DETAILED ACTION
Status of Claims
This action is in reply to the response received on 23 December 2025.
Claims 1, 8-9, 11, and 16 have been amended.
Claims 1-20 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 .
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 (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 1-8 are directed to a method, claims 9-15 are directed to a system, and claims 16-20 are also directed to a method.
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 determining user-specific guidance. Specifically, representative claim 1 recites the abstract idea of:
for one or more third party users:
receiving via one or more third party users one or more item-level reports; and
determining individual item data of each of the one or more item-level reports;
in response to determining that a trigger condition has been satisfied, performing a user data process for a unique user, including:
receiving an item-level report associated with the unique user, or
identifying prior item-level data from an account associated with the unique user;
identifying a subset of one or more item-level reports of the one or more third-party users based on a threshold degree of overlap between (i) the individual item data of the one or more item-level reports and (ii) the data obtained by the user data process for the unique user;
providing, data obtained by the user data process and the subset of the individual item data, using (i) training item-level data, (ii) training account data, and (iii) training location data guidance for the unique user;
outputting, the guidance for the unique user; and
transmitting the guidance for the unique user associated with the unique user.
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 determining user-specific guidance, 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 claim 1 is a certain method of organizing human activity because the steps are directed to managing personal behavior, or interactions between people, as stated in MPEP 2106.04(c). In this case, the abstract idea relates to sale activities or behaviors, since the claims specifically recite receiving for one or more third-party users one or more item-level reports from one or more users, determining individual item data of each of the one or more item-level reports, in response to determining that a trigger condition has been satisfied, performing a user data process for a unique user that includes receiving an item-level report associated with the unique user, or identifying prior item-level data from an account associated with the unique user, identifying a subset of one or more item-level reports of the one or more third-party users based on a threshold degree of overlap between the individual item data of the one or more item-level reports, and the data obtained by the user data process for the unique user, providing data obtained by the user data process and the subset of the individual item data to identify guidance for the unique user, where the output of guidance to the unique user and then transmitting the guidance for the unique user to the unique user, thereby making these a sales activities or behavior.
Further, the Examiner additionally notes that that the steps identifying prior item-level data from an account associated with the unique user, would fall into the enumerated grouping of mental processes. A mental process is defined as and includes “concepts performed in the human mind (including an observation, evaluation, judgement, and opinion)” (see MPEP 2106.04(a)(2)(III)). In this case, the step of determining individual item data of the item-level reports, would be considered a concepts performed in the human mind, such as an evaluation and judgement, and the step of identifying prior-item level data from an account associated with the unique user, would be a concept performed in the mind, such as an observation. Thus, representative claim 1 recites an abstract idea that also falls into the grouping of mental processes.
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: a computer, machine-learning, via one or more third-party user devices, via a server-side system, the server-side system, via the server-side system, a machine-learning model of the server-side system, the machine-learning model having been trained, the machine-learning model, and at least one computing device.
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., determining user-specific guidance) being applied on a general-purpose computer using general purpose computer technology. MPEP 2106.05(f). While the claims recite a machine-learning model of the server side system and the machine-learning model having been trained, the recitations are results based in nature and do not include details as to how the machine learning is 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 computer, machine-learning, via one or more third-party user devices, via a server-side system, the server-side system, via the server-side system, a machine-learning model of the server-side system, the machine-learning model having been trained, the machine-learning model, and at least one computing device, 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 9 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 9 includes the additional elements of an optical character recognition (OCR) system, a trigger condition module, at least one user device, a memory storing instructions and a processor operatively connected to the memory and configured to execute the instructions to perform operations, and the trigger condition module. The Applicant’s specification does not provide any discussion or description of the claimed additional elements in claim 9, as being anything other than generic elements. Thus, the claimed additional elements of claim 9 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 claim 9 do not integrate the judicial exception into a practical application of the abstract idea. Additionally, the additional elements of claim 9, 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 9 and 16 are ineligible.
Dependent claims 2-8, 10-15, and 17-20, depending from claims 1, 9, and 16 respectively, do not aid in the eligibility of the independent claims 1, 9, and 16. The claims of 2-8, 10-15, and 17-20 merely act to provide further limitations of the abstract idea and are ineligible subject matter.
It is noted that dependent claims includes the additional elements of retrain the machine-learning model (claims 2, 10, & 17), a data packet (claim 11), and performing optical character recognition (claim 14). Applicant’s specification does not provide any discussion or description of the claimed additional elements, 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 2, 10-11, 14, and 17 are directed towards an abstract idea. Additionally, the additional elements of claims 2, 10-11, 14, and 17, 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 3-9, 12-13, 15, and 18-20 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 2-8, 10-15, and 17-20 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:
identifying, via the server-side system, a subset of the one or more item-level reports of the one or more third-party users based on a threshold degree of overlap between (i) the individual item data of the one or more item-level reports and (ii) the data obtained by the user data process for the unique user
The most apposite prior art of record includes, Ushanov, D., et al. (PGP No. US 2022/0083614 A1) in view of Boucher, T., et al. (PGP No. US 2024/0386315 A1). and Long, Y., et al. (PGP No. US 2025/0148278 A1), to teach a method for determining user-specific guidance.
The reference of Ushanov describes a method for providing and determining user specific guidance, where the method includes utilizing a trained machine learning algorithm to generate predictions of collaborative embeddings (Ushanov, see: Abstract). The method of Ushanov includes gathering and using data of users for the recommendation service, storing user-specific profile data, where the data is associated with respective users that have selected specific types of digital content in the past, as well as interactions with digital content (Ushanov, see: paragraphs [0148] and [0150]). Ushanov further describes that the digital content that is interacted with can also give insight to the item features that are associated with the digital content, where that data is then stored with the respective item information (Ushanov, see: paragraph [0140] and [0150]). Further, the method includes tracking the different user-item interactions that have occurred between the user and the digital content item, where it is determined if the user purchased, ordered, or downloaded the digital content item, or if the user had liked or disliked the item (Ushanov, see: paragraphs [0150]-[0152], [0157]-[0158]), creating a report or profile for each user (Ushanov, paragraphs [0159]-[0160]). The server of Ushanov uses the interaction data to input into the machine learning model, generating an item embedding and a user embedding, outputting the predicted collaborative embedding for the in-use item based on the interaction data provided (Ushanov, see: paragraphs [0148], [0159]-[0160], [0170]). The machine learning model of Ushanov is then capable of outputting recommendations of ranked lists of items that are more relevant to the user, transmitting the recommendations to the user (Ushanov, paragraphs [0184]-[0185]). Although Ushanov describes these features of providing recommendations that are relevant to the user, Ushanov does not describe identifying, via the server-side system, a subset of the one or more item-level reports of the one or more third-party users based on a threshold degree of overlap between (i) the individual item data of the one or more item-level reports and (ii) the data obtained by the user data process for the unique user.
The reference of Boucher is relied upon as the reference describes personalized customer recommendations, based upon customer interaction data, or certain conditions that were met for the customer, such as sending an e-mail, updating a customer profile, etc. (Boucher, see: paragraph [0018]). The reference of Boucher trains a model for a simulation and prediction, where training data has been obtained from the customer interactions (Boucher, paragraph [0086]). Although Boucher describes certain conditions that are met in order to train the model, Boucher does not describe the allowable features indicated above.
Next, the reference of Long describes a method for rule-based data models that are used with optical character recognition (OCR) techniques, where the model is actually a rule-based OCR model that is configured based on sequences of events (Long, see: pargraph [0027]). Although Long describes optical character recognition rule-based models, the reference of not explain or describe the allowable features of identifying, via the server-side system, a subset of the one or more item-level reports of the one or more third-party users based on a threshold degree of overlap between (i) the individual item data of the one or more item-level reports and (ii) the data obtained by the user data process for the unique user.
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
As recited in the Office Action mailed on 25 September 2025, the Examiner notes that the non-patent literature (NPL) document, titled, Predict User Intent with Machine Learning (AI, Recommender Systems), published in CETDIGIT and authored by Paul Nilsen (2018), documented on PTO-892 form as reference U in that Office Action, and hereinafter referred to as ‘Predict’, describes the benefits of predicting a user intent to provide recommendations that are more relevant to that user, and utilizes the company’s websites, past purchase transactions, or other information to generate the recommendations. Although the reference Predict describes such features, the reference does not disclose or teach the allowable features identifying, via the server-side system, a subset of the one or more item-level reports of the one or more third-party users based on a threshold degree of overlap between (i) the individual item data of the one or more item-level reports and (ii) the data obtained by the user data process for the unique user that are stated above, and does not remedy the deficiencies of the noted prior art.
Response to Arguments
With respect to the rejections made under 35 USC § 101, the Applicant’s arguments filed on 23 December 2025, have been fully considered but are not considered persuasive.
In response to the Applicant’s arguments found on page 10 of the remarks stating that “Applicant respectfully submits that amended claim 1 is directed to eligible subject matter” and “These are non-human functions that cannot be reasonably considered managing personal behavior or interactions between people, and do more than just link the claim to a technical environment,” and further “such features are also technical functions that provide more than mere instructions to ‘apply it’ and therefore cannot be considered an abstract idea,” the Examiner respectfully agrees in part. In light of the amendments to the claims, the claims are not considered to be managing personal behavior or interactions between people. However, the abstract idea in this case still falls into the enumerated sub-grouping of a certain method of organizing human activity because the claims are related to sales activities or behaviors. The claims specifically recite the steps of receiving for one or more third-party users one or more item-level reports from one or more users, determining individual item data of each of the one or more item-level reports, in response to determining that a trigger condition has been satisfied, performing a user data process for a unique user that includes receiving an item-level report associated with the unique user, or identifying prior item-level data from an account associated with the unique user, identifying a subset of one or more item-level reports of the one or more third-party users based on a threshold degree of overlap between the individual item data of the one or more item-level reports, and the data obtained by the user data process for the unique user, providing data obtained by the user data process and the subset of the individual item data to identify guidance for the unique user, where the output of guidance to the unique user and then transmitting the guidance for the unique user to the unique user, and as such, the claims are related to the sales activities and behaviors. The amended claims do recite additional elements (analyzed in Step 2A, Prong two of the analysis) that are considered to be beyond the abstract idea, however, the amended claim limitations are still directed to the abstract idea of determining user-specific guidance.
In response to the Applicant’s arguments found on page 11 of the remarks stating “amended claim 1 is integrated into a practical application,” and “features result in improvement to the technology for large data pool analysis,” the Examiner respectfully disagrees. Under Step 2A, Prong Two of the eligibility analysis, the amended claims are not sufficient to integrate the abstract idea into a practical application. The amended representative claim 1 now recites the additional elements of a computer, machine-learning, via one or more third-party user devices, via a server-side system, the server-side system, via the server-side system, a machine-learning model of the server-side system, the machine-learning model having been trained, the machine-learning model, and at least one computing device, which when considered individually and in combination, are still recited in a generic manner. The claims are not describing the additional elements in a manner that would integrate the abstract idea into a practical application because they are still being used to apply the abstract idea with generically recited computing components and a generic computer. Further, the claims do not recite or reflect an improvement to the technology itself and in this case, the claims are reciting an improvement to the abstract idea. 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 computer, machine-learning, via one or more third-party user devices, via a server-side system, the server-side system, via the server-side system, a machine-learning model of the server-side system, the machine-learning model having been trained, the machine-learning model, and at least one computing device, 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 determining user-specific guidance that is based on item-level reports and individual item data. The claimed process, while arguably resulting in improvements for user-specific guidance, is not providing any improvement to another technology or technical field 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 user specific guidance, e.g. commercial process. As such, the claims do not integrate the abstract idea into a practical application and do not recite specific technological improvements, and thus, the Examiner maintains the 101 rejection.
With respect to the rejections made under 35 USC § 103, the Applicant’s arguments filed on 23 December 2025 have been fully considered and are persuasive. In light of the Applicant’s amendments, the claims now recite allowable subject matter, 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
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