DETAILED ACTION
Status of Claims
This action is in reply to the response received on 08 October 2025.
Claims 1-2, 4-5, 7, and 14-16 have been amended.
Claims 1-16 are pending and have been examined.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Allowable Subject Matter
Claims 1-16 recite allowable subject matter and would be allowable if the claims were amended or re-written to overcome the 101 rejection indicated in the Office Action below.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-16 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 significantly more).
Under step 1, it is determined whether the claims are directed to a statutory category of invention (see MPEP 2106.03(II)). In the instant case, claims 1-14 are directed to a method, claim 15 is directed to a system, and claim 16 is directed to a product of manufacture.
While the claims fall within statutory categories, under revised Step 2A, Prong 1 of the eligibility analysis (MPEP 2106.04), the claimed invention recites an abstract idea of generating a suggested item list. Specifically, representative claim 1 recites the abstract idea of:
acquiring one or more candidate items from each the plurality of models;
calculating a prediction value obtained by predicting a user behavior for each of the acquired candidate items acquired from the plurality of models;
selecting, from among acquired candidate items acquired from the plurality of models, a plurality of candidate items as suggested items based on the prediction value of each candidate item and generating a suggested item list that is a suggested item list including a plurality of the suggested items and that has robust performance against a domain shift, wherein the suggested item list includes the items acquired from at least two of the plurality of models using different dataset; and
presenting the suggested item list to the user in the introduction destination domain.
Under revised Step 2A, Prong 1 of the eligibility analysis, it is necessary to evaluate whether the claim recites a judicial exception by referring to subject matter groupings articulated in 2106.04(a) of the MPEP. Even in consideration of the analysis, the claims recite an abstract idea. Representative claim 1 recites the abstract idea of generating a suggested item list, as noted above. This concept is considered to be a method of organizing human activity. Certain methods of organizing human activity include “fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).” MPEP 2106.04(a)(2)(II). In this case, the abstract idea recited in representative claims 1 is a certain method of organizing human activity because it relates to sale activities since the claims specifically recite activities of acquiring one or more candidate items from each the plurality of models, calculating a prediction value obtained by predicting a user behavior for each of the acquired candidate items, selecting, from among acquired candidate items acquired, a plurality of candidate items as suggested items based on the prediction value of each candidate item and generating a suggested item list that is a suggested item list including a plurality of the suggested items and that has robust performance against a domain shift, where the suggested item list includes the items acquired from at least two of the plurality of models using different dataset, and
presenting the suggested item list to the user in the introduction destination domain, thereby making this a sales activity or behavior.
Thus, representative claim 1 recites an abstract idea.
Under Step 2A, Prong 2 of the eligibility analysis, if it is determined that the claims recite a judicial exception, it is then necessary to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of that exception. MPEP 2106.04(d). The courts have identified limitations that did not integrate a judicial exception into a practical application include limitations merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP 2106.05(f). MPEP 2106.04(d). In this case, representative claim 1 includes additional elements: processing system, one or more processors, training a plurality of models, each of the plurality of models being trained using dataset of each a plurality of domains different from the introduction destination domain, wherein the introduction domain is unknown at time of training the plurality of models, and the plurality of models trained.
Although reciting such additional elements, the additional elements do not integrate the abstract idea into a practical application because they merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a computer as a tool to perform the abstract idea. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. Similar to the limitations of Alice, representative claim 1 merely recites a commonplace business method (i.e., generating a suggested item list) being applied on a general-purpose computer using general purpose computer technology. MPEP 2106.05(f). While the claims recite training models, the recitations are results based in nature and do not include details as to how the models are actually functioning beyond known functions. Thus, the claimed additional elements are merely generic elements and the implementation of the elements merely amounts to no more than an instruction to apply the abstract idea using a generic computer. Since the additional elements merely include instructions to implement the abstract idea on a generic computer or merely use a generic computer as a tool to perform an abstract idea, the abstract idea has not been integrated into a practical application.
Under Step 2B of the eligibility analysis, if it is determined that the claims recite a judicial exception that is not integrated into a practical application of that exception, it is then necessary to evaluate the additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). MPEP 2106.05. In this case, as noted above, the additional elements of a processing system, one or more processors, training a plurality of models, each of the plurality of models being trained using dataset of each a plurality of domains different from the introduction destination domain, wherein the introduction domain is unknown at time of training the plurality of models, and the plurality of models trained recited in independent claim 1 are recited and described in a generic manner merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea.
Even when considered as an ordered combination, the additional elements of representative claim 1 do not add anything that is not already present when they considered individually. In Alice, the court considered the additional elements “as an ordered combination,” and determined that “the computer components…‘ad[d] nothing…that is not already present when the steps are considered separately’… [and] [v]iewed as a whole…[the] claims simply recite intermediated settlement as performed by a generic computer.” Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217, (2014) (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Similarly, when viewed as a whole, representative claim 1 simply conveys the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B of the Alice/Mayo test, there are no meaningful limitations in representative claim 1 that transforms the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
As such, representative claim 1 is ineligible.
Independent claims 15 and 16 are similar in nature to representative claim 1 and Step 2A, Prong 1 analysis is the same as above for representative claim 1. It is noted that in independent claim 15 includes the additional elements of one or more memories in which a program executed by the one or more processors is stored, wherein one or more processors are configured to execute a command of the program and independent claim 16 includes the additional element of a non-transitory, computer-readable tangible recording medium which records thereon a program for performing the steps and the program for causing, when read by the computer, the computer to realize, and a function of training a plurality of models. The Applicant’s specification does not provide any discussion or description of claimed additional elements in claims 15 and 16, as being anything other than generic elements. Thus, the claimed additional elements of claims 15 and 16 are merely generic elements and the implementation of the elements merely amounts to no more than an instruction to apply the abstract idea using a generic computer. As such, the additional elements of claims 15 and 16 do not integrate the judicial exception into a practical application of the abstract idea. Additionally, the additional elements of claims 15 and 16, considered individually and in combination, do not provide an inventive concept because they merely amount to no more than an instruction to apply the abstract idea using a generic computer.
As such, claims 15 and 16 are ineligible.
Dependent claims 2-14, depending from claim 1, do not aid in the eligibility of the independent claim 1. The claims of 2-14 merely act to provide further limitations of the abstract idea and are ineligible subject matter.
It is noted that dependent claims includes the additional element of a trained model that is trained (claims 13 & 14). Applicant’s specification does not provide any discussion or description of the a trained model that is trained as being anything other than a generic element. The claimed additional elements, individually and in combination do not integrate into a practical application and do not provide an inventive concept because they are merely being used to apply the abstract idea using a generic computer (see MPEP 2106.05(f)). Accordingly, claims 13 and 14 are directed towards an abstract idea. Additionally, the additional elements of claims 13 and 14, considered individually and in combination, do not provide an inventive concept because they merely amount to no more than an instruction to apply the abstract idea using a generic computer. It is further noted that the remaining dependent claims 2-12 do not recite any further additional elements to consider in the analysis, and therefore would not provide additional elements that would integrate the abstract idea into a practical application and would not provide an inventive concept.
As such, dependent claims 2-14 are ineligible.
Reasons for Allowable Subject Matter
Prior Art Considerations:
Upon review of the evidence at hand, it is concluded that the totality of evidence in combination, neither anticipates, reasonably teaches, nor renders obvious the below noted features of the Applicant’s invention.
Regarding the independent claims, the features are as follows:
wherein the introduction destination domain is unknown at time of training the plurality of models, and
wherein the suggested item list includes the candidate items acquired from at least two of the plurality of models trained using different dataset
The most apposite prior art of record includes Malkiel, I., et al. (PGP No. US 2021/0182935 A1), in view of Borar, S., et al. (PGP No. US 2020/0285888 A1), and Afshar, J. (PGP No. US 2022/0414754 A1), to teach a recommendation system.
The reference of Malkiel describes the system for acquiring content-based recommendations and includes a large language model that is used to apply different domains, where domains in this case are different subject areas, such as categories of items, or types of services (Malkiel, see: paragraphs [0023]-[0024], [0034]). The large language models of Malkiel can analyze a seed item description and infer the similarities between that item and one or more potential candidate items (Malkiel, see: paragraphs [0034] and [0039]), and can also vectorize each of the potential items within a specific catalog for specific domains (Malkiel, paragraph [0039] and FIG. 1). Further, Malkiel describes that the recommendation module of the system can generate a list of top items from the candidate potential items, which is used to then recommend a narrowed down list of items to a user (Malkiel, see: paragraphs [0040], [0071], [0112]). Malkiel does not specifically describe that an introduction destination domain is an unknown at the time of training the models, and does not disclose that the suggested item list includes candidate items from at least two of the models trained by different datasets.
Next, the reference of Borar describes a system for determining invariant features of images related to fashion content that are from different domains using a domain adaptation platform, where the domain adaptation is used to ultimately reduce the gap between different domains and improving performance of models (Borar, see: paragraphs [0005] and [0014]). Although Borar discusses different domains and suggests items that are more robust against a domain shift, Borar does not disclose the allowable features discussed above.
The reference of Afshar describes using a user personalization module to evaluate and predict a purchase of a user, and can apply a trained machine learning model to use the user’s behavior data to predict a likeliness that the user will have specific preferences for a specific type of appearance attribute (Afshar, see: paragraph [0031]). The reference also describes that the machine learning models can be trained and can generate scores for a specific appearance attribute that is also correlated with the likelihood of the user having a preference for that attribute, which can indicate a higher likelihood that the user will have that preference (Afshar, see: paragraph [0030]). Although Afshar describes the scores given for the likelihood that the user will have a preference for a specific characteristic, Afshar does not specifically describe that an introduction destination domain is an unknown at the time of training the models, and does not disclose that the suggested item list includes candidate items from at least two of the models trained by different datasets.
The Examiner further emphasizes the claims as a whole and hereby asserts that the totality of the evidence fails to set forth, either explicitly or implicitly, an appropriate rationale for further modification of the evidence at hand to arrive at the claimed invention. Moreover, the combination of features of independent claims, would not have been obvious to one of ordinary skill in the art because any combination of evidence at hand to reach the combination of features as claimed would require substantial reconstruction of Applicant’s claimed invention relying on improper hindsight bias and resulting in an inappropriate combination.
It is hereby asserted by the Examiner, that in light of the above and in further deliberation over all of the evidence at hand, that the claims recite allowable subject matter as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in the art.
Examiner’s Comment
The Examiner notes that the non-patent literature (NPL) document, titled Cross-Domain Recommendation: An Embedding and Mapping Approach, published in the Twenty-Sixth International Joint Conference on Artificial Intelligence (2021), documented on PTO-892 form as reference U, and hereinafter referred to as ‘Cross-Domain’, describes cross-domain recommendations of items, i.e., leveraging feedbacks or ratings from multiple domains to improve recommendation performance in a collective manner. Although Cross-Domain describes such features, the reference does not disclose or teach the allowable features that are stated above, and does not remedy the deficiencies of the noted prior art.
Response to Arguments
With respect to the claim objection regarding claim 14, and in light of the Applicant’s amendments to the claim, the objection has been withdrawn.
With respect to the rejections made under 35 USC § 101, the Applicant’s arguments filed on 08 October 2025, have been fully considered but are not considered persuasive.
In response to the Applicant’s arguments found on pages 11-13 of the remarks stating that “Regarding independent claim 1” and “is now directed to patent-eligible subject matter,” and “The added features further lead to improvements over existing information suggestion technology” and further “the accuracy of the prediction on the suggested item that is presented to the user is significantly improved; thus, the amended claim 1 is directed to an improvement in training of model (e.g., CNN, ML model, etc.) technology,” and “the claimed invention as current presented improves the technical field of trained model (e.g., CNN, ML, etc.),” the Examiner respectfully disagrees. Under Step 2A, Prong 1 of the eligibility analysis, the claims as amended, are still directed to the abstract idea, falling into the enumerated grouping of a certain method of organizing human activity, where the activities and steps in the claims are related to sales activities or behaviors. Next, under Step 2A, Prong 2 of the eligibility analysis, even when considering the amendments the claims do not recite additional elements that are sufficient to integrate the abstract idea into a practical application. The additional elements that are beyond the abstract idea, such as a processing system, one or more processors, training a plurality of models, each of the plurality of models being trained using dataset of each a plurality of domains different from the introduction destination domain, wherein the introduction domain is unknown at time of training the plurality of models, and the plurality of models trained, are still recited in a general or generic manner, and are being used to apply the abstract idea with generically recited computing components. The trained machine learning models are generically recited and are described at high-level generalities, without giving technical detail of how the models are trained. Further, the claims do not reflect an improvement to the technology itself nor to the technical field of trained models, as the additional elements in the claims, considered individually and in an ordered combination, are still recited in a generic manner. The MPEP (2106.05(a)) provides further guidance on how to evaluate whether claims recite an improvement in the functioning of a computer or an improvement to other technology or technical field. For example, as indicated in 2106.05(d)(1) of the MPEP “the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement,” and that “[t]he specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art.” Looking to the specification is a standard that the courts have employed when analyzing claims as it relates to improvements in technology. For example, in Enfish, the specification provided teaching that the claimed invention achieves benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements. Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). Additionally, in Core Wireless the specification noted deficiencies in prior art interfaces relating to efficient functioning of the computer. Core Wireless Licensing v. LG Elecs. Inc., 880 F.3d 1356 (Fed Cir. 2018). With respect to McRO, the claimed improvement, as confirmed by the originally filed specification, was “…allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters…’” and it was “…the incorporation of the claimed rules, not the use of the computer, that “improved [the] existing technological process” by allowing the automation of further tasks”. McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, (Fed. Cir. 2016).
In this case, Applicant’s specification provides no explanation of an improvement to the functioning of a computer or other technology. Rather, the claims focus “on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool”. Id citing Enfish at 1327, 1336. Although the claims include computer technology such as a processing system, one or more processors, training a plurality of models, each of the plurality of models being trained using dataset of each a plurality of domains different from the introduction destination domain, wherein the introduction domain is unknown at time of training the plurality of models, and the plurality of models trained, such elements are merely peripherally incorporated in order to implement the abstract idea. This is unlike the improvements recognized by the courts in cases such as Enfish, Core Wireless, and McRO. Unlike precedential cases, neither the specification nor the claims of the instant invention identify such a specific improvement to computer capabilities. The instant claims are not directed to improving the existing technological process but are directed to improving the commercial task of generating a suggested item list. The claimed process, while arguably resulting in improved recommendations, is not providing any improvement to another technology or technical field, such as the trained models, as the claimed process is not, for example, improving the processor and computer components that operate the system. Rather, the claimed process is utilizing different data while still employing the same processor and computer components used in conventional systems to improve providing a suggested item list to a user, e.g. commercial process. As such, the claims do not recite specific technological improvements.
In response to the Applicant’s arguments found on page 13 of the remarks stating “independent claim 1 includes the inventive concept of generating a suggested item list including the candidate items acquired from at least two of the models trained by using dataset of domains different from the introduction domain,” and “as amended should be sufficient to amount to significantly more than a judicial exception,” the Examiner respectfully disagrees. Under Step 2B of the eligibility analysis, the claims in this case do not recite an inventive concept and do not amount to significantly more than the abstract idea itself. As mentioned above, the claimed additional elements, even when considered as an ordered combination, are still recited in a generic manner and are being used to apply the abstract idea with a generically recited computer and computing components. Even when considering the plurality of models trained, the models are still recited in a general manner and are described at a high level. Therefore, the claims do not recite an inventive concept and do not amount to significantly more than the abstract idea itself, and thus. the Examiner maintains the 101 rejection.
With respect to the rejections made under 35 USC § 103, the Applicant’s arguments filed on 08 October 2025 have been fully considered, and in light of the Applicant’s amendments to the claims, the Examiner respectfully agrees. The claims now recite allowable subject matter, with reasons indicated above, and therefore the 103 rejection has been withdrawn.
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.
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/ASHLEY D PRESTON/Primary Examiner, Art Unit 3688