DETAILED ACTION
This Final Office Action is in response Applicant communication filed on
7/7/2025. In Applicant’s amendment, claims 1-9 were cancelled. Claims 10-16 are added. Claims 10-16 are currently pending and have been rejected as follows.
Response to Amendments
Rejections under 35 USC 112(b) are withdrawn. Rejections under 35 USC 101 are maintained. Applicant’s amendments necessitated new grounds of rejection under 35 USC 103.
Response to Arguments
Applicant’s 35 USC 101 rebuttal arguments and amendments have been fully considered but they are not persuasive to overcome the rejection.
Applicant argues on p. 3-4 that the claims are not directed to an abstract idea because the basic character of the claims its to solve a recommendation problem in a novel and distinct manner of defined multiple steps that are not known to the prior art. Examiner respectfully disagrees. Lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional elements. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101. See MPEP 2106.05.I.
Applicant argues on p. 5-6 that the claims go beyond the mere idea of providing recommendations and specify a particular way of implementing an improvement. Examiner respectfully disagrees. The only additional element recited in the claims is a software program. This recitation merely applies the abstract idea to a computing environment and does not result in patent eligible subject matter.
Applicant's prior art arguments have been fully considered but they are not persuasive to overcome the rejection.
Applicant argues on p. 1-2 that the new claims are distinguishable from Smirin because Smirin is directed to providing recommendations for an item while the new claims are defined to exist independent of any single item. Examiner respectfully disagrees. The first limitation of the independent claim requires “providing recommendations to a user for a choice the user may desire to make for a specific consumer item based on affinities the user has with another.” The claim expressly requires the recommendation for a specific consumer item.
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 10-13 are clearly drawn to at least one of the four categories of patent eligible subject matter recited in 35 U.S.C. 101 (method).
Claims 14-16 are not drawn to at least one of the four categories of patent eligible subject matter recited in 35 U.S.C. 101 because they are directed to a signal per se. Examiner suggests to amend and, for purposes of compact prosecution, interprets claims 14-16 to recite a non-transitory computer readable medium element.
Claims 10-16 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 integrating the abstract idea into a practical application or amounting to significantly more than the abstract idea.
Regarding Step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance (‘2019 PEG”), Claims 10-13 are directed toward the statutory category of a process (reciting a “method”). Claims 14-16 are directed toward the statutory category of an article of manufacturer (reciting a “non-transitory computer readable medium”).
Regarding Step 2A, prong 1 of the 2019 PEG, Claims 10 and 14 are directed to an abstract idea by reciting providing recommendations to a user for a choice the user may desire to make for a specific consumer item based on affinities the user has with another, including compiling data of an array of choices made by a multitude of consumers for various consumer items, identifying choices for comparable consumer items made by the user and other consumers, organizing such consumers making choices having a commonality for comparable consumer items into an affinity group including the user, and visually identifying to the user recommendations of another for said comparable consumer items within the same affinity group and visualizing to the user the degree the user has recommendations in common with said another within the same affinity group for said specific consumer item (Example Claim 10 with similar language in Claim 14).
The claims are considered abstract because these steps recite certain methods of organizing human activity like managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) and mental processes. The claims recite providing recommendations to a user by organizing and identifying choices made by users with an interest in a choice and visualizing the degree the user has recommendations in common. Applicant’s disclosure does not recite a particular problem the claimed steps aim to solve, however, it is understood that the claimed steps aim to assist users in making a decision by creating recommendations based on comparisons to others with similar tastes (Applicant’s Specification, [0003]-[0007]). By this evidence, the claims recite a type of “managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)” and “mental processes” common to judicial exception to patent-eligibility. By preponderance, the claims recite an abstract idea (e.g., an “application” for evaluating and providing recommendations based on user commonalities).
Regarding Step 2A, prong 2 of the 2019 PEG, the judicial exception is not integrated into a practical application because the claims (the judicial exception and the additional elements such as a software program) are not an improvement to a computer or a technology, the claims do not apply the judicial exception with a particular machine, the claims do not effect a transformation or reduction of a particular article to a different state or thing nor do the claims apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment such that the claims as a whole is more than a drafting effort designed to monopolize the exception (see MPEP §§ 2106.05(a-c, e)).
Dependent claims 11-13 and 15-16 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the limitations recite mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea ‐ see MPEP 2106.05(f). Claim 13 merely recites a software program performing the steps of the abstract idea identified in claim 10.
Regarding Step 2B of the 2019 PEG, the additional elements have been considered above in Step 2A Prong 2. The claim limitations do not amount to significantly more than the judicial exception because they are directed to limitations referenced in MPEP 2106.05I.A. that are not enough to qualify as significantly more when recited in a claim with an abstract idea because the limitations recite mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea ‐ see MPEP
2106.05(f).
Applicant's claims mimic conventional, routine, and generic computing by their similarity to other concepts already deemed routine, generic, and conventional [Berkheimer Memorandum, Page 4, item 2] by the following [MPEP § 2106.05(d) Part (II)]. The claims recite steps like: “Receiving or transmitting data over a network, e.g., using the Internet to gather data,” Symantec, and “Performing repetitive calculations,” Flook, (citations omitted), by performing steps of “providing” recommendations, “compiling” data, “identifying” choices, and “visualizing” the degree a user has recommendations in common (Example Claim 10).
By the above, the claimed computing “call[s] for performance of the claimed information collection, analysis, and display functions ‘on a set of generic computer components' and display devices” [Elec. Power Group, 830 F.3d at 1355] operating in a “normal, expected manner” [DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d at 1245, 1258 (Fed. Cir. 2014)].
Conclusively, Applicant's invention is patent-ineligible. When viewed both individually and as a whole, Claims 10-14 are directed toward an abstract idea without integration into a practical application and lacking an inventive concept.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 10-16 are rejected under 35 USC 102(a)(1) as being unpatentable over the teachings of
Smirin et al., US 20070143281 A1, hereinafter Smirin. As per,
Claims 10, 14
Smirin teaches
A method of /A software program (Smirin [0029])
providing recommendations to a user for a choice the user may desire to make for a specific consumer item based on affinities the user has with another, (Smirin [0033] “when a user requests a recommendation for a specific object of interest, the recommendation system 102 finds ratings provided for the object of interest by subscribers that are likely to be trusted by this user, transforms these ratings into correlated recommendations based on the level of trust of the user towards the subscribers and other factors, and presents the correlated recommendations to the user” note the recommendations provided for an object of interest)
including compiling data of an array of choices made by a multitude of consumers for various consumer items, (Smirin [0044] “automatically determine the user level of trust towards each invited individual by evaluating the communications between the user and the invited individual (e.g., the frequency of communications, the nature of communications, etc.), profiles of the user and invited individuals, behavioral patterns of the user and each invited individual (e.g., whether they have visited the same web sites, purchased the same products online, responded similarly to online surveys, etc.), and various other similar factors and combinations” noting the compiled data of choices including purchases, website data, survey responses, etc.)
identifying choices for comparable consumer items made by the user and other consumers, (Smirin [0034] “The ratings provided for the object of interest may be ratings of items associated with the object of interest. For example, if the object of interest is "automobiles", then ratings of items associated with this object of interest are ratings of specific automobile models … each item in the list is paired with a correlated recommendation that is calculated based on ratings provided by the trusted subscribers for the relevant item” note the comparable consumer items corresponding to the object of interest of automobiles for this example)
organizing such consumers making choices having a commonality for comparable consumer items into an affinity group including the user, and (Smirin [0033] “the recommendation system 102 finds ratings provided for the object of interest by subscribers that are likely to be trusted by this user;” [0097] “processing logic allows users to join groups of interest (e.g., extreme sports, hiking, computer geeks etc) or automatically add the users to those groups based on interests they identified in their profiles” corresponding to the organizing of users with an interest in that choice)
visually identifying to the user recommendations of another for said comparable consumer items within the same affinity group and (Smirin figs. 12A-12C; [0097] “processing logic will consider their ratings in these categories while calculating weighted average;” [0147] “UI 1270 provides a visual representation of ratings, using symbols that illustrate the relevance of the ratings to the information recipient. In one embodiment, different shapes of symbols correspond to different degrees of relevance of ratings to the information recipient” note the visualization of the relevance of the recommendations to the recipient user)
visualizing to the user the degree the user has recommendations in common with said another within the same affinity group for said specific consumer item. (Smirin [0098] “similarity between two users is defined using a correlation coefficient between the ratings of these two users in the same category;” fig. 12A; [0133] “rings 1204-1210 correspond to other relevance factors, such as, for example … similarity” noting the similarity coefficient for users in the same category visualized in fig. 12A)
Claims 11, 15
Smirin teaches
wherein such visualizing includes a ring having its degree of transparency indicative of the number of common consumer choices with said another within the same affinity group. (Smirin figs. 12A-12C noting the rings; [0064] “processing logic identifies coefficients for each trusted user that provided rating for the identified item (block 504). The coefficients correspond to various factors. Exemplary factors may include … the number of ratings provided for this object” note the number of ratings; [0098] “In one embodiment, similarity between two users is defined using a correlation coefficient between the ratings of these two users in the same category” noting the correlation coefficient indicating the similarity between two users; [0099] noting the number of n ratings made by the two users in calculating the correlation coefficient; [0143] “the relevance is defined by one or more coefficients. As discussed hereinabove, the coefficients typically include … a similarity coefficient, a ratings number coefficient;” [0144] “UI 1250 includes a first ring 1252, surrounded by concentric second, third and fourth rings … In one embodiment, the relevance may be defined by levels of trust, and the rings 1254-1258 correspond to different levels of trust;” [0145] “Each of the rings 1254-1258 include a number of symbols 1262 therein. Each of the symbols 1262 corresponds to a user. The symbols may have different parameters, such as, shape, size, color, etc. The parameters may define relevance” noting the rings reflective of a number of ratings and visually indicated by shape, size, color, etc.)
Claims 12, 16
Smirin teaches
wherein such ring is completed depending on the number of common consumer choices the user and said another align. (Smirin figs. 12A-12C; [0100] “rating r will be in a range from -1 to 1, where -1 means the rating patterns are absolutely not similar, 1 means perfect correlation, and 0 means that they are independent.” Note the calculated similarity coefficient of 1 indication perfect correlation between two users; [0143] “the relevance is defined by one or more coefficients. As discussed hereinabove, the coefficients typically include … a similarity coefficient;” [0145] “Each of the rings 1254-1258 include a number of symbols 1262 therein. Each of the symbols 1262 corresponds to a user. The symbols may have different parameters, such as, shape, size, color, etc. The parameters may define relevance” noting the rings including the similarity coefficient and visually indicated by shape, size, color, etc.)
Claim 13
Smirin teaches
A software program providing recommendations to a user for a choice the user may desire to make for a specific consumer item based on affinities the user has with another performing the method of claim 10. (Smirin [0029] “the present invention may be provided as a computer program product or software which may include a machine or computer-readable medium having stored thereon instructions which may be used to program a computer (or other electronic devices) to perform a process according to the present invention.” Note the software to execute the invention)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20100169928 A1; WO2019169024A1; Liu, User Similarity Measure Method Based on the Comparison Model of Psychology, 2015.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee 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 MOHAMED EL-BATHY whose telephone number is (571)270-5847. The examiner can normally be reached on M-F 8AM-4:30PM.
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, PATRICIA MUNSON can be reached on (571) 270-5396. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOHAMED N EL-BATHY/Primary Examiner, Art Unit 3624