, wherein the instances of content comprises one or more of movies or shows and a second group of instances of content are delivered by streaming using the video delivery system with a first language at a respective first time and then with a second language at a second time after the first time wherein the instances of content did not have an audio track with the second language before the second time is directed to insignificant pre-solution activity (i.e. data output) and may be performed by a human using a generic computer/processor (‘delivery system’) as a conduit/tool for the abstract idea. The step of receiving feedback from the video delivery system for the delivery of instances of content for a content metric for instances of content that were released wherein the content metric includes a number of hours streamed by content devices is directed to insignificant pre-solution activity (i.e. data gathering) and may be performed in the human mind using observation of data or at best a human using a generic ‘computer device’ as a tool to receive data. The step of identifying the instances of content in the second group and not the first group may be performed in the human mind by evaluation and judgement. The step of determining the instances of content that were released with the second language at the second time for the instances of content in the second group may be performed by a human mind via evaluation. The step of generating a model to estimate an effect on the content metric for releasing a new instance of the content with the second language may be performed by the human mind using evaluation and is also directed to a mathematical step/concept as the model is a mathematical model (forecasting/prediction model; Specification: Paragraph 30; Figure 4). The step of performing forward and reverse modeling to model an estimation of the content metric from the feedback, wherein the estimation is determined based on an addition of the audio track with the second language for instances of the content after the second time may be performed in the human mind via evaluation and judgement and is also directed to a mathematical concept/operation wherein the model is a prediction/forecasting mathematical operation. The step of determining an effect of hours streamed that is attributed to the release of the second language based on a difference between the estimation of the content metric and the content metric for the instances of the content did not have the audio track with the second language before the second time may be performed by human mind via judgement and evaluation. The step of storing the respective effect for the release of the second language and a total hours streamed for a country in the database table for a dictionary is directed to insignificant solution activity (i.e. data gathering) wherein a database table may be represented in a human mind or stored using pen and paper. The step of receiving a new instance of content with an audio track in the first language is directed to insignificant extra solution activity (i.e. data gathering) and may be performed in the human mind by observation of data. The step of analyzing characteristics of instances of content in the dictionary to select an instance of the content based on a relationship to the new instance of the content, wherein the characteristics comprise one or more of a television series or a genre may be performed by a human via judgement and evaluation. The step of retrieving the respective effect from the database table is directed to insignificant extra solution activity (i.e. data gathering) and may be performed in human via observation of data. The step of estimating, using the model, a change in the content metric for the new instance of the content based on the effect from the instance of the content, wherein the change comprises: estimating, using the model, an effect on the content metric for the second language and the country; determining, using the model, the total hours streamed for the country from the dictionary; determining, using the model, the effect by country and the second language by applying the effect on the content metric to the total hours streamed for the country may be performed in a human mind via evaluation and opinion and is also directed to mathematical operation/concept. The step of generating a ranking score for the second language when the second language is released with the first language for the new instance of the content based on the change in the content metric, wherein the ranking score ranks an effect on the content metric if the second language is released for the new instance of the content is directed to a mathematical operation/concept and may be performed in the human mind via evaluation. The step of translating an audio track of the new instance of content into the second language based on the ranking score may be performed in the human mind via judgement and opinion.
Other than the recitation of a video delivery system, computing device, machine, computer readable storage medium having stored computer instructions, computer processors, and database nothing in the claimed steps precludes the step from practically being performed in the mind. The claims do not recite additional elements that are sufficient to amount to significantly more than the abstract idea. The limitations directed to a hardware device including video delivery system, computing device, machine, computer readable storage medium having stored computer instructions, computer processors, and database are each recited at a high level of generality and amount to no more than mere instructions to apply the exception using a generic computer. See MPEP 2106.05(f). Further the mere nominal recitation of a generic computer and database table (dictionary) (each used for their well-understood, conventional and routine purpose) does not take the claim limitation out of the mental processes grouping. The claims use “conventional or generic technology in a nascent but well-known environment” to implement the abstract idea of selecting content to translate a audio track for based on analyzed data. In re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016). The recited technology (processor, memories, database, etc.), are used as a “conduit for the abstract idea,” not to provide a technological solution to a specific technological problem. Id.; see also id. at 611–13 (holding claims reciting the use of a cellular telephone and a network server to classify an image and store the image based on its classification to be abstract because the patent did “not describe a new telephone, a new server, or a new physical combination of the two” and did not address “how to combine a camera with a cellular telephone, how to transmit images via a cellular network, or even how to append classification information to that data”).
Nothing in Applicant’s disclosures suggests that the Applicant intended to accomplish any of the steps recited in the claims through anything other than well understood technology used in a routine and conventional manner. Therefore, the claims lack an inventive concept. See also, e.g., Elec. Power Grp., 830 F.3d at 1355 (holding claims lacked inventive concept where “[n]othing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information”); Content Extraction, 776 F.3d at 1348 (holding claims lacked an inventive concept where the claims recited the use of “existing scanning and processing technology”).
Reevaluating the steps of releasing instances of content for delivery, receiving feedback, storing the respective effect, receiving a new instance of content, and retrieving the respective effect which are considered insignificant extra solution activity, these limitations are mere data gathering and output recited at a high level of generality and amount to nothing more than receiving data which are both well-understood, routine and conventional activities. The limitations remain insignificant extra solution activity even upon reconsideration. Even when considered in combination the additional elements represent mere instructions to apply an exception and insignificant extra solution activity which cannot provide an inventive concept.
Accordingly, the claims are not patent eligible under 35 U.S.C. 101.
In response to Applicant’s argument that the claims are patent eligible under 35 U.S.C. 101 as integrate the abstract idea into a practical application (e.g. improve another technology/technical field), the examiner respectfully disagrees.
The claims are directed to a well-known business practice – business decision making – in this case deciding whether or not to release a content item (e.g. streaming movie, video) in a second language based on estimated change in a metric (e.g. interest metrics, number of playback accounts, number of hours streamed, etc.; Specification: Figure 7) and then translating an audio track based on that decision. While the claims may represent an improvement to the business process of deciding which content (movie, TV show) to translate an audio track for they in no way either claimed or disclosed represent a practical application.
With regards to Applicant’s argument that the new claimed method steps improve technical field of generating a model, specifically a model for estimating a metric of interest over time, estimate effect in the hours streamed due to the addition of different languages, the examiner respectfully disagrees.
As made clear in at least Specification Paragraph 30 and Figure 4 (below), the model is a mathematical model “to predict the number of hours streamed without the release of the new language” wherein forecasting business metrics such as hours streamed is a well-known, conventional, routine and widely practiced business process. Forecasting business metrics is not a technical field of endeavor. Forecasting, including forward/reverse forecasting, are old, well-known, conventional and routine mathematical operations frequently used by businesses/humans to make business decisions. At best the mathematical model, disclosed in Figure 4, may improve a businesses ability to predict streaming hours for media content over time – this is an improvement in the abstract idea itself and does not represent an improvement in the functioning of a computer, computer network or improvement to another technical field. Further predicting business metrics, even with the disclosed ‘model’, does not represent a technical solution to a technical problem.
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It is noted that the phrases forward modeling and reverse modeling appear nowhere in Applicant’s disclosure, see 35 U.S.C. 112a discussion below.
With regards to Applicant’s argument that the claims argument that the claims recite a technical improvement to the functioning of a computer, via reducing the storage requirements/number of entries in a table, the examiner respectfully disagrees.
The claimed dictionary for storing instances of content and their respective release effect (i.e. data storage) and analyzing characteristics of content in a dictionary to select a second instance based on a relationship to the first instance (i.e. data processing) which result in an argued benefit disclosed in a single sentence in Specification Paragraph 19 (“A technical improvement is also provided because a calculation can be performed faster using the dictionary of content with the associated effect on the metric of interest. Instead of calculating the effect based on characteristics of different content, the dictionary may be used to generate the effect faster and also using fewer computing resources.”) The examiner respectfully disagrees.
Applicant’s specification makes clear that the claimed ‘dictionary’ is merely a well-known, conventional and routine database table used for its well-known, conventional and routine purpose of data storage. See Figure 7, below, and Specification Paragraph 40.
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As defined/disclosed by Applicant (Figure 7, Paragraph 40) the claimed ‘dictionary’ is at best a generic data storage structure/concept implemented in software for storing data which is then later ‘analyzed’ (i.e. accessed/processed by a computer) recited at a high level of generality and used for its well-know, conventional, traditional and routine purpose. Neither Applicant’s disclosure or Applicant’s arguments provide sufficient detail to support Applicant’s argument that the recited use of a ‘dictionary’ (database table comprising rows and columns of data) to store and analyze data achieves any improvements of any kind in the functioning of a computer or provides a technical problem to a technical solution or otherwise improves another technology/technical field as argued. The recited ‘dictionary’ is merely a database table recited at a high level of generality such that it amounts to no more than mere instructions to apply the abstract idea using a generic database/table (data storage) as a tool/conduit for the abstract idea. See “apply it” per MPEP 2106.05(f).
At best the recited ‘dictionary’ and argued improvement do not go beyond the well-known or expected or conventional benefits of using a generic dictionary (database, database table) on a generic computer. See MPEP 2106.05(f)(2)- ‘Similarly, "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept’.
With regards to argued Specification Paragraph 16, this paragraph primarily discusses the method steps/process for estimating/predicting a metric of interest over time (e.g. number of hours streamed, etc.) and demining a change in a metric of interest due to releasing a content in a second language (both mathematical operations/concepts). In the last sentence of Paragraph 16, Applicant’s disclosure tangentially mentions that the system may generate a dictionary that includes information of content, languages and effects. This paragraph fails to disclose any specific technical improvement of any kind, fails to disclose a technical to a technical problem specific arising in the realm of computers/computer networks and fails to disclose an improvement in another technical field. Further this claim fails to discuss at any level of detail what a dictionary is.
As for Specification Paragraph 19, this paragraph overwhelmingly discusses the effects/change in interest metrics associated with potential release of a second language of content. Only the last sentence of Paragraph 19 tangentially mentions that ‘dictionary’ may generate (calculated) an effect faster and may also use fewer computer resources. This paragraph, like the remainder of Applicant’s disclosure, fails to discuss at any level of detail any specifics as to HOW the recite ‘dictionary’ may result in fewer computer resources or HOW the ‘dictionary’ performs mathematical operations (i.e. calculations faster). This paragraph merely discloses a wished-for benefit without any discussion at any level of HOW the desired results/improvement are actually achieved.
There is a fundamental difference between computer functionality improvements, on the one hand, and uses of existing computers as tools to perform a particular task, on the other — a distinction that the Federal Circuit applied in Enfish, in rejecting a § 101 challenge at the first stage of the Mayo/Alice framework because the claims at issue focused on a specific type of data structure, i.e., a self-referential table, designed to improve the way a computer stores and retrieves data in memory, and not merely on asserted advances in uses to which existing computer capabilities could be put. See Enfish, 822 F.3d at 1335-36. Here the claims simply use a computer as a tool and nothing more.
For the reasons outlined above, the claims recite a method of organizing human activity, i.e., an abstract idea, and that the additional element recited in the claim beyond the abstract idea (e.g. computing device, dictionary (database table)) is no more than a generic computer component used as a tool to perform the recited abstract idea. As such, it does not integrate the abstract idea into a practical application. See Alice Corp., 573 U.S. at 223-24 (“[Wholly generic computer implementation is not generally the sort of ‘additional featur[e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)).
Accordingly, the claims are directed to an abstract idea.
Step Two of the Mayo/Alice Framework (Step 2B)
Having determined under step one of the Mayo/Alice framework that the claims are directed to an abstract idea, we next consider under Step 2B of the Guidance, the second step of the Mayo/Alice framework, whether the claims include additional elements or a combination of elements that provides an “inventive concept,” i.e., whether an additional element or combination of elements adds specific limitations beyond the judicial exception that are not “well-understood, routine, conventional activity” in the field (which is indicative that an inventive concept is present) or simply appends well-understood, routine, conventional activities previously known to the industry to the judicial exception.
Under step two of the Mayo/Alice framework, the elements of each claim are considered both individually and “as an ordered combination” to determine whether the additional elements, i.e., the elements other than the abstract idea itself, “transform the nature of the claim” into a patent-eligible application. Alice Corp., 573 U.S. at 217 (citation omitted); see Mayo, 566 U.S. at 72-73 (requiring that “a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself’ (emphasis added) (citation omitted)).
Here the only additional element recited in the claims beyond the abstract idea the video delivery system, computing device, machine, computer readable storage medium having stored computer instructions, computer processors, database (dictionary),” i.e., generic computer components. See Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”). Applicant has not identified any additional elements recited in the claim that, individually or in combination, provides significantly more than the abstract idea.
The claims use “conventional or generic technology in a nascent but well-known environment” to implement the abstract idea. In re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016). The recited technology (i.e. video delivery system, computing device, machine, computer readable storage medium having stored computer instructions, computer processors, database.), are used as a “conduit for the abstract idea,” not to provide a technological solution to a specific technological problem. Id.; see also id. at 611–13 (holding claims reciting the use of a cellular telephone and a network server to classify an image and store the image based on its classification to be abstract because the patent did “not describe a new telephone, a new server, or a new physical combination of the two” and did not address “how to combine a camera with a cellular telephone, how to transmit images via a cellular network, or even how to append classification information to that data”).
Nothing in Applicant’s disclosures suggests that the Applicant intended to accomplish any of the steps recited the claims through anything other than well understood technology used in a routine and conventional manner. Therefore, the claims lack an inventive concept. See also, e.g., Elec. Power Grp., 830 F.3d at 1355 (holding claims lacked inventive concept where “[n]othing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information”); Content Extraction, 776 F.3d at 1348 (holding claims lacked an inventive concept where the claims recited the use of “existing scanning and processing technology”).
Similar to the discussion in Uniloc USA, Inc. v. LG Electronics USA, Appeal No. 19-1835 (Fed. Cir. Apr. 30, 2020), wherein the Federal Circuit reaffirmed that software inventions are patentable in the U.S. with a bright-line statement: “Our precedent is clear that software can make patent-eligible improvements to computer technology, and related claims are eligible as long as they are directed to non-abstract improvements to the functionality of a computer or network platform itself”, the claimed invention does not recite non-abstract improvements to the functionality of a computer or network platform.
Accordingly, the claims are not patent eligible under 35 U.S.C. 101.
In response to Applicant’s argument that the claims are patent eligible under 35 U.S.C. 101 as the claims are similar to the recent Appeals Review Panel review of Ex parte Desjardins et al., the examiner respectfully disagrees.
While the Desjardins decision cautions against overbroad application of 35 U.S.C. 101 to artificial intelligence inventions, such inventions not categorically excluded from patentability, the thrust of the decision made clear that improvements to an AI model itself can be sufficient for the purpose of patent eligibility, even when the claims recite, on their face, an ostensibly “abstract idea.” Specifically, the Appeals Review Panel found that the claims under review provided a technical improvement in the functioning of machine learning models by enabling continual learning, reducing storage requirements, and preserving performance across tasks. In particular, the decision emphasized that the claimed invention addresses a technical problem ("catastrophic forgetting") and improves the operation of AI systems, not just through generic computer implementation but by a specific training strategy. To support this determination, the Appeals Review Panel looked to the specification which, on its own, disclosed how the invention would improve functioning of an AI model--in particular, the specification explained how the proposed invention would use less “storage capacity” and lead to “reduced system complexity." These improvements, which the Appeals Review Panel found were incorporated into the claims as a whole, constituted an “improvement to how the machine learning model itself operates”.
Initially it is noted that nowhere in Applicant’s disclosure nor recited in the pending claims is there any mention of any kind or at any level of machine learning or artificial intelligence. Additionally, as discussed in detailed above, the newly claimed ‘model’ is nothing more than a mathematical equation/curve used to predict one or more business metrics related to movies, TV shows, or other ‘content’ items. The claimed ‘model’ is not in any way remotely associated with or akin to the machine learning or artificial intelligence models discussed in the recent Desjardins et al. review.
None of Applicant’s arguments, disclosure or claims discusses at any level that the generically ‘model’ of Figure 4/Specification Paragraph 30 represents or provides an improvement in machine learning itself. At best, the disclosed/claimed ‘model’ may represent an improvement to the abstract idea itself by enabling a business to predict the business effect of releasing content in a second language.
Accordingly, the claims are nothing like those in the Desjardins decision and are therefore not patent eligible under 35 U.S.C. 101.
Should Applicant amend the claims to include machine learning and/or artificial intelligence examiner suggests Applicant review the recently updated MPEP2106.04 (below) and the 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence (2024 AI SME Update) in the Federal Register on July 17, 2024 (https://www.federalregister.gov/public-inspection/2024-15377/guidance-2024-update-on-patent-subject-matter-eligibility-including-on-artificial-intelligence ) and specifically review the three new examples 47-49 announced by the 2024 AI SME Update which provide exemplary SME analyses under 35 U.S.C. 101 of hypothetical claims related to AI inventions (https://www.uspto.gov/sites/default/files/documents/2024-AI-SMEUpdateExamples47-49.pdf).
MPEP § 2106.04(d)(1)
In short, first 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 in the functioning of a computer, or an improvement to other technology or a technical field. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but only in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine that the claim improves technology or a technical field. Second, if the specification sets forth an improvement in technology or a technical field, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement, i.e., That is, the claim includes the components or steps of the invention that provide the improvement described in the specification. The claim itself does not need to explicitly recite the improvement described in the specification (e.g., “thereby increasing the bandwidth of the channel”). See, e.g., Ex Parte Desjardins, Appeal No. 2024-000567 (PTAB September 26, 2025, Appeals Review Panel Decision) (precedential), in which the specification identified the improvement to machine learning technology by explaining how the machine learning model is trained to learn new tasks while protecting knowledge about previous tasks to overcome the problem of “catastrophic forgetting,” and that the claims reflected the improvement identified in the specification. Indeed, enumerated improvements identified in the Desjardins specification included disclosures of the effective learning of new tasks in succession in connection with specifically protecting knowledge concerning previously accomplished tasks; allowing the system to reduce use of storage capacity; and the enablement of reduced complexity in the system. Such improvements were tantamount to how the machine learning model itself would function in operation and therefore not subsumed in the identified mathematical calculation.
In response to Applicant’s argument that the claims are patent eligible under 35 U.S.C. 101 as the claims recite significantly more than the abstract idea, the examiner respectfully disagrees.
As discussed above, the newly recited step of generating a ‘model’ to estimate an effect on a content metric for releasing a new instance of the content with a second language including performing forward modeling after the second time and reverse modeling (aka inverse modeling) before the second time are directed to well-known, conventional and routine mathematical forecasting methods and techniques. Nowhere in Applicant’s disclosure is there any discussion at any level that the claimed, but not disclosed, forward modeling or reverse modeling improve any of the underlying technology, improve another technical field or provide a technical solution to a technical problem. At best, the newly claimed forward/reverse modeling, MAY represent an improvement in the business process of predicting one or more content metrics, such as streaming hours, for content (movies, TV shows, etc.).
Further it is noted that the phrases forward modeling and reverse modeling appear nowhere in Applicant’s disclosure, see 35 U.S.C. 112a discussion below.
The claims use “conventional or generic technology in a nascent but well-known environment” to implement the abstract idea of business metric forecasting. In re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016). The recited technology (i.e. video delivery system, computing device, machine, computer readable storage medium having stored computer instructions, computer processors, database), are used as a “conduit for the abstract idea,” not to provide a technological solution to a specific technological problem. Id.; see also id. at 611–13 (holding claims reciting the use of a cellular telephone and a network server to classify an image and store the image based on its classification to be abstract because the patent did “not describe a new telephone, a new server, or a new physical combination of the two” and did not address “how to combine a camera with a cellular telephone, how to transmit images via a cellular network, or even how to append classification information to that data”).
Nothing in Applicant’s disclosures suggests that the Applicant intended to accomplish any of the steps recited in the claims through anything other than well understood technology used in a routine and conventional manner. Therefore, the claims lack an inventive concept. See also, e.g., Elec. Power Grp., 830 F.3d at 1355 (holding claims lacked inventive concept where “[n]othing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information”); Content Extraction, 776 F.3d at 1348 (holding claims lacked an inventive concept where the claims recited the use of “existing scanning and processing technology”).
Accordingly, the claims are not patent eligible under 35 U.S.C. 101.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-15 and 17-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding independent claims 1, 18 and 20, the claims recite “generating a model to estimate an effect on the content metric for releasing a new instance of content with the second language…… wherein generating the model comprises: for the instances of content in the second group: performing a forward modeling after the second time and a reverse modeling before the second time to model determining an estimation of the content metric from the feedback…..” wherein Applicant’s specification does not provide a sufficient description to show possession of the invention. Specifically, Applicant’s specification fails to provide a specific algorithm, models, flow-charts, steps, processes or the like for forward modeling and reverse modeling as claimed. Applicant’s specification only describes an indication of a result that one might achieve. This is insufficient to show possession or enablement under 35 U.S.C. 112.
None of the phrases forward modeling, reverse modeling, forward, or reverse appear anywhere in Applicant’s disclosure.
Accordingly, Applicant's specification fails to provide adequate written support to show possession as well as lacks written disclosure to enable one to use the invention without undue experimentation as claimed. Applicant's disclosure fails to disclose any specific method, algorithm, approach, process or working example for the step of “wherein generating the model comprises: for the instances of content in the second group: performing a forward modeling after the second time and a reverse modeling before the second time to model determining an estimation of the content metric from the feedback…..” as claimed nor the claimed embodiment as a whole.
While Applicant’s specification appears to suggest some potential capabilities of the claimed system/method (e.g. predicting/estimating content metrics using a ‘model’ _Figure 4; Paragraph 30), the Specification merely lists potential features and fails to disclose any specific method, mechanism, process, algorithm, or example for how to perform any of the claimed steps much alone the combination of the steps as claimed.
The Federal Circuit explained that “[t]he test for the sufficiency of the written description ‘is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.’” Id. at 682 (quoting Ariad, 598 F.3d at 1351). The Federal Circuit emphasized that “[t]he written description requirement is not met if the specification merely describes a ‘desired result.’” Vasudevan, 782 F.3d at 682 (quoting Ariad, 598 F.3d at 1349). Thus, in applying this standard to the computer implemented functional claim at issue, the Federal Circuit stated that “[t]he more telling question is whether the specification shows possession by the inventor of how [the claimed function] is achieved.” Vasudevan, 782 F.3d at 683.
It is noted that the written description requirement under 112(a) is not satisfied by stating that one of ordinary skill in the art could devise an algorithm to perform the specialized programmed functions. For written description, the specification as filed must describe the claimed invention in sufficient detail so that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. An original claim may lack written description when the claim defines the invention in functional language specifying a desired result but the specification does not sufficiently identify how the inventor has devised the function to be performed or result achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient).
Further, the structure corresponding to claim limitations that are computer-implemented specialized functions must include a general-purpose computer or computer component along with the algorithms that the computer uses to perform each claimed specialized function.
It is not enough that one skilled in the art could theoretically write a program to achieve the claimed function, rather the specification itself must explain how the claimed function is achieved to demonstrate that the applicant had possession of it. See, e.g., Vasudevan, 782 F.3d at 682-83.
Applicant’s specification does not provide a disclosure of the computer and algorithms in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention that achieves the claimed result.
Accordingly, Applicant's specification fails to provide adequate written support to show possession as well as lacks written disclosure to enable one to use the invention without undue experimentation as claimed. Applicant's disclosure fails to disclose any specific method, algorithm, approach, process or working example for the step of “wherein generating the model comprises: for the instances of content in the second group: performing a forward modeling after the second time and a reverse modeling before the second time to model determining an estimation of the content metric from the feedback…..” as claimed.
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 1-15 and 17-21 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.
Regarding independent Claims 1, 18 and 20, the claims are directed to a well-known business process – deciding whether or not to release a content item (e.g. streaming movie, video) in a second language based on estimated change in a metric (e.g. interest metrics, number of playback accounts, number of hours streamed, etc.; Specification: Figure 7) and then translating an audio track based on that decision as well as mental process capable of being performing by a human mind or via pen and paper. More specifically the claims perform a series of method steps to determine/calculate various metrics for instances of content; generate/calculate a ranking score for an instance of content, if the content where to be released in a second language) and then translating the first instance of content into a second language.
As such the claims recite a judicial exception, a mental processes, which can be performed in the human mind or via pen and paper (Judicial Exception – Yes – mental process).
The claimed steps of identifying the instances of content in the second group, determining the instances of content that were released, generating a model to estimate an effect on a content metric, performing forward modeling…and reverse modeling, determining an effect of hours streamed, analyzing characteristics of instances of content, estimating using the model a change in the content metric, estimating using the model an effect, determining using the model the total hours streamed, determining using the model the effect by country, generating a ranking score for the second language, and translating an audio track all describe the abstract idea. These limitations as drafted are directed to a process that under its reasonable interpretation covers performance of the steps in the mind but for the recitation of the generic computer components. Other than the recitation of a video delivery system, computing device, machine, computer readable storage medium having stored computer instructions, computer processors, and database, nothing in the claimed steps precludes the step from practically being performed in the mind. The claims do not recite additional elements that are sufficient to amount to significantly more than the abstract idea because the steps of receiving feedback, storing the respective effect, receiving a new instance of content, and retrieving the respective effect are directed to insignificant pre-solution activity (i.e. data gathering). The steps of releasing instances of content for delivery is directed to insignificant extra solution activity (i.e. data output). The mere nominal recitation of a generic processor/computing device does not take the claim limitation out of the mental processes grouping. Thus, the claim recites a mental process. (Judicial Exception recited – Yes – mental process).
The claims do not integrate the abstract idea into a practical application. The generic video delivery system, computing device, machine, computer readable storage medium having stored computer instructions, computer processors, and database are recited at a high level of generality merely performs generic computer functions of receiving/retrieving, storing and processing data. The generic processor/computing device merely applies the abstract idea using generic computer components. The elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims do not recite improvements to the functioning of a computer or any other technology field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition, the claims to do apply the abstract idea with a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (e.g. data remains data even after processing; MPEP 2106.05(c)), the claims no not apply or use the abstract idea in some other meaningful way beyond generally linking the user of the abstract idea to a particular technological environment (i.e. a generic computer) such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea (MPEP 2106.05(e)). The recited generic computing elements are no more than mere instructions to apply the exception using a generic computer component.
Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. (Integrated into a Practical Application – No).
As discussed above the additional elements in the claims amount to no more than a mere instruction to apply the abstract idea using generic computing components, wherein mere instructions to apply an judicial exception using generic computer components cannot integrate a judicial exception into a practical application or provide an inventive concept. For the releasing, receiving, retrieving, and storing steps that were considered extra-solution activity, this has been re-evaluated and determined to be well-understood, routine, conventional activity in the field. Applicant’s specification does not provide any indication that the computer/processor is anything other than a generic, off-the-shelf computer component, and the Symantec, TLI, and OIP Techs. court decisions (MPEP 2106.05(d)(II)) indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). For these reasons, there is no inventive concept. The claim is ineligible (Provide Inventive Concept – No).
The claims are ineligible under 35 U.S.C. 101 as being directed to an abstract idea without significantly more.
Regarding dependent claims 2-15, 19 and 21, the claims are directed to the abstract idea of demand tracking and merely further limit the abstract idea claimed in independent claims 1, 18 and 20.
Claims 2 and 19 further limit the abstract idea by limiting the new instance content to an content that has not been released and the second change in the metric is based on adding the feature on an initial release of a first instance (a more detailed abstract idea remains an abstract idea). Claim 3 further limits the abstract idea by receiving the first information after a release time of the second content and receiving second information for the metric and estimating a third change in the metric (insignificant pre-solution activity, a more detailed abstract idea remains an abstract idea). Claim 4 further limits the abstract idea by generating a model based on the release of the second instance and estimating third information for the metric after the release time (a more detailed abstract idea remains an abstract idea). Claim 5 further limits the abstract idea by using a different between the first and third information to estimate the third change (a more detailed abstract idea remains an abstract idea). Claims 6 and 21 further limit the abstract idea by receiving first information for the metric after a release time, receiving second information for the metric based on the release time and estimating a third change in the metric (a more detailed abstract idea remains an abstract idea). Claim 7 further limits the abstract idea of generating a model based on the release of the second instance and estimating a third information metric (a more detailed abstract idea remains an abstract idea). Claim 8 further limits the abstract idea by using a difference between the third and first information to estimate a third change (a more detailed abstract idea remains an abstract idea). Claim 9 further limits the abstract idea by using a similarity characteristic of the second content to the first content to select the second instance (a more detailed abstract idea remains an abstract idea). Claim 10 further limits the abstract idea by applying the first change to a value to generate a second change (a more detailed abstract idea remains an abstract idea). Claim 11 further limits the abstract idea by estimating an effect on the metric for a language or country, determining a first metric value based on the country and determine a second value by country and language (a more detailed abstract idea remains an abstract idea). Claim 12 further limits the effect of estimate effect by language (a more detailed abstract idea remains an abstract idea). Claim 13 further limits the abstract idea by generating ranking scores for multiple languages and ranking multiple languages (a more detailed abstract idea remains an abstract idea). Claim 15 further limit the abstract idea to wherein use of the language cannot be determined (a more detailed abstract idea remains an abstract idea). Claim 17 further limit the abstract idea wherein the content is content consumable by a user (a more detailed abstract idea remains an abstract idea).
None of the limitations considered as an ordered combination provide eligibility because taken as a whole the claims simply instruct the practitioner to apply the abstract idea to a generic computer.
Further regarding claims 1-15 and 17-21, Applicant’s specification discloses that the claimed elements directed to a s video delivery system, computing device, machine, computer readable storage medium having stored computer instructions, computer processors, and database at best merely comprise generic computer hardware which is commercially available (Figure 9). More specifically Applicant’s claimed features directed to a system do not represent custom or specific computer hardware circuits, instead the terms merely refers to commercially available software and/or hardware. Thus, as to the system recited, "the system claims are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea." See Alice Corp. Pry. Ltd., 134 S.Ct. at 2360.
Accordingly, the claims merely recite manipulating data utilizing generic computer hardware (e.g. computing device, processor, etc.). Generic computers performing generic computer functions, alone, do not amount to significantly more than the abstract idea. Further the lack of detail of the claimed embodiment in Applicant’s disclosure is an indication that the claims are directed to an abstract idea and not a specific improvement to a machine.
Applicant has not demonstrated that a special purpose machine/computer is required to carry out the claimed invention. A special purpose machine is now evaluated as part of the significantly more analysis established by the Alice decision and current 35 U.S.C. 101 guidelines. It involves/requires more than a machine only broadly applying the abstract idea and/or performing conventional functions.
Applicant’s specification discloses that the claimed elements directed to a system, processor, interface, component and storage medium merely comprise generic computer hardware which is commercially available (Specification: Figure 9). More specifically Applicant’s claimed features directed to a system and components do not represent custom or specific computer hardware circuits, instead the term system merely refers to commercially available software and/or hardware. Thus, as to the system recited, "the system claims are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea." See Alice Corp. Pry. Ltd., 134 S.Ct. at 2360.
Accordingly, the claims merely recite manipulating data utilizing generic computer hardware (e.g. storage medium, processor). Generic computers performing generic computer functions, alone, do not amount to significantly more than the abstract idea. Further the lack of detail of the claimed embodiment in Applicant’s disclosure is an indication that the claims are directed to an abstract idea and not a specific improvement to a machine.
Accordingly given the broadest reasonable interpretation and in light of the specification the claims are interpreted to include the process steps being performed by a human mind or via pen and paper. The claim limitations which recite a video delivery system, computing device, machine, computer readable storage medium having stored computer instructions, computer processors, and database or similar generic computer structures which at best recite generic, well-known hardware. However, the recited generic hardware simply performs generic computer function of storing, accessing, displaying or processing data. Generic computers performing generic, well known computer functions, alone, do not amount to significantly more than the abstract idea. Further the recited memories are part of every conventional general-purpose computer.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT L JARRETT whose telephone number is (571)272-7033. The examiner can normally be reached M-TH 6am-4:30PM.
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SCOTT L. JARRETT
Primary Examiner
Art Unit 3625
/SCOTT L JARRETT/Primary Examiner, Art Unit 3625