DETAILED ACTION
Status of the Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The following is in response to a Request for Continued Examination dated March 5, 2026 Claims 1, 11 and 20 are amended. Claims 1-20 are pending. All pending claims are examined.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114
Response to Arguments
101 Rejection Analysis
101 Analysis
In line with the "2019 Revised Patent Subject Matter Eligibility Guidance," which explains how we must analyze patent-eligibility questions under the judicial exception to 35 U.S.C. § 101. 84 Fed. Reg. 50-57 ("Revised Guidance"), the first step of Alice (i.e., Office Step 2A) consists of two prongs. In Prong One, we must determine whether the claim recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural phenomenon. 84 Fed. Reg. at 54 (Section III.A. I.). If it does not, the claim is patent eligible. Id.
An abstract idea must fall within one of the enumerated groupings of abstract ideas in the Revised Guidance or be a "tentative abstract idea, "with the latter situation predicted to be rare. Id. at 51-52 (Section I, enumerating three groupings of abstract ideas), 54 (Section III.A. I., describing Step 2A Prong One), 56-57 (Section III.D., explaining the identification of claims directed to a tentative abstract idea).
If a claim does recite a judicial exception, the next is Step 2A Prong Two, in which we must determine if the "claim as a whole integrates the recited judicial exception into a practical application of the exception." Id. at 54 (Section II.A.2.) If it does, the claim is patent eligible. Id.
If a claim recites a judicial exception but fails to integrate it into a practical application, we move to the second step of Alice (i.e., Office Step 2B). to evaluate the additional limitations of the claim, both individually and as an ordered combination, to determine whether they provide an inventive concept. Id. at 56 (Section III.B.). In particular, we look to whether the claim:
• Adds a specific limitation or combination of limitations that are not well-understood, routine, conventional in the field, which is indicative that an inventive concept may be present; or
• simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
The analysis in line with current 101 guidelines. Even if the abstract idea is deemed to be novel, the abstract idea is no less abstract (see Flook- new mathematical formula was an abstract idea).
“ In accordance with judicial precedent and in an effort to improve consistency and predictability, the 2019 Revised Patent Subject Matter Eligibility Guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes the following groupings of subject matter, when recited as such in a claim limitation(s) (that is, when recited on their own or per se):
(b) Certain methods of organizing human activity—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)1 – See Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019 / p.52.
Step 1: The claims are directed to one or more of the following statutory categories: a process, a machine, a manufacture, and a composition of matter.
claim 11 which is illustrative of independent claims 1 and 20 recites
11.A method comprising:
identifying, by one or more processing circuits, user activity data and one or more performance indicators of a user;
training by the one or more processing circuits, one or more parameters of a machine learning algorithm using the user activity data by;
adjusting the one or more parameters to minimize an error between predictions made by the machine learning algorithm and actual outcomes; and
generating or creating one or more features of the machine learning algorithm to improve the predictions made by the machine learning algorithm;
model using [[a]] the machine learning algorithm according to the trained one or more parameters, the user activity data to generate one or more performance products comprising a plurality of performance parameters corresponding to a future performance indicator of the user; wherein modeling the user activity data comprises;
identifying one or more characteristics of the user activity data;
determining a type of modeling to perform based on the identified one or more characteristics;
selecting a type of machine learning algorithm based on the determined type of modeling to perform and the identified one or more characteristics of the user activity data;
analyzing using the selected machine learning algorithm, the user activity data to establish one or more relationships between data points of the user activity data; and
generating using the selected machine learning algorithm, the one or more performance products based on the one or more relationships and the future performance indicator’
generating and presenting, by the one or more processing circuits, a graphical user interface (GUI) comprising one or more actionable events associated with the plurality of performance parameters;
monitoring, by the one or more processing circuits, the user activity data and the one or more performance indicators of the user based on receiving new activity data corresponding to the future performance indicator from a user data source;
determining, by the one or more processing circuits, whether the new activity data satisfies the plurality of performance parameters of the one or more performance products; and
presenting, by the one or more processing circuits, one or more content items on the GUI comprising an indication of whether the user satisfies the plurality of performance parameters of the one or more performance products.”
2A, Prong One, It is a certain method of organizing human activity that is a form of 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 for making recommendations based on predictive analysis of activity.
Making predictions based on an analysis of historical user activity data from disparate sources to determine a performance metric are nothing more than gathering data and applying a set of instructions to the data.
The limitations of the invention as claimed describe steps a person would take to make a recommendation for a product based on predicting a metric of performance of a user based on analysis of historical or and received data (See App. Spec. paras. 0005, 0016; see also Figs. 3)
Beyond the abstract idea, the additional elements recite hardware components such as processing circuits and graphical user interface (see App. Spec. paras. 0020-0022, 0024, 0032; see also para. 0018, Fig. 1), there does not appear to be any technology being improved.
They are described at a high level of generality where each step does no more than require a generic computer to perform generic computer functions. Absent is any support in the specification that the claims as recited require specialized computer hardware or other inventive computer components.
Although the claims recite,
identifying, by one or more processing circuits, user activity data and one or more performance indicators of a user;
training by the one or more processing circuits, one or more parameters of a machine learning algorithm using the user activity data by;
adjusting the one or more parameters to minimize an error between predictions made by the machine learning algorithm and actual outcomes; and
generating or creating one or more features of the machine learning algorithm to improve the predictions made by the machine learning algorithm;
model using [[a]] the machine learning algorithm according to the trained one or more parameters, the user activity data to generate one or more performance products comprising a plurality of performance parameters corresponding to a future performance indicator of the user; wherein modeling the user activity data comprises;
identifying one or more characteristics of the user activity data;
’
and a bare assertion of an improvement is made, the necessary detail on how the machine learning is executed has to be apparent to a person of ordinary skill in the art. However, absent is support (explanation) for how the identified improvement to machine learning technology is executed. Training a system on paramaters of a machine learning algorithm using the user activity data, as recited, suggests a process similar to a feedback loop in which feedback is used to update the data fed the model.
Unlike, McRO, the present claims contain improvements to the context in which the evaluation is made and not one of a technology or technological field.
In particular, there is a lack of improvement to a computer or technical field of predictions based on analysis of the historical data of a user’s activity because the data processing performed merely uses a system as a tool to perform an abstract idea- see MPEP 2106.05(f). Therefore, the claims are directed to an abstract idea. The invention as claimed recites a generic computer component and the claim does not pass step 2A, Prong Two.
The innovation as claimed appears to be directed to the user’s objective of processing the user’s requests received, rather than the integration of a practical application.
Step 2B; The next step is to identify any additional limitations beyond the judicial exception. The additional elements are processing circuits and graphical user interface (see App. Spec. paras. 0020-0022, 0024, 0032; see also para. 0018, Fig. 1) which is disclosed in the specification at a high degree of generality. Absent is any genuine issue of material fact that this component requires any specialized hardware or inventive computer component.
Likewise, the dependent claims 2-10, 12-19 are rejected under 35 U.S.C. § 101. For example, claims 12-14 provide descriptive material of the rules or conditions for the determination performance metric. These claim limitations recite steps at a high level of generality and performed in a traditional manner and therefore do not integrate the abstract idea into a practical application or provide an inventive concept.
Independent claims 1, 10 and 20 are rejected under 35 U.S.C. § 101 including dependent claims 2-10 and 12-19 which fall with claims 1, 11 and 20. Therefore, claims 1-20 are not patent eligible under 35 USC 101.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Claim 11: Ineligible
Claim 11 is illustrative of the claimed invention and is rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. The claim recites abstract idea of organizing human activities. This judicial exception is not integrated into a practical application and the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Analysis
The claims are directed to one or more of the following statutory categories: a process, a machine, a manufacture, and a composition of matter. For claim 14, the claim recites an abstract idea of funds transfer.
This is an abstract idea of a certain method of organizing human activity, since it recites a method of organizing human activity, evaluating activity to determine performance projections. The claims, which recite:
11.A method comprising:
identifying, by one or more processing circuits, user activity data and one or more performance indicators of a user;
training by the one or more processing circuits, one or more parameters of a machine learning algorithm using the user activity data by;
adjusting the one or more parameters to minimize an error between predictions made by the machine learning algorithm and actual outcomes; and
generating or creating one or more features of the machine learning algorithm to improve the predictions made by the machine learning algorithm;
model using [[a]] the machine learning algorithm according to the trained one or more parameters, the user activity data to generate one or more performance products comprising a plurality of performance parameters corresponding to a future performance indicator of the user; wherein modeling the user activity data comprises;
identifying one or more characteristics of the user activity data;
determining a type of modeling to perform based on the identified one or more characteristics;
selecting a type of machine learning algorithm based on the determined type of modeling to perform and the identified one or more characteristics of the user activity data;
analyzing using the selected machine learning algorithm, the user activity data to establish one or more relationships between data points of the user activity data; and
generating using the selected machine learning algorithm, the one or more performance products based on the one or more relationships and the future performance indicator’
generating and presenting, by the one or more processing circuits, a graphical user interface (GUI) comprising one or more actionable events associated with the plurality of performance parameters;
monitoring, by the one or more processing circuits, the user activity data and the one or more performance indicators of the user based on receiving new activity data corresponding to the future performance indicator from a user data source;
determining, by the one or more processing circuits, whether the new activity data satisfies the plurality of performance parameters of the one or more performance products; and
presenting, by the one or more processing circuits, one or more content items on the GUI comprising an indication of whether the user satisfies the plurality of performance parameters of the one or more performance products.”
This describes the steps a person would take to make product recommendation based on predictive analysis of user’s historical or and current information when certain predefined conditions are satisfied. Besides reciting the abstract idea, the remaining claim limitations is the computer network which is described in terms that suggest ir comprises generic computer components (e.g. processing circuits (see App Spec. paras. 0020-0025).
Further, the dependent claims 2-10, 12-19 recite additional details about the inputs for evaluating the performance and making the projections based on the users’ activities. For example, claims 12-14 provide additional descriptions about the inputs used for the determination or and modelling, however the recited abstract idea is not integrated into a practical application. In particular, the claims only recite generic computer components (e.g. general-purpose computer systems based on the processing circuits and graphical user interface) to evaluate the received data on activities to determine if the predefined conditions have been met and provide performance projections.
These additional elements are recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception using generic computer components.
Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, the claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply the abstract idea using generic computer components. In conclusion, merely “applying” the exception using generic computer components cannot provide an inventive concept. Therefore, Independent claims 1, 11 and 20 and the dependent claims 2-10 and 12-19 are not patent eligible under 35 USC 101.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Listed on form PTO-892.
Thornton et al. USP Pub. No, US 20150220999, Method and System to Dynamically Adjust Offer Spend Thresholds and Personalize Offer Criteria Specific to Individual Users.
Kanevsky et. al, USP Pub. No. 20030088463, System and Method For Group Advertisement Optimization.
Conclusion
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/CHIKAODINAKA OJIAKU/Primary Examiner, Art Unit 3696
1 Interval Licensing, 896 F.3d at 1344–45 (concluding that ‘‘[s]tanding alone, the act of providing someone an additional set of information without disrupting the ongoing provision of an initial set of information is an abstract idea,’’ observing that the district court ‘‘pointed to the nontechnical human activity of passing a note to a person who is in the middle of a meeting or conversation as further illustrating the basic, longstanding practice that is the focus of the [patent ineligible] claimed invention.’’); Voter Verified, Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 1385 (Fed. Cir. 2018) (finding the concept of ‘‘voting, verifying the vote, and submitting the vote for tabulation,’’ a ‘‘fundamental activity’’ that humans have performed for hundreds of years, to be an abstract idea);
In re Smith, 815F.3d 816, 818 (Fed. Cir. 2016) (concluding that ‘‘[a]pplicants’ claims, directed to rules for conducting a wagering game’’ are abstract).
14 If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir . 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016)(holding that computer-implemented method for ‘‘anonymous loan shopping’’ was an abstract idea because it could be ‘‘performed by humans without a computer’’); Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (‘‘Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.’’); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding that the incidental use of ‘‘computer’’ or ‘‘computer readable medium’’ does not make a claim otherwise directed to process that ‘‘can be performed in the human mind, or by a human using a pen and paper’’ patent eligible); id. at 1376 (distinguishing Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010), as directed to inventions that ‘‘could not, as a practical matter, be performed entirely in a human’s mind’’). Likewise, performance of a claim limitation using generic computer components does not necessarily preclude the claim limitation from being in the mathematical concepts grouping, Benson, 409 U.S.at 67, or the certain methods of organizing human activity grouping, Alice, 573 U.S. at 219–20 - – See Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019
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