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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 20 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 20 recites, in its final line, wherein the first plurality of metrics includes the non-aggregated data metric. However, two non-aggregated data metrics have been previously recited – one included in the first plurality of metrics and a second included in the second plurality of metrics. It is therefore indefinite as to which non-aggregated data metric this recitation of the limitation refers.
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 19 and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 19 recites a non-transitory processor-readable medium, thus an article of manufacture, one of the four statutory categories of patentable subject matter. However, Claim 19 recites the limitations to generate a first plurality of metrics based on a data stream; to generate (1) intra-model output based on the input data and (2) a model output dataset based on an input data; to generate a second plurality of metrics based on the intra-model output; and to generate a third plurality of metrics based on the model output dataset, and all of which are performable by a human in the human mind, and thus fall into the mental process grouping of abstract ideas. Claim 19 thus recites an abstract idea.
Claim 19 does not include any additional elements which integrate the abstract idea into a practical application. The additional elements recited in Claim 19 consist of a non-transitory processor-readable medium and a first and a second machine learning models, which are generic computer components used to implement the abstract idea and thus do not integrate the abstract idea into a practical application (see MPEP 2106.04(d) and 2106.05(f), where the processor and model do no more than generally link the abstract idea to a particular technological environment) and to cause transmission of a signal which is insignificant extra-solution activity of receiving data and display (see MPEP 2106.04(d) and 2106.05(g)), which does not at all rely upon the abstract idea, and thus does not integrate the abstract idea into a practical application. Therefore, Claim 19 is directed to an abstract idea.
The additional elements, taken alone and in combination, do not provide an inventive concept nor constitute significantly more than the abstract idea itself. Mere instructions to invoke computers as a tool to perform an existing process (i.e. causing a machine learning model or using a processor) are identified in MPEP 2106.05(f) as not being significantly more than the abstract idea itself. Further, to cause transmission of a signal is recognized as well-understood, routine, and conventional by MPEP 2106.05(d) (“receiving or transmitting data over a network”). Therefore, the additional elements, taken both alone and in combination, do not provide significantly more than the abstract idea itself.
Claim 20, dependent upon Claim 19, includes embodiments which only recites the additional elements regarding processes for generating the metrics, which merely states the particular technological environment in which the abstract idea is performed, which, by MPEP 2106.05(h), cannot integrate the abstract idea into a practical application nor provide significantly more than the abstract idea itself.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Gubin, US PG Pub 2013/0031034, in view of Ribeiro, “ ‘Why Should I Trust You?’ Explaining the Predictions of Any Classifier” (both cited by the applicant in the IDS dated 4/5/2024).
Regarding Claim 19, Gubin teaches a non-transitory, processor-readable medium storing instructions that when executed by a processor, cause the processor to: (Gubin, [0079], “a tangible computer-readable medium storage … storing electronic instructions”) … cause a [second] machine learning (ML) model to generate … a model output dataset based on … input data (Gubin, Fig. 5 “Ranked stores for presentation” based on input data of “viewer_ID” 510 & “Set of story_IDs” 520) … generating a [third] plurality of metrics based on the model output dataset (Gubin, [0075], “the news feed access analyzer determines an expected value of rate of access of news feed stories by a set of users. If the new feed access analyzer determines that the difference between the measured value of rate of access of news feed stories by the set of users and the is more than a threshold” where “access rate” and “expected access rate” are metrics based on the model output dataset of “Ranked Stories for presentation”) cause transmission of a signal to trigger an automatic remediation action including at least one of an automatic retraining of … the [second] ML model (Gubin, [0075], “If the news feed access analyzer determines that the difference … is more than a threshold value, the news feed access analyzer indicates to the machine learning module to retrain the news feed ranking model”). Gubin further teaches repeating their process (see Gubin, Fig. 7, where after the model is retrained, element 720 will again check changes in access patterns) – and a retrained model is a different machine learning model. Therefore, Gubin also teaches to generate a first plurality of metrics based on a data stream generated by a first machine learning model (i.e. performing the same steps as on the second ML model identified above, but on a previous or subsequently retrained version of the news feed ranking model).
Gubin therefore only appears to only teach two of the three metrics recited in Claim 19, but Ribeiro teaches to cause [the] second machine learning model to generate intra-model output based on an input data and to generate a second plurality of metrics based on the intra-model output (Ribeiro, pg. 4, Algorithm 1, the classifier
f
operates on other samples
z
i
based on the input data
x
to produce intra-model output in order to explain the classifiers decision on the input data
x
, that is, to produce a second plurality of metrics
w
via the K-Lasso algorithm). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the model-explainability algorithm of Ribeiro into the invention of Gubin. The motivation to do so is that “Understanding the reasons behind predictions is, however, quite important” (Ribeiro, pg. 1, Abstract).
Regarding Claim 20, the Gubin/Ribeiro combination of Claim 19 teaches the non-transitory, processor-readable medium of Claim 19 (and thus the rejection of Claim 19 is incorporated). The combination has already been shown to teach wherein … the first plurality of metrics includes a joint metric having at least one of … a data drift (Gubin, [0075], “the news feed access analyzer determines an expected value of rate of access of news feed stories by a set of users. If the new feed access analyzer determines that the difference between the measured value of rate of access of news feed stories by the set of users and the expected value is more than a threshold” denotes a data drift, also see Fig. 7, element 720, “Identify changes in access patterns of news feed stories”).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-18, 11, and 14, respectively, of U.S. Patent No. 11,922,280. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 1-10 recite a non-transitory processor readable medium storing instructions to perform a method which is strictly broader than the respective methods of Claims 1-10, respectively, of the reference patent. Encoding instructions to perform a processor-performed method on a computer-readable medium is an obvious modification.
Claims 11-18 recite a system that is strictly broader than the system recited by Claims 11-18, respectively, of the reference patent. Thus, Claims 11-18 of the reference patent anticipate instant Claims 11-18, respectively.
Claims 19 and 20 recite a non-transitory processor readable medium storing instructions to perform a method which is strictly broader than the respective methods of Claims 1 and 4, respectively, of the reference patent. Encoding instructions to perform a processor-performed method on a computer-readable medium is an obvious modification.
Conclusion
Claims 1-18 have been searched, but no combination of prior art which renders the independent claims obvious has been uncovered.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN M SMITH whose telephone number is (469)295-9104. The examiner can normally be reached Monday - Friday, 8:00am - 4pm Pacific.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kakali Chaki can be reached at (571) 272-3719. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN M SMITH/Primary Examiner, Art Unit 2122
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