DETAILED ACTION
This communication is in response to the request for continued examination filed 23 December 2025.
Claims 1, 6-10, 12, and 17-21 have been amended. Claims 23 and 25 have been canceled.
Claims 1-10 and 12-22 are currently pending.
Claims 1-10 and 12-22 are rejected.
Note from Examiner: the Examiner asks that in the future claims be submitted with “Track Changes” turned off. With “Track Changes” enabled, the amended portions of the claims are not easily readable (e.g., greyscale and pixelization are present). See, for example, Examiner’s view of amended claim 6:
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Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 23 December 2025 has been entered.
Response to Amendment/Remarks
Regarding 35 USC § 101, Examiner has fully considered Applicant’s remarks but does not find them persuasive. Applicant argues that “the aspects of claim 1 discussed above go beyond the abstract concepts of: (1) creating and sending customized messages; and (2) identifying individuals who received a certain type of customized message. The above-discussed aspects of claim 1 represent a significant improvement over known methods. Specifically, the creation and use of a customization metadata database as recited in claim 1 make it possible to more rapidly and with less processing power identify those users who previously received a message that was customized in a certain fashion.” Remarks at 13. As understood by Examiner, claim 1 and the invention recites storing data such that the number of queries that need to be run is reduced compared to prior systems. Support is also found on page 11 of Remarks for this understanding. It is also within this understanding that Examiner finds that the database recited is merely a standard database. Storing data differently than prior systems within the context of a routine database does not result in a technological improvement. Giving the processor less to do, without anything further, does not result in a technological improvement. Claim 1, with regard to the database, recites storing records in the database and retrieving data from the database by running queries. This is not a technological improvement, this is routine utilization of a database. Additionally, the nature of the stored records, including, for example, user identifiers and customization information, does not result in a technological improvement. Applicant’s argument is not persuasive.
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 1-10, and 12-22 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.
Step 1
Claims 1-10 and 22 recite a method which is considered a process. Claims 12-21 recite a system which is considered a machine or manufacture.
Step 2A-Prong One
(Claims 1 and 12) The “generating a plurality of customized electronic messages for a plurality of users, , wherein each customized electronic message is customized based on at least one of characteristics of the user to which the customized electronic message will be sent, at least one previous action taken by the user to which the customized electronic message will be sent, the occurrence of an event, a customization recommendation for the user to which the customized electronic message will be sent and/or one or more current conditions that relate to the user to which the customized electronic message will be sent” step, as drafted, is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, but for the “one or more processors” language in claim 12, the claim encompasses a user manually utilizing known information to generate a customized message for a user. Claim 1 does not recite any additional elements performing this step, thus this claim also encompasses a user manually utilizing known information to generate a customized message for a user. Thus, these claims fall into the mental processes grouping of abstract ideas. The claims recite an abstract idea.
(Claims 1 and 12) The “causing the plurality of customized electronic messages to be sent to the plurality of users via a data network” and “causing a follow-up electronic message to be sent to at least some of the users identified in the querying step” steps, as drafted, is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind or with the use of pen and paper but for the recitation of generic computer components. For example, but for the “one or more processors” language in claim 12, the claims encompass a user manually causing a message to be sent to the user. Claim 1 does not recite any additional elements performing these steps, thus this claim also encompasses a user manually causing a message to be sent to the user. Thus, these claims fall into the mental processes grouping of abstract ideas. The claims recite an abstract idea.
(Claims 1 and 12) The “causing customization information about each of the plurality of customized electronic messages to be stored in an customization metadata database that stores information about customized electronic messages that have been sent to users, wherein each record in the customization metadata database is for a different customized electronic message that has been sent to a user, each record in the database including information identifying the user to whom the customized electronic message was sent and information about how the electronic message was customized for that user, and wherein the stored customization information includes, for each record in the customization metadata database, information identifying the user to whom the customized electronic message was sent and information about how the message was customized for that user” step, as drafted, is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, but for the “one or more processors” language in claim 12, the claim encompasses a user manually causing data to be stored. Claim 1 does not recite any additional elements performing this step, thus this claim also encompasses a user manually causing data to be stored. Thus, these claims fall into the mental processes grouping of abstract ideas. The claims recite an abstract idea.
(Claims 1 and 12) The “querying the customization metadata database, wherein the query includes information about a first specific way in which a message could be customized, and wherein the query is configured to identify those users who previously received a customized electronic message that was customized in the first specific way” step, as drafted, is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, but for the “one or more processors” language in claim 12, the claim encompasses a user manually querying data. Claim 1 does not recite any additional elements performing this step, thus this claim also encompasses a user manually querying data. Thus, these claims fall into the mental processes grouping of abstract ideas. The claims recite an abstract idea.
(Claim 12) The “creating follow up electronic messages for at least some of the users identified in the querying step, wherein each of the follow-up electronic messages are also customized for the user to which the follow-up electronic message will be sent, and wherein the way in which each of the follow-up electronic messages is customized is related to the first specific way in which a previous customized electronic message was customized for that user” step, as drafted, is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, but for the “one or more processors” language in claim 12, the claim encompasses a user manually creating a message based on known information. Thus, this claim falls into the mental processes grouping of abstract ideas. The claim recites an abstract idea.
In addition to the mental processes grouping of abstract ideas, claims 1-10 and 12-22 also fall into the certain methods of organizing human activity grouping of abstract ideas including advertising activities. The claims recite the concept of utilizing known information about a user to send them customized messages. This concept is an advertising activity, as supported by [0002], [0007], [0011], and [0025] of the specification. See “generating a plurality of customized electronic messages for a plurality of users, , wherein each customized electronic message is customized based on at least one of characteristics of the user to which the customized electronic message will be sent, at least one previous action taken by the user to which the customized electronic message will be sent, the occurrence of an event, a customization recommendation for the user to which the customized electronic message will be sent and/or one or more current conditions that relate to the user to which the customized electronic message will be sent; causing the plurality of customized electronic messages to be sent to the plurality of users via a data network; causing customization information about each of the plurality of customized electronic messages to be stored in an electronic customization metadata database that stores information about customized electronic messages that have been sent to users, wherein the stored customization information comprises information that can be used to identify those users who have received customized electronic messages that were customized in specific ways; querying the customization metadata database to identify those users who previously received a customized electronic message that was customized in a first specific way; and causing a follow-up electronic message to be sent to at least some of the users identified in the querying step” in claim 1, for example.
The dependent claims also recite limitations that fall into the mental processes and certain methods of organizing human activity groupings. For example, claims 2-4 and 13-15 recite gathering additional information about a user to generate a customized message. These limitations can be performed by a human and are also advertising activities. Claims 5 and 16 recite querying a database for information to perform the customization of a message. These limitations can be performed by a human and are also advertising activities. Claims 6-10 and 17-21 recite additional information that is stored. These limitations do not take the claims out of the mental processes or certain methods of organizing human activity groupings of abstract ideas. These limitations do not take the claims out of the mental processes or certain methods of organizing human activity groupings of abstract ideas. Thus, dependent claims 2-10, and 13-22 recite an abstract idea.
The mere nominal recitation of a generic computer components does not take the claim limitations out of the abstract idea groupings. Thus, the claims recite an abstract idea.
Step 2A-Prong Two
This judicial exception is not integrated into a practical application. The claims recite the additional element of “creating an electronic customization metadata database configured to store information about customized electronic messages that have been sent to users, wherein each record in the customization metadata database is for a different customized message that has been sent to a user, each record in the database including information identifying the user to whom the customized message was sent and information about how the message was customized for that user” and “causing customization information about each of the plurality of customized electronic messages to be stored in an customization metadata database that stores information about customized electronic messages that have been sent to users, wherein each record in the customization metadata database is for a different customized electronic message that has been sent to a user, each record in the database including information identifying the user to whom the customized electronic message was sent and information about how the electronic message was customized for that user, and wherein the stored customization information includes, for each record in the customization metadata database, information identifying the user to whom the customized electronic message was sent and information about how the message was customized for that user” (claims 1-10 and 22) or a system comprising a memory, one or more processors, and a database (claims 12-21) and includes no more than mere instructions to apply the exception using these generic computer components. The database or system do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed previously with respect to Step 2A-Prong Two, the additional element in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. See MPEP 2106.05(f). The claims do not provide an inventive concept (significantly more than the abstract idea). The claims are ineligible.
Conclusion
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/MEREDITH A LONG/Primary Examiner, Art Unit 3622