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 .
Response to Amendment
The amendment filed on August 20, 2025 cancelled no claims. Claims 1, 7, 13 and 31 were amended and no new claims were added. Thus, the currently pending claims addressed below are claims 1-5, 7-11, 13-17 and 31-35.
Claim Interpretation
The following terms have required examiner interpretation:
Computer-based recommendation system: software executing on a computer (Applicant’s specification paragraphs 34 and 51, as well as, figures 1-2);
Noisy reward: a type of user feedback with a higher probability of occurring, such as a user selection of a recommendation provided (Applicant’s specification paragraph 26-27);
Sparse reward: another type of user feedback with a reduced probability of occurring than a noisy reward, such as a user rating of a recommendation (Applicant’s specification paragraphs 26-27);
IUCB or UCBI: upper confidence bound (UCB) based system or imputation upper confidence bound based system – no contextual data used;
LINUCB: Linear UCB or imputed Linear UCB – incorporates contextual data.
Claim Rejections - 35 USC § 112
The amendment filed on August 20, 2025 has overcome the 35 U.S.C. 112(a) rejection of claims 1-5 and 31-33 raised in the Office Action dated June 2, 2025. Thus, the rejection is hereby withdrawn.
The amendment filed on August 20, 2025 has overcome the 35 U.S.C. 112(a) rejection of claims 7-11 and 34-35 raised in the Office Action dated June 2, 2025. Thus, the rejection is hereby withdrawn.
The amendment filed on August 20, 2025 has overcome the 35 U.S.C. 112(a) rejection of claims 13-17 raised in the Office Action dated June 2, 2025. Thus, the rejection is hereby withdrawn.
The amendment filed on August 20, 2025 has overcome the 35 U.S.C. 112(a) rejection of claims 1-5, 7-11, 13-17 and 31-35 raised in the Office Action dated June 2, 2025. Thus, the rejection is hereby withdrawn.
The amendment filed on August 20, 2025 has overcome the 35 U.S.C. 112(b) rejection of claims 1-5, 7-11, 13-17 and 31-35 raised in the Office Action dated June 2, 2025. Thus, the rejection is hereby withdrawn.
Claim Rejections - 35 USC § 101
Claims 1-5, 7-11, 13-17 and 31-35 are directed to a method, a system, and a computer program product which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
However, claims 1-5, 7-11, 13-17 and 31-35 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Independent claim(s) 1, 7, and 13 recite(s) the following abstract idea: (Examiner note: the end user device is outside of the scope of the claimed data processing system and, as such, has been included as part of the abstract idea because it cannot be considered “additional elements” of the claimed invention)
providing, in real time, a tailored content to an end user device of a user, wherein the tailored content specifies a selected digital asset;
receiving, from the end user device, a user input specifying a noisy reward and a user input specifying a sparse reward for the digital asset, wherein the noisy reward is based on a user selection of the digital asset and specifies a value within a defined range of values, and wherein the sparse reward is a user-provided rating of the digital asset and specifies a value within the defined range of values;
generating a filtered noisy reward by filtering the noisy reward based on an upper bound for the sparse reward or a lower bound for the sparse reward;
generating a final reward for the digital asset based on a function of the filtered noisy reward and the sparse reward;
updating an expected reward and a confidence interval for the digital asset based on the final reward;
generating a further tailored content specifying another digital asset for the user selected based on a context vector associated with a current state of the system, the expected reward as updated, and the confidence interval as updated for the digital asset; and
providing the further tailored content to the end user device.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely commercial or legal interactions as they recite an advertising, marketing, or sales activities or behaviors because it gathers data, analyzes the data, determines results, generates product recommendations based on the results, and transmits the product recommendations (see at least specification paragraphs 2, 54, and 62). Accordingly, the claim recites an abstract idea (i.e., “PEG” Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application because the claim only recites the additional elements of:
a data processing system computer with a processor and a memory (one or more computer-readable storage media) executing software (e.g., a network module, a computer-based recommendation system, and a reward filter – paragraph 43 of the applicant’s specification indicates that the network module could just be software and Figs. 1-2, as well as, paragraphs 4 and 51-52, indicate that the reward filter and recommendation system are software executable by a processor); and
an interface (Web page).
The following limitations, if removed from the abstract idea and considered additional elements, merely perform generic computer function of processing, communicating (e.g., transmitting and receiving), and displaying:
providing, from a data processing system, a Web page to an end user device of a user, wherein the Web page specifies a digital asset selected by a computer-based recommendation system integrated with the data processing system configure to provide real time operation (transmitting data);
receiving, via a network module of the data processing system and from the end user device, a user input specifying a noisy reward and a user input specifying a sparse reward for the digital asset, wherein the noisy reward is based on a user selection of the digital asset and specifies a value within a defined range of values, and wherein the sparse reward is a user-provided rating of the digital asset and specifies a value within the defined range of values (receiving data); and
providing the further Web page to the end user device (transmitting data).
The additional technical elements above are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of processing, communicating (e.g., transmitting and receiving), and displaying using generic computer components) such that it amounts to no more than mere instructions to apply the exception using a general-purpose computer with generic computer components. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) applying or using 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 claim as a whole is more than a drafting effort designed to monopolize the exception (see MPEP 2106.05(e) and Vanda memo).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or 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)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
Thus, the claim is “directed to” an abstract idea (i.e., “PEG” Revised Step 2A Prong Two=Yes)
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using a data processing system computer with a processor and a memory executing software, and an interface (Web pages); to perform the claimed functions amounts to no more than mere instructions to apply the exception using a general-purpose computer and generic computer components.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on a computer, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent-eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires a general-purpose computer and generic computer components (as evidenced from Figures 1-2 and paragraphs 4, 43, 51-52, 55, 92, 97 of the applicant’s specification which indicate that the computer is a general-purpose computer; and the Affinity v. DirectTV or Intellectual Ventures I v. Capital One decision which discloses that a user interface that provides information to and accepts user input is a generic computer element); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility. Finally, the following limitations, if removed from the abstract idea and considered additional elements, would be considered insignificant extra solution activity as they are directed to merely receiving, storing and/or transmitting data:
providing, from a data processing system, a Web page to an end user device of a user, wherein the Web page specifies a digital asset selected by a computer-based recommendation system integrated with the data processing system configure to provide real time operation (transmitting data);
receiving, via a network module of the data processing system and from the end user device, a user input specifying a noisy reward and a user input specifying a sparse reward for the digital asset, wherein the noisy reward is based on a user selection of the digital asset and specifies a value within a defined range of values, and wherein the sparse reward is a user-provided rating of the digital asset and specifies a value within the defined range of values (receiving data); and
providing the further Web page to the end user device (transmitting data).
Thus, taken individually and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea) (i.e., “PEG” Step 2B=No).
The dependent claims 2-5; 8-11; 14-17, and 31-35 appear to merely further limit the abstract idea by further limiting the generating the filtered noisy reward step by adding an updating step which are all considered part of the abstract idea (Claims 2, 8, and 14); adding an additional step regarding the generating of the final reward which is considered part of the abstract idea (Claims 3, 9, and 15); adding additional steps directed to selecting a digital asset and using the filtered noisy reward as the final reward which are both considered part of the abstract idea (Claims 4, 10, and 16); adding additional updating steps and further limiting the filtering based on the updating which are all considered part of the abstract idea (Claims 5, 11 and 17); further limiting the providing of the further Web page which is considered part of the abstract idea (Claims 31 and 34); adding an additional step of learning a relationship between contexts which is considered part of the abstract idea (Claims 32 and 35); further limiting the selection of the digital asset which is considered part of the abstract idea (Claim 33), and therefore only further limit the abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes), does/do not include any new additional elements that are sufficient to amount to significantly more than the judicial exception, and as such are “directed to” said abstract idea (i.e. “PEG” Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. “PEG” Step 2B=No).
Thus, based on the detailed analysis above, claims 1-5, 7-11, 13-17 and 31-35 are not patent eligible.
Possible Allowable Subject Matter
Claims 1-5, 7-11, 13-17 and 31-35 would be allowable if the applicant were to be able to overcome the 35 USC 101 rejections identified above.
The following is a statement of reasons for the indication of allowable subject matter: The examiner has found prior art (see Upadhyay et. al.: 2021/0065897; Vernade et. al.: 2021/0158196; and Alkan et al.: 2022/0156637) that discloses a method, a system, a computer program product, comprising:
a data processing system comprising one or more processors and one or more computer readable storage mediums having program instructions embodied therewith, configured to operate in real time and execute operations including:
selecting one or more recommended digital assets;
generating a Web page specifying the one or more recommended digital assets;
providing the Web page to an end user device of a user;
receiving, via a network module and from the remote end user device at a first time, a user input specifying user feedback for the one or more recommended digital assets presented on the Web page delivered to the end user device, wherein the user input specifies a noisy reward (click action) for each of the one or more recommended digital assets, wherein each noisy reward is based on a user selection of a recommended digital asset from the Web page having a value within a defined range of values;
receiving, via a network module and from the remote end user device at a different time, a second user input specifying user feedback for the one or more recommended digital assets presented on the Web page delivered to the end user device, wherein the plurality of second user inputs specify a sparse reward (purchase action) for the at least one or more recommended digital assets; wherein each sparse reward is a user-provided action associated with a digital asset having a value within the defined range of values;
for each recommended digital asset of the one or more recommended digital assets having a noisy reward, generating, using a reward filter executed by the processor, a filtered noisy reward by filtering the noisy reward based on an upper bound for the sparse reward or a lower bound for the sparse reward;
generating a final reward for the one or more recommended digital assets based on a function of the filtered noisy reward and the sparse reward;
updating an expected reward and a confidence interval for each of the one or more recommended digital assets based on a final reward of the recommended digital asset;
selecting one or more additional digital asset of a plurality of digital assets based on a context vector associated with a current state, the expected reward as updated and the confidence interval as updated for each of the one or more of the plurality digital assets;
generating a further Web Page specifying the selected one or more additional digital assets of the plurality of digital assets; and
providing the further Web page to the end user device.
However, the prior art of Upadhyay, Vernade, and Alkan require that the second user feedback input with the sparse reward (purchase action) be delayed because of the amount of time it takes for a user to make a purchase decision after performing the first user feedback input with the noisy reward (click action). The examiner has been unable to find a disclosure that would be obvious to combine with the prior art of Upadhyay, Vernade, and Alkan that either waits the amount of time to complete the sparse reward, so as to send both the noisy reward and the sparse reward at the same time such that the one or more user inputs are all received at once, or a sparse reward such as a rating of the digital asset that can be completed in a time frame which would allow both the noisy reward input and the sparse reward input to be received at the same time. As such, the prior art does not disclose:
receiving, via a network module of the data processing system and from the remote end user device, a user input specifying a noisy reward and a user input specifying a sparse reward for the digital asset, wherein the noisy reward is based on a user selection of the digital asset and specifies a value within a defined range of values, and wherein the sparse reward is a user-provided rating of the digital asset and specifies a value within the defined range of values.
Thus, claims 1-5, 7-11, 13-17 and 31-35 contain subject matter that is allowable over the prior art if the applicant were to be able to overcome the 35 USC 101 rejections identified above.
Response to Arguments
Applicant's arguments filed August 20, 2025 have been fully considered but they are not persuasive.
In regards to the 35 USC 101 rejection, the applicant argues that the claims overcome the 35 USC 101 rejection under Step 2a, Prong 1 because the examiner did not identify the enumerated sub-grouping as required by MPEP 2016(a)(2)(II), and the claims do not recite advertising as an exchange or currency, structuring of a sales force or marketing company, using an algorithm for determining the optimal number of visits by a business representative to a client, or offer-based price optimization. The applicant asserts that the examiner has not identified one of the enumerated sub-groupings as required by MPEP 2016(a)(2)(II). The examiner disagrees. The examiner has clearly identified the enumerated sub-grouping of commercial or legal interactions when he stated “The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely advertising, marketing, or sales activities or behaviors because it gathers data, analyzes the data, determines results, generates product recommendations based on the results, and transmits the product recommendations”. As indicated in MPEP 2016(a)(2)(II), the sub-grouping of commercial or legal interactions includes advertising, marketing or sales activities or behaviors. As such, not only did the examiner identify the sub-grouping of commercial or legal interactions, but the examiner also identified the specific sub-sub-grouping of advertising, marketing or sales activities or behaviors. The applicant asserts that the enumerated sub-grouping in MPEP 2016(a)(2)(II) requires that the examiner identify one of the specific examples of advertising, marketing, or sales activities or behavior listed in MPEP 2016(a)(2)(II), and that, in order to reject the claims under 35 USC 101, as a Certain Method of Organizing Human Activity – commercial or legal interaction – advertising, marketing or sales activity or behavior, the claims must recite advertising as an exchange or currency, structuring of a sales force or marketing company, using an algorithm for determining the optimal number of visits by a business representative to a client, or offer-based price optimization because these are the examples of advertising, marketing or sales activities listed in MPEP 2016(a)(2)(II) which the courts have determined to be abstract. The examiner disagrees. It appears that the applicant is misinterpreting MPEP 2016(a)(2)(II). In MPEP 2016(a)(2)(II), the enumerated groupings of abstract idea are: Mathematical Concepts; Mental Process; and Certain Methods of Organizing Human Activity. The examiner has clearly identified the claims fall within the enumerated grouping of Certain Methods of Organizing Human Activity. In MPEP 2016(a)(2)(II), the enumerated sub-groupings with Certain Methods of Organizing Human Activity are: 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); and managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). The examiner has clearly identified the claims as falling within the enumerated sub-grouping of commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). There is no requirement in MPEP 2016(a)(2)(II) that requires that claims can only be rejected under 35 USC 101 if they recite an example of an abstract idea listed in MPEP 2016(a)(2)(II) which the courts have determined to recite an abstract idea. Thus, it is immaterial, with regards to a 35 USC 101 rejection, whether the claims recite advertising as an exchange or currency, structuring of a sales force or marketing company, using an algorithm for determining the optimal number of visits by a business representative to a client, or offer-based price optimization. As indicated in MPEP 2016(a)(2)(II), an examiner is to determine which enumerated grouping of abstract idea the claim recites, if any, and which of the enumerated sub-groupings the claim recites, if any. In the instant case, the examiner has clearly identified both the enumerated grouping of abstract idea the claim recites, as well as, enumerated sub-grouping of abstract idea the claim recites. Thus, the applicant’s arguments are not convincing and the rejection has been maintained.
The applicant argues that the claims overcome the 35 USC 101 rejection under Step 2a, Prong 2 because the claim recite an improvement to other technology or technical field that integrates the exception into a practical application. The examiner disagrees. In order to transform an abstract idea into a practical application under Step 2a, Prong 2, any purported improvement to other technology or technical field must be rooted in the “additional elements” of the claimed invention. “Additional elements” are defined as those elements outside of the identified abstract idea itself. In the instant case, the only additional elements of the claimed invention are a general-purpose computer with generic computer components (i.e., a data processing system computer with a processor and a memory executing software, and an interface) upon which an abstract idea is merely being applied which is insufficient to transform an abstract idea under Step 2a, Prong 1. Any purported improvement to other technology or technical field is rooted solely in the abstract idea. As indicated in MPEP 2106, the judicial exception alone cannot provide the improvement. Improvements of this nature are improvements to an abstract idea which is an improvement in ineligible subject matter (see SAP v. Investpic: Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because they are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms. Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non-abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract.). Thus, the rejection has been maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bhagat et. al. (WO2014001908A1) which discloses a recommender system wherein a recommendation is made and observations are made with regard to multiple possible rewards. The system utilized upper confidence bounds to leverage the information regarding the multiple rewards to derive new upper and lower bounds associated with rewards to optimize future recommendations.
Vernade et. al., “Linear bandits with stochastic delayed feedback”, 2018, https://arxiv.org/pdf/1807.02089v1, pgs. 1-13 which discloses a recommendation system that uses multiple rewards that include noisy rewards which are immediate rewards such as click and delayed reward such as purchases to improve the accuracy of future recommendation, wherein confidence intervals (upper and lower bounds) are used to build a modified linear upper confidence bound algorithm.
Bhagat et al. (PGPUB: 2015/0012345) which discloses a recommender system that utilize mixed multi-armed bandit estimates to select the arm that maximizes the estimated reward to the new user. The multi-armed bandit arm of the greatest reward estimate is played and the new user responds by providing feedback so that the new user's multi-armed bandit model is updated as time progresses
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 JOHN W VAN BRAMER whose telephone number is (571)272-8198. The examiner can normally be reached Monday-Thursday 5:30 am - 4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Spar Ilana can be reached on 571-270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/John Van Bramer/Primary Examiner, Art Unit 3622
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