DETAILED ACTION
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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 3, 2026 has been entered.
Notice to Applicant
Claims 1 and 11 have been amended. Claims 16 and 19 have been canceled. Now, claims 1-15, 17, 18, and 20 remain pending and will be examined herein.
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 and 11 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 1 and 11 recite “a user searching for a digital asset in a database and digital image by splitting the digital image into multiple patches and encoding the patches with a position vector into a keyword classifier”. The specification and drawings filed on May 10,2023 fail to define a “digital image by splitting the digital image into multiple patches and encoding the patches with a position vector into a keyword classifier”. The specification does not define what the patches are what they doing. The specification describes fragmented split images that are coded with a spatial location, see Applicant’s specification paragraphs 52-53.
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.
3. Claims 1-20 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.
Claims 1-15, 17, 18, and 20 are directed to extrapolating user behavior in an online digital marketplace, which is considered a commercial interaction. Commercial interactions fall within a subject matter grouping of abstract ideas which the Courts have considered ineligible (Certain methods of organizing human activity). The claims do not integrate the abstract idea into a practical application, and do not include additional elements that provide an inventive concept (are sufficient to amount to significantly more than the abstract idea).
Under step 1 of the Alice/Mayo framework, it must be considered whether the claims are directed to one of the four statutory classes of invention. In the instant case, claim 1-10 recite a method and at least one step. Claims 11-15, 17, 18, and 20 recite a system comprising an online marketplace engine and a search engine. Therefore, the claims are each directed to one of the four statutory categories of invention (process, apparatus, manufacture).
Under step 2A of the Alice/Mayo framework, it must be considered whether the claims are “directed to” an abstract idea. That is, whether the claims recite an abstract idea and fail to integrate the abstract idea into a practical application.
Regarding independent claim 1, the claim sets forth a process extrapolating user behavior in a digital asset marketplace, including through the facilitation of consumer-to-business interaction, in the following limitations:
generating an embedded keyword vector for a search query from:
a user searching and
digital image by splitting the digital image into multiple patches and encoding the patches with a position vector into a keyword classifier, generates a convoluted layer comprising a reduced dimensionality of the digital image;
ranking multiple embedded asset vectors within a similarity radius around the embedded keyword vector, each of the embedded asset vectors associated based on a proximity with the embedded keyword vector wherein a ranking includes a tunable parameter configured to define a first portion of the ranking comprises a dense vector representation and second portion comprising a sparse vector representation;
and providing, to the user, associated with the embedded asset vectors in response to the search query, based on the ranking.
The above-recited limitations establish a commercial interaction with a consumer to extrapolate user behaviors in a digital marketplace. This arrangement amounts to both a sales activity or behavior; and business relations. Such concepts have been considered ineligible certain methods of organizing human activity by the Courts (See MPEP 2106.04(a)).
Claim 1 does recite additional elements:
for a digital asset in a database;
wherein a neural network;
with a digital asset in the database;
multiple digital assets.
These additional elements merely amount to the general application of the abstract idea to a technological environment (“for a digital asset in a database”; “wherein a neural network”; “with a digital asset in the database”; “multiple digital assets”) and insignificant pre-and-post solution activity (searching, splitting, ranking, and providing). The specification makes clear the general-purpose nature of the technological environment. Paragraphs 39, 44-46, and 66-74 indicate that while exemplary general purpose systems may be specific for descriptive purposes, any elements or combinations of elements capable of implementing the claimed invention are acceptable. That is, the technology used to implement the invention is not specific or integral to the claim.
Therefore, considered both individually and as an ordered combination, the additional elements do no more than generally link the use of the abstract idea to a particular technological environment or field of use. That is, given the generality with which the additional limitations are recited, the limitations do not implement the abstract idea with, or use the abstract idea in conjunction with, a particular machine or manufacture that is integral to the claim. Additionally, the claims do not reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition, do not effect a transformation or reduction of a particular article to a different state or thing; and do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea. Accordingly, the Examiner concludes that the claim fails to integrate the abstract idea into a practical application, and is therefore “directed to” the abstract idea.
Under step 2B of the Alice/Mayo framework, it must finally be considered whether the claim includes any additional element or combination of elements that provide an inventive concept (i.e., whether the additional element or elements are sufficient to amount to significantly more than the abstract idea). As indicated above, considered both individually and as an ordered combination, the additional elements do not implement the abstract idea with, or use the abstract idea in conjunction with, a particular machine or manufacture that is integral to the claim, do not reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition, do not effect a transformation or reduction of a particular article to a different state or thing, and do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea
Further, the additional elements (recited above) simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Communicating information (i.e., receiving or transmitting data over a network) has been repeatedly considered well-understood, routine, and conventional activity by the Courts (See MPEP 2106.05(d)). Accordingly, the Examiner asserts that the additional elements, considered both individually, and as an ordered combination, do not provide an inventive concept, and the claim is ineligible for patent.
Independent Claim 11 is parallel in scope to claim 1 and ineligible for similar reasons.
Dependent claims
Each of these steps of the preceding dependent claims 2-10, 12-15, 17, 18, and 20 only serve to further limit or specify the features of independent claims 1 and 11 accordingly, and hence are nonetheless directed towards fundamentally the same abstract idea as the independent claim and utilize the additional elements already analyzed in the expected manner.
Regarding Claim 5
Claim 5 sets forth:
wherein ranking multiple embedded asset vectors comprises scoring the embedded asset vectors.
Such a recitation merely embellishes the abstract idea of establishing a commercial interaction with a consumer to extrapolate user behaviors in a digital marketplace. While the claim does set forth the additional limitation of “based on a digital asset metadata from a digital asset provider”, this recitation is similar to the additional limitations in claim 1, as it does no more than generally link the use of the abstract idea to a particular technological environment. As such, it does not integrate the abstract idea into a practical application, and does not provide an inventive concept. Accordingly, the claim does not confer eligibility on the claimed invention and is ineligible for similar reasons to claim 1.
Allowable Subject Matter
Claims 1-15, 17, 18, and 20 would be allowed if rewritten to overcome the current 35 U.S.C. 101 rejections.
The cited prior art references (Srinivasan and Huh) fail to teach or disclose all of the limitations of the independent claims, specifically they fail to teach or disclose the following:
generating an embedded keyword vector for a search query from:
a user searching for a digital asset in a database and
digital image by splitting the digital image into multiple patches and encoding the patches with a position vector into a keyword classifier, wherein a neural network generates a convoluted layer comprising a reduced dimensionality of the digital image;
ranking multiple embedded asset vectors within a similarity radius around the embedded keyword vector, each of the embedded asset vectors associated with a digital asset in the database based on a proximity with the embedded keyword vector wherein a ranking includes a tunable parameter configured to define a first portion of the ranking comprises a dense vector representation and second portion comprising a sparse vector representation; and
providing, to the user, multiple digital assets associated with the embedded asset vectors in response to the search query, based on the ranking.
Response to Arguments
28. Applicant's arguments filed April 3, 2026 have been fully considered but they are not persuasive.
A. Applicant argues that the additional claim elements integrate the alleged abstract idea into a practical application, which renders the claims-as a whole- patent eligible.
In response, Examiner respectfully disagrees. After determining that a claim recites a judicial exception in Step 2A Prong One, examiners should evaluate whether the claim as a whole integrates the recited judicial exception into a practical application of the exception in Step 2A Prong Two. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception (see MPEP § 2106.04{d) - Integration of a Judicial Exception Into A Practical Application). The court has provided limitations that are indicative that an additional element (or combination of elements) may have integrated the exception into a practical application and limitations that did not integrate a judicial exception into a practical application (see MPEP §2106.04(d)(I) — Relevant Considerations for Evaluating Whether Additional Elements integrate a Judicial Exception into a Practical Application). The use of a digital asset and a database are only recited as a tool to perform an existing process and only amounts to an instruction to implement the abstract idea using a computer (MPEP § 2106.05(f)(2) see case requiring the use of software to tailor information and provide it to the user on a generic computer within the “Other examples.. v.”). Here the instant claims seem more analogous to "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). Accordingly, the claims do not recite additional limitations that integrate the exception into a Practical Application, and the application of the abstract idea is therefore not eligible.
With regards to Ex parte Desjardins, the Examiner asserts the use of a digital asset and a database is recited at such a high level of generality that it merely adds the words apply it with the judicial exception (See MPEP 2106), where nothing specific with regard to the digital asset and database are claimed at all. The Examiner again asserts that the computer and hardware is not what is being improved, but rather, hopefully, the way the human uses the hardware is being improved, which merely amount to the hardware being used as a tool for implementing the abstract idea (See MPEP 2106.05). The Examiner asserts that using general purpose computer hardware to implement the abstract idea does not make the claims eligible. Applicant’s arguments are not persuasive.
The claims do not integrate the abstract idea into a practical application, and does not include additional elements that provide an inventive concept (are sufficient to amount to significantly more than the abstract idea). (Digitech Image Tech., LLC v. Electronics for Imaging, Inc. (Fed. Cir. 2014)). The claims do not recite any unconventional computer functions. The structural elements as claimed are for mere convenience and the recited claim elements constitute Certain Methods of Organizing Human Activity, which are still considered an abstract idea under the 2019 PEG. As a result, there are no meaningful limitations in the claim that transform the exception into a patent eligible application such that the claim amounts to significantly more than the exception itself, and the claims are properly rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. The claim is silent on any computer operation and specific technological implementation that would move the claim beyond a general link to a technological environment.
Accordingly, the claims do not amount to significantly more, and the application of the abstract idea is therefore not eligible.
B. Applicant argues that the cited references do not teach or suggest the amended limitations of the independent claims.
The 35 U.S.C. 102 and 35 U.S.C. 103 rejections of claims 1-15, 17, 18, and 20 has been withdrawn.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Methods and systems for capturing analytic model authoring knowledge (US 10970634 B2) teaches the predictive model authoring tool is configured to perform a modeling operation based on one or more user inputs provided to interface controls of the predictive model authoring tool, determine a modeling context for the modeling operation, log the one or more user inputs, generate a predictive model based on one or more model parameters defined during the modeling operation, link the predictive model to an asset, such that one or more sets of data received from the asset are provided to the predictive model during execution of the predictive model, cause the predictive model to be executed such that the predictive model receives data from the asset, and provide the modeling context, the one or more user inputs, and the one or more model parameters.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMBER ALTSCHUL MISIASZEK whose telephone number is (571)270-1362. The examiner can normally be reached M-F 9AM-5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fonya Long can be reached at 571-270-5096. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AMBER A MISIASZEK/Primary Examiner, Art Unit 3682
Prosecution Insights