DETAILED ACTION
Status of Claims
This action is in reply to the response received on 02 July 2026.
Claims 1, 8-9, 11, and 16 are amended.
Claims 6 and 14 are canceled.
Claims 21-22 are new and are added.
Claims 1-5, 7-13, and 15-22 have been examined and are pending.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02 July 2026 has been entered.
Allowable Subject Matter
As indicated in the Office Action mailed on 03 April 2026, the claims recite allowable subject matter for reasons given in that Office Action, and would be allowable if the claims were re-written or amended to overcome the 112(b) and 101 rejections in the current Office Action.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-5, 7-8, and 16-21 are 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.
The term “some” in the limitation of “taking at least some previously received item-level reports into account” in claims 1 and 16 is a relative term which renders the claim indefinite. The term “some” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite number of previously received item-level reports, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
For examination purposes, the Examiner will interpret the claim limitations in claims 1 and 16 to be recited as follows:
wherein the machine-learning model comprises at least one of a Long Short Term Memory (LSTM) model configured to generate the guidance from the data obtained by the user data process and the subset of the individual item data, taking at least one previously received item-level reports into account, or a Sequence to Sequence (Seq2Seq) model configured to generate a sequence of locations of the plurality of recommended entities
Claims 2-5, 7-8, & 21, and 17-20, depending from claims 1 and 16, inherit the deficiencies, and therefore are rejected for the same reasoning. Appropriate correction is required.
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 1-5, 7-13, and 15-22 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).
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 1-5, 7-8, & 21 are directed to a method, claims 9-13, 15, & 22 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, wherein the individual item data comprises at least one of an item identifier, a cost, an entity identifier, a time, a date, or a location;
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;
inputting, 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 to determine, for the unique user, a plurality of recommended entities that minimize at least one of a travel distance or a cost for the unique user to obtain a plurality of items;
generating, the guidance for the unique user, wherein the guidance comprises the plurality of recommended entities;
wherein to generate the guidance from the data obtained by the user data process and the subset of the individual item data, taking at least some previously received item-level reports into account, or configured to generate a sequence of location of the plurality of recommended entities; 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 wherein the individual item data comprises at least one of an item identifier, a cost, an entity identifier, a time, a date, or a location, performing a user data process for a unique user that includes receiving an item-level report associated with the unique user, 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, inputting data obtained by the user data process and the subset of the individual item data to determine, for the unique user, a plurality of recommended entities that minimize at least one of a travel distance or a cost for the unique user to obtain a plurality of items, 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 determining individual item data of each of the one or more item-level reports and 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, training data, the machine-learning model, the machine-learning model comprises at least one of a Long Short Term Memory (LSTM) model, a Sequence to Sequence (Seq2Seq) 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, the machine-learning model having been trained, the LSTM, and (Seq2Seq) model, the recitations are results based in nature and do not include details as to how the machine learning models are 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, training data, the machine-learning model, the machine-learning model comprises at least one of a Long Short Term Memory (LSTM) model, a Sequence to Sequence (Seq2Seq) 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, the trigger condition module, and back-propagating the error through the machine-learning model, and claim 16 also recites back-propagating the error through the machine learning model. The Applicant’s specification does not provide any discussion or description of the claimed additional elements in claims 9 and 16, as being anything other than generic elements. Thus, the claimed additional elements of claims 9 and 16 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 claims 9 and 16 do not integrate the judicial exception into a practical application of the abstract idea. Additionally, the additional elements of claims 9 and 16, 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 1-5, 7-8, & 21, 10-13, 15, & 22, 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 1-5, 7-8, & 21, 10-13, 15, & 22, and 17-20 merely act to provide further limitations of the abstract idea and are ineligible subject matter.
It is noted that dependent claims include the additional elements of retrain the machine-learning model (claims 2, 10, & 17), and a data packet (claim 11). 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 and 17 are directed towards an abstract idea. Additionally, the additional elements of claims 2, 10-11 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 3-5, 7-8, & 21, 12-13, 15, & 22, 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 2-5, 7-8, 12-13, 15, and 17-22 are ineligible.
Response to Arguments
With respect to the rejections made under 35 USC § 101, the Applicant’s arguments filed on 02 July 2026, have been fully considered but are not considered persuasive.
In response to the Applicant’s arguments found on pages 11-13 of the remarks stating “The claimed features of the amended independent claims, taken together, constitute a meaningful application of any alleged abstract idea and/or integrate any alleged abstract idea into a practical application,” and “demonstrating an improvement in the functioning of a computer or an improvement to other technology or technical field,” and “Each of the independent claims recites additional features that demonstrate integration into a practical application,” the Examiner respectfully disagrees. Under Step 2A, Prong Two of the eligibility analysis, the amended independent claims do not integrate the abstract idea into a practical application. The claims as amended, now recite 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, training data, the machine-learning model, the machine-learning model comprises at least one of a Long Short Term Memory (LSTM) model, a Sequence to Sequence (Seq2Seq) model, and at least one computing device. The additional elements are still recited at a high-level and are still being used to apply the abstract idea with generically recited computing components. Although the claims now recite a LSTM and the Seq2Seq model, these features in combination with other claimed features within the claims, are still recited at high-level generalities. The models that are recited in the claims are not giving technical details as to how the models are actually functioning beyond known functions and in combination, would not be sufficient to integrate the abstract idea into a practical application. Further, the claims do not reflect an improvement to the technology nor to the technical field. 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 the additional elements recited in representative claim 1, 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 that results in an optimized travel distance and cost, e.g. a commercial process. Therefore, the Examiner maintains the claims do not integrate the abstract idea into a practical application.
In response to the Applicant’s arguments found on pages 13-15 of the remarks regarding claims 1-5, 7, and 8, stating “these architectures are adapted for processing sequences of inputs and generating sequences of outputs. When combined with the specific structured data inputs recited in the claim (e.g., item identifiers, costs, entity identifiers, locations), these architectures serve as the technical mechanism by which the system solves the computation optimization problem described” and “producing a specific technical output: a plurality of recommended entities that minimize travel distance or cost. This goes beyond merely applying a generic model to generic data,” and further “amended independent claim 1 demonstrates an integration of a meaningful and practical application into the subject matter of the claims and reflects a technological improvement to the functioning of machine-learning-based computation optimization, enabling determination of recommended entities that minimize travel distance or cost across a plurality of items,” the Examiner respectfully disagrees. As stated above, under Step 2A, Prong Two of the eligibility analysis, the claims do not integrate the abstract idea into a practical application. The claimed additional elements that are beyond the abstract idea are still recited in a high-level or generic manner and are still being used to apply the abstract idea with a generic computer and computing components. In claim 1 specifically, the additional elements are described in a generic manner. The combination of these features and the additional elements do not reflect any type of technological improvement or technological solution. Rather the claims are directed to the abstract idea of determining user-specific guidance, providing recommended entities to a user based on a travel distance and cost, which is a commercial process. This is also reflected in the specification, for example in paragraph [0028] describing solving issues directed to determining a selection of entities from a large pool of entities at various locations, solving the “travelling salesmen problem” and paragraph [0042] of the specification describing issues related to recommending entities to minimize travel distance and cost. Although the claims do recite technical features to carry out the claim steps, merely reciting the generic additional elements, such as generic computer components (e.g., the machine-learning model), do not automatically overcome an eligibility rejection (MPEP 2106.05(b)). Therefore, the Examiner maintains that the claims of 1-5, 7 and 8 are not eligible under the 101 eligibility analysis.
In response to the Applicant’s arguments found on pages 14-15 of the remarks regarding claims 9-13 and 15, stating “the CNN serves as a technical mechanism for obtaining the specific inputs, and the backpropagation training servers as the technical mechanism by which the model learns to map those inputs to the specific output: a plurality of recommended entities that minimize travel distance or cost. Again, this goes beyond merely applying a generic model to generic data” and “independent claim 9 demonstrates an integration of a meaningful and practical application into the subject matter of the claims and reflects a technological improvement to the functioning of machine-learning-based computation optimization,” the Examine respectfully disagrees. As similarly stated above, under Step 2A, Prong Two of the eligibility analysis, claims 9-13 and 15 do not integrate the abstract idea into a practical application and do not provide a technological improvement to the machine-learning model. Although the claims also recite the feature of CNN in combination with other additional elements, the additional elements are still recited at a high-level and are still being used to apply the abstract idea with generically recited computing components and computer. Further, the claimed additional elements in combination, do not reflect any type of technological improvement or technological solution to a technical problem. The claims are still directed to the abstract idea, and although improving the abstract idea of determining user-specific guidance, the claims are not directed to improving the technology itself, such as the functioning of the machine-learning models. Therefore, the Examiner maintains that claims 9-13 and 15 are not eligible under the 101 eligibility analysis.
In response to the Applicant’s arguments found on pages 15-16 of the remarks regarding claims 16-20, stating “amended independent claim 16 recites features (a) similar to amended independent claim 1 as well as features (c) similar to amended independent claim 9,” and “claims 1 and 9 are patent-eligible” and “because the features discussed above (e.g., features (a) and (c)) contribute to amended independent claims 1 and 9 being integrated into a practical applications and improving technology,” the Examiner respectfully disagrees. Under Step 2A, Prong Two of the analysis, the claims 16-20 are also not eligible. Even when considering that the claims recite similar features to those recited in claims 1 and 9, the claims do not integrate the abstract idea into a practical application and do not provide an improvement to the technology itself. As stated in the rejection above, the claimed additional elements of claims 9 and 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. Therefore, the Examiner maintains that the claims do not integrate the abstract idea into practical application because they do not provide an inventive concept and do not reflect any type of improvement to the technology nor to the technical field.
In response to the Applicant’s arguments found on pages 16-17 of the remarks regarding new claims 21 and 22 stating “at least by virtue of their dependence, new claims 21 and 22 are likewise patent-eligible,” and “feature recites that the guidance output by the model includes not only the plurality of recommended entities, but also a determined order in which to visit them, directly addressing the route optimization problem,” and “that is ‘reminiscent of the travelling salesman problem’” and “for at least this additional reason, new claims 21 and 22 are patent-eligible,” the Examiner respectfully disagrees. As stated above, the independent claims 1 and 9 are not eligible under the 101 analysis. Claims 21 and 22 depend from claims 1 and 9 respectively, inheriting the deficiencies as noted and are rejected for the same reasoning as claims 1 and 9. The dependent claims are considered under all of the steps of the analysis, and are also not found to be eligible. Under Step 2A, Prong One of the analysis, the claims are both directed to the abstract idea. Under Step 2A, Prong Two of the analysis, the claims do not integrate the abstract idea into a practical application, as the claims are merely further limiting the abstract idea. It is also noted that the added claims do not recite any further additional elements to consider in the analysis, as they do not provide an inventive concept and do not reflect any type of technological improvements under the analysis. Any improvements present would be considered an improvement to the abstract idea itself. Under Step 2B of the analysis, the new claims do not provide meaningful limitations that would transform the abstract idea into a patent eligible application such that the claims amount to significantly more than the abstract idea itself. Therefore, the Examiner maintains that the newly added claims are also ineligible under the 101 eligibility analysis, and thus, maintains the 101 rejection.
Conclusion
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/ASHLEY D PRESTON/Primary Examiner, Art Unit 3688
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