DETAILED ACTION
This FINAL office action is in response to Applicant’s amendment filed December 18, 2025. Applicant’s December 18th amendment amended claims 1, 6, 12, 17, and 20. Claims 1-20 are pending. Claims 1, 12 and 20 are the independent claims.
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 .
Response to Amendment
The objection to the Title in the previous office action is maintained.
The 35 U.S.C. 101 rejection of claims 1-20 in the previous office action is maintained.
The 35 U.S.C. 102 rejection of claims 1, 2, 5, 12-14, 16 and 20 is withdrawn in response to Applicant's amendments to the claims.
Response to Arguments
Applicant’s arguments, see Page 12, filed December 18, 2025, with respect to Huu have been fully considered and are persuasive. The 35 U.S.C. 102 rejection of claims 1, 2, 5, 12-14, 16 and 20 has been withdrawn.
Applicant's arguments filed December 18, 2025 have been fully considered but they are not persuasive. Specifically, Applicant argues that the claims are patent eligible under 35 U.S.C. 101 as the claims are not directed to an abstract idea (e.g. building/using specific trained predictive models to improve the organization of user data for use in downstream applications - i.e. automatically communicating with selected users; improve functionality of automated user data organization, provide technical solution for user profiling and automatic message transmission; Remarks: Paragraphs 1-2, Page 11); the claims integrate abstract idea into a practical application (e.g. improve functioning of a computer by using trained prediction models to automatically analyze user data for improving automated user data organization enabling automatic message transmission; Remarks: Last Three Paragraphs, Page 11); and the claims recite significantly more than an abstract idea (Remarks: Last Paragraph, Page 11).
In response to Applicant’s argument that the claims are patent eligible under 35 U.S.C. 101 as the claims are not directed to an abstract idea, the examiner respectfully disagrees.
The claims remain directed to predictive analytics and/or marketing audience selection, both well-known economic practices. Specifically, the claims are directed to enabling a user to select an integration endpoint (e.g. client machines; Figure 1, Element 108) associated with an audience service (e.g. client applications; Figure 1, Element 110) via an interactive user interface (i.e. mere data input); transmitting predictive trait values to the integration endpoint (i.e. mere data output); and automatically selecting users in a test set based on predictive trait values (generating an audience) (the audience configured to receive one or more transmitted messages, no messages are actually generated or sent to the audience).
While the claims may represent an improvement to the fundamental economic process of audience selection (automatically selecting users in a test set based on predictive trait values) by enabling a huma user to select an integration endpoint associated with an audience service, the claims in no way either claimed or disclosed represent a practical application (e.g. provide a technical solution to a technical problem; improve any of the underlying technology; improve another technology or technical field).
Additionally, the claims are directed to a mental processing practically capable of being performed in the human mind via observation, evaluation, judgement and opinion. Representative claim 1: The step of detecting, at a predictive trait user interface (UI), a selection of a predictive trait of a plurality of predictive traits and a selection of a configuration setting for the predictive trait may be performed in the human mind using observation of data wherein the trait user interface can be visualized/implemented via pen and paper (e.g. a list of predictive user traits; also insignificant pre-solution activity, data input).The step of retrieve user data for a plurality of users (onboarding flow) may be performed in the human mind using observation of data. The step of a training workflow configured to train a trained predictive trait model may be performed by human mind by judgement and opinion. The step of run the trained predictive trait model on a test set comprising one or more users, to compute predictive trait values for the one or more users in the test set may be performed in the human mind using evaluation and judgement of data. This step is also directed to a mathematical operation/concept. The step of detecting, at an interactive UI element displayed in the predictive trait UI, a user selection of an integration endpoint associated with an audience service may be performed by observation of data (also insignificant pre-solution activity, data input). The step of transmitting the predictive trait values to the integration endpoint may be performed by observation of data and is also directed to insignificant post solution activity (i.e. data output). The step of automatically selecting users in the test set based on the predictive trait values may be performed in the human mind via judgement and opinion. Examiner notes that no messages are actually generated or transmitted or received by the selected – that the generated audience is configured to receive transmitted messages is non-functional descriptive material.
Other than the recitation of a computer, processor, memory, user interface, orchestrator (software per se) and computer readable medium storing instructions nothing in the claimed steps precludes the step from practically being performed in the mind. The claims do not recite additional elements that are sufficient to amount to significantly more than the abstract idea. The limitations directed to a hardware device including a computer, processor, memory, user interface, orchestrator (software per se) and computer readable medium storing instructions are each recited at a high level of generality and amount to no more than mere instructions to apply the exception using a generic computer. See MPEP 2106.05(f). Further the mere nominal recitation of a generic computer (used for its well-understood, conventional and routine purpose) does not take the claim limitation out of the mental processes grouping.
The claims use “conventional or generic technology in a nascent but well-known environment” to implement the abstract idea of “visualizing flow direction is a distribution network” (Claim 20, preamble). In re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016). The recited technology (processor, memory, etc.), are used as a “conduit for the abstract idea,” not to provide a technological solution to a specific technological problem. Id.; see also id. at 611–13 (holding claims reciting the use of a cellular telephone and a network server to classify an image and store the image based on its classification to be abstract because the patent did “not describe a new telephone, a new server, or a new physical combination of the two” and did not address “how to combine a camera with a cellular telephone, how to transmit images via a cellular network, or even how to append classification information to that data”).
Nothing in Applicant’s disclosures suggests that the Applicant intended to accomplish any of the steps recited in the claims through anything other than well understood technology used in a routine and conventional manner. Therefore, the claims lack an inventive concept. See also, e.g., Elec. Power Grp., 830 F.3d at 1355 (holding claims lacked inventive concept where “[n]othing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information”); Content Extraction, 776 F.3d at 1348 (holding claims lacked an inventive concept where the claims recited the use of “existing scanning and processing technology”).
Reevaluating the steps of detecting a selection, detecting a user selection and transmitting the predictive trait values which are considered insignificant extra solution activity, these limitations are mere data gathering and output recited at a high level of generality and amount to nothing more than receiving data which are both well-understood, routine and conventional activities. The limitations remain insignificant extra solution activity even upon reconsideration. Even when considered in combination the additional elements represent mere instructions to apply an exception and insignificant extra solution activity which cannot provide an inventive concept.
Accordingly, the claims are not patent eligible under 35 U.S.C. 101.
In response to Applicant’s argument that the claims are patent eligible under 35 U.S.C. 101 as the claims integrate the abstract idea into a practical application, the examiner respectfully disagrees.
The claims are directed to a well-known business practice – audience selection – in this case automatically selecting an audience to receive one or more transmitted messages. While the claims may represent an improvement to the business process of predictive analytics or audience selection they in no way either claimed or disclosed represent a practical application.
Under the see MPEP § 2106.05, the claims are evaluated to determine if additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure ("MPEP") §§ 2106.05(a)-(c), (e)- (h)). A claim that integrates a judicial exception into a practical application applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.
For example, limitations that are indicative of "integration into a practical application" include:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP § 2106.05(a);
Applying the judicial exception with, or by use of, a particular machine - see MPEP § 2106.05(b);
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP § 2106.05(c); and
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of "integration into a practical application" include:
Adding the words "apply it" (or an equivalent) with the judicial exception, or merely include instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP § 2106.05(±);
Adding insignificant extra-solution activity to the judicial exception- see MPEP § 2106.05(g); and
Generally linking the use of the judicial exception to a particular technological environment or field of use - see MPEP 2106.05(h).
In view of the MPEP § 2106.05, one must consider whether there are additional elements set forth in the claims that integrate the judicial exception into a practical application. The identified additional non-abstract elements recited in the independent claims are the generic computer, processor, memory, user interface, orchestrator (software per se) and computer readable medium storing instructions . These generic computer hardware merely performs generic computer functions of receiving, processing and transmitting data and represent a purely conventional implementation of applicant’s audience selection in the general field of business analytics and do not represent significantly more than the abstract idea. See at least MPEP § 2106.05(a) ("Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field").
These recited additional elements are merely generic computer components. The claims do present any other issues as set forth in the MPEP § 2106.05 regarding a determination of whether the additional generic elements integrate the judicial exception into a practical application. Rather, the claims merely use instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea.
The claims do not recite improvements to the functioning of a computer or any other technology field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition, the claims to do apply the abstract idea with a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (e.g. data remains data even after processing; MPEP 2106.05(c)), the claims no not apply or use the abstract idea in some other meaningful way beyond generally linking the user of the abstract idea to a particular technological environment (i.e. a generic computer) such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea (MPEP 2106.05(e)). The recited generic computing elements are no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Regarding the recited predictive trait model trained to compute predictive trait values for one or more users in a test set, is recited at a high level of generality and amounts to no more than mere instructions to apply the abstract idea using a generic trained predictive trait model on a generic computer, also recited at a high level of generality. The trained predictive trait model is used to generally apply the abstract idea without limiting how the trained machine-learning model functions. The trained predictive trait model is described at a high level such that it amounts to using a generic computer with a generic trained predictive trait model to apply the abstract idea. These limitations only recite outcomes/results of the steps without any details about how the outcomes are accomplished.
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)-(c) and (e)- (h)), the claims do not integrate the judicial exception into a practical application.
There is a fundamental difference between computer functionality improvements, on the one hand, and uses of existing computers as tools to perform a particular task, on the other — a distinction that the Federal Circuit applied in Enfish, in rejecting a § 101 challenge at the first stage of the Mayo/Alice framework because the claims at issue focused on a specific type of data structure, i.e., a self-referential table, designed to improve the way a computer stores and retrieves data in memory, and not merely on asserted advances in uses to which existing computer capabilities could be put. See Enfish, 822 F.3d at 1335-36. Here the claims simply use a computer as a tool and nothing more.
For the reasons outlined above, that the claims recite a method of organizing human activity, i.e., an abstract idea, and that the additional element recited in the claim beyond the abstract idea (i.e., computer, processor, memory, user interface, orchestrator (software per se) and computer readable medium storing instructions) is no more than a generic computer component used as a tool to perform the recited abstract idea. As such, it does not integrate the abstract idea into a practical application. See Alice Corp., 573 U.S. at 223-24 (“[Wholly generic computer implementation is not generally the sort of ‘additional featur[e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)).
Accordingly, the claims are directed to an abstract idea.
Step Two of the Mayo/Alice Framework (Step 2B)
Having determined under step one of the Mayo/Alice framework that the claims are directed to an abstract idea, we next consider under Step 2B of the Guidance, the second step of the Mayo/Alice framework, whether the claims include additional elements or a combination of elements that provides an “inventive concept,” i.e., whether an additional element or combination of elements adds specific limitations beyond the judicial exception that are not “well-understood, routine, conventional activity” in the field (which is indicative that an inventive concept is present) or simply appends well-understood, routine, conventional activities previously known to the industry to the judicial exception. See MPEP § 2106.05.
Under step two of the Mayo/Alice framework, the elements of each claim are considered both individually and “as an ordered combination” to determine whether the additional elements, i.e., the elements other than the abstract idea itself, “transform the nature of the claim” into a patent-eligible application. Alice Corp., 573 U.S. at 217 (citation omitted); see Mayo, 566 U.S. at 72-73 (requiring that “a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself’ (emphasis added) (citation omitted)).
Here the only additional element recited in the claims beyond the abstract idea is a computer, processor, memory, user interface, orchestrator (software per se) and computer readable medium storing instructions” i.e., generic computer component. See Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”). Applicant has not identified any additional elements recited in the claim that, individually or in combination, provides significantly more than the abstract idea.
Regarding the recited predictive trait model rained to compute predictive trait values for one or more users in a test set the examiner notes that the trained predictive trait model is recited at a high level of generality and amounts to no more than mere instructions to apply the abstract idea using a generic predictive trait model on a generic computer, also recited at a high level of generality. The trained predictive trait model is used to generally apply the abstract idea without limiting how the trained predictive trait model functions. The trained predictive trait model is described at a high level such that it amounts to using a generic computer with a generic predictive trait model to apply the abstract idea. These limitations only recite outcomes/results of the steps without any details about how the outcomes are accomplished.
Similar to the discussion in Uniloc USA, Inc. v. LG Electronics USA, Appeal No. 19-1835 (Fed. Cir. Apr. 30, 2020), where the Federal Circuit reaffirmed that software inventions are patentable in the U.S. with a bright-line statement: “Our precedent is clear that software can make patent-eligible improvements to computer technology, and related claims are eligible as long as they are directed to non-abstract improvements to the functionality of a computer or network platform itself.” the instant application merely applies the abstract idea using a generic computer as a conduit/tool for the abstract idea and does not improve the functioning of a computer or computer networks, does not improve another technical field and does not provide a technical solution to a technical problem.
With regards to Applicant’s argument that the claimed invention improves the functioning of a computer and/or provides a technical problem by using the trained prediction model to automatically analyze user data for improving automated user data organization enabling automatic message transmission, the examiner respectfully disagrees. Utilizing computers, even using ‘trained’ predictive models’, to predict values and select users/audience to transmit messages to is conventional, routine and well-known. The computer is merely used for well-known, conventional and routine data input, data processing and data output. Nothing in the claims or Applicant’s invention suggests that the conventional computer is used in anything other than is routine and conventional purpose nor is there any suggestion that the claimed method improves the functioning of a computer or resolves a technical computer inherent in computers or computer networks. The wished for ‘improvement’ is organizing user data and/or enabling automatic message transmission are at best business improvements – i.e. improvements in the abstract idea itself.
Accordingly, the claims are not patent eligible under 35 U.S.C. 101.
In response to Applicant’s argument that the claims are patent eligible under 35 U.S.C. 101 as the claims recite significantly more than the abstract idea, the examiner respectfully disagrees.
The claims use “conventional or generic technology in a nascent but well-known environment” to implement the abstract idea of business metric forecasting. In re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016). The recited technology (processor, memories, etc.), are used as a “conduit for the abstract idea,” not to provide a technological solution to a specific technological problem. Id.; see also id. at 611–13 (holding claims reciting the use of a cellular telephone and a network server to classify an image and store the image based on its classification to be abstract because the patent did “not describe a new telephone, a new server, or a new physical combination of the two” and did not address “how to combine a camera with a cellular telephone, how to transmit images via a cellular network, or even how to append classification information to that data”).
Nothing in Applicant’s disclosures suggests that the Applicant intended to accomplish any of the steps through anything other than well understood technology used in a routine and conventional manner. Therefore, the claims lack an inventive concept. See also, e.g., Elec. Power Grp., 830 F.3d at 1355 (holding claims lacked inventive concept where “[n]othing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information”); Content Extraction, 776 F.3d at 1348 (holding claims lacked an inventive concept where the claims recited the use of “existing scanning and processing technology”).
Accordingly, the claims are not patent eligible under 35 U.S.C. 101.
Should applicant amend the claims to positively recite machine learning and/or artificial intelligence (e.g. limiting the predict trait model to a specific ML/AI model/algorithm) examiner suggests Applicant review the recently posted 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence (2024 AI SME Update) in the Federal Register on July 17, 2024 (https://www.federalregister.gov/public-inspection/2024-15377/guidance-2024-update-on-patent-subject-matter-eligibility-including-on-artificial-intelligence ) and specifically review the three new examples 47-49 announced by the 2024 AI SME Update which provide exemplary SME analyses under 35 U.S.C. 101 of hypothetical claims related to AI inventions (https://www.uspto.gov/sites/default/files/documents/2024-AI-SMEUpdateExamples47-49.pdf).
Additionally, examiner suggests Applicant review the recent Appeals Review Panel review of Ex parte Desjardins et al., related to U.S. Patent Application No. 16/319,040, assigned to DeepMind Technologies Limited (https://www.uspto.gov/sites/default/files/documents/202400567-arp-rehearing-decision-20250926.pdf) .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: Graphical User Interface for Visualizing Customer Predictive Lifetime Value, System and Method for Audience Selection Based on Predictive Trait Values or the like.
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.
Regarding independent Claims 1, 12 and 20, the claims are directed to the abstract idea of predictive analytics – specifically audience selection based on predicted user traits. This is a process (i.e. a series of steps) which (Statutory Category – Yes –process).
The claims recite a judicial exception, a method for organizing human activity, predictive analytics – audience selection (Judicial Exception – Yes – organizing human activity). Specifically, the claims are directed to providing a predictive user interface to enable a person to select, configure, train and run a predictive trait model for the purposes of selecting a set of users (audience), wherein predictive analytics is a fundamental economic practice that falls into the abstract idea subcategories of sales activities and/or commercial interactions. Further all of the steps of “detecting”, “retrieve”, “generate”, “run”, “detecting”, “transmitting” and “automatically selecting” recite functions of the predictive analytics – audience selection are also directed to an abstract idea that falls into the abstract idea subcategories of sales activities and/or commercial interactions. The step of train a predictive model is also directed to an abstract idea because it is a mathematical concept. The intended purpose of independent claims 1, 12, and 20 appears to be to automatically select users in a test set based on predictive trait values (generating an audience; e.g. Lifetime Value) wherein the users in the test set are configured to receive one or more transmitted messages (no messages are actually generated, transmitted or received).
Accordingly, the claims recite an abstract idea – fundamental economic practice, specifically in the abstract idea subcategories of sales activities and/or commercial interactions. The exceptions are the user (who is a person) and additional limitations of generic computer elements: computer, processor, memory, user interface, orchestrator (software per se) and computer readable medium storing instructions. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
Accordingly, the claims recite an abstract idea under Step 2A, Prong One, we proceed to Step 2A, Prong Two. Considering whether the additional elements set forth in the claim integrate the abstract idea into a practical application, the previously identified non-abstract elements directed to generic computing components include: computer, processor, memory, user interface, orchestrator (software per se) and computer readable medium storing instructions. These generic computing components are merely used to receive/access, process or display data as described extensively in Applicant’s specification (Specification: Figures 13, 14). Generic computers performing generic computer functions, alone, do not amount to significantly more than the abstract idea. Moreover, when viewed as a whole with such additional elements considered as an ordered combination, the claim modified by adding a generic computer would be nothing more than a purely conventional computerized implementation of applicant's predictive analytics in the general field of business management/marketing and would not provide significantly more than the judicial exception itself. Note McRo, Inc. v. Bandai Namco Games America Inc. (837 F.3d 1299 (Fed. Cir. 2016)), guides: "[t]he abstract idea exception prevents patenting a result where 'it matters not by what process or machinery the result is accomplished."' 837 F.3d at 1312 (quoting O'Reilly v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). The claims are not directed to a particular machine nor do they recite a particular transformation (MPEP § 2106.05(b)).
Additionally, the claims do not recite any specific claim limitations that would provide a meaningful limitation beyond generally linking the use of the judicial exception to a particular technological environment. Nor do the claims present any other issues as set forth in the 2019 Revised Guidance regarding a determination of whether the additional generic elements integrate the judicial exception into a practical application. See Revised Guidance, 84 Fed. Reg. at 55. Rather, the claims on merely use instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea. Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)-(c) and (e)- (h)), claims 1-20 do not integrate the judicial exception into a practical application.
Regarding the use of the generic (known, conventional) recited computer, processor, memory, user interface, orchestrator (software per se) and computer readable medium storing instructions," the Supreme Court has held "the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice, 573 U.S. 208, 223. Generic computers performing generic computer functions, alone, do not amount to significantly more than the abstract idea. The claims as a whole do not recite more than what was well-known, routine and conventional in the field (see MPEP § 2106.05(d)). In light of the foregoing and under the 2019 Revised Guidance, that each of the claims, considered as a whole, is directed to a patent-ineligible abstract idea that is not integrated into a practical application and does not include an inventive concept.
Accordingly, the claims are not patent eligible under 35 U.S.C. 101.
Additionally, the claims recite a judicial exception, a mental processes, which can be performed in the human mind or via pen and paper (Judicial Exception – Yes – mental process).
The claimed steps of train a predictive trait model, run the trained predictive trait model and automatically selecting users in the test set based on the predictive trait all describe the abstract idea. These limitations as drafted are directed to a process that under its reasonable interpretation covers performance of the steps in the mind but for the recitation of the generic computer components. Other than the recitation of a processor, memory component storing instructions, user interface, orchestrator (software per se), computer-readable storage medium nothing in the claimed steps precludes the step from practically being performed in the mind. The claims do not recite additional elements that are sufficient to amount to significantly more than the abstract idea because the steps detecting a selection of a predictive trait, retrieve user data is directed to insignificant pre-solution activity (i.e. data gathering/data input). The step of transmitting the predictive trait values is directed to insignificant post-solution activity (i.e. data output). The mere nominal recitation of a generic processor/computer does not take the claim limitation out of the mental processes grouping. Thus, the claim recites a mental process. (Judicial Exception recited – Yes – mental process).
The claims do not integrate the abstract idea into a practical application. The generic processor, memory component storing instructions, user interface, orchestrator (software per se), computer-readable storage medium are each recited at a high level of generality merely performs generic computer functions of retrieving, processing or displaying data. The generic processor/computer merely applies the abstract idea using generic computer components. The elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims do not recite improvements to the functioning of a computer or any other technology field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition, the claims to do apply the abstract idea with a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (e.g. data remains data even after processing; MPEP 2106.05(c)), the claims no not apply or use the abstract idea in some other meaningful way beyond generally linking the user of the abstract idea to a particular technological environment (i.e. a generic computer) such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea (MPEP 2106.05(e)). The recited generic computing elements are no more than mere instructions to apply the exception using a generic computer component.
Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. (Integrated into a Practical Application – No).
As discussed above the additional elements in the claims amount to no more than a mere instruction to apply the abstract idea using generic computing components, wherein mere instructions to apply an judicial exception using generic computer components cannot integrate a judicial exception into a practical application or provide an inventive concept. For the retrieving and displaying steps that were considered extra-solution activity, this has been re-evaluated and determined to be well-understood, routine, conventional activity in the field. Applicant’s specification does not provide any indication that the computer/processor is anything other than a generic, off-the-shelf computer component, and the Symantec, TLI, and OIP Techs. court decisions (MPEP 2106.05(d)(II)) indicate that mere collection or receipt of data is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). For these reasons, there is no inventive concept. The claim is ineligible (Provide Inventive Concept – No).
The claims are ineligible under 35 U.S.C. 101 as being directed to an abstract idea without significantly more.
Regarding dependent claims 2-11 and 13-19, the claims are directed to the abstract idea of predictive analytics and merely further limit the abstract idea claimed in independent claims 1, 12 and 20.
Claims 2 and 13 further limits the abstract idea by associating the configuration settings with at least ONE of event type or condition or time window or training audience or test audience (a more detailed abstract idea remains an abstract idea). Claims 3 and 14 further limit the abstract idea by selecting a set of users, generate a training data set and generate a trained predictive model (a more detailed abstract idea remains an abstract idea). Claims 4 and 15 further limit the abstract idea by selecting a set of users and generating a test set (a more detailed abstract idea remains an abstract idea). Claims 5 and 16 further limit the abstract idea by generating feature importance explanations and computing percentile statistics (a more detailed abstract idea remains an abstract idea). Claims 6 and 17 further limit the abstract idea by synchronizing the computer predictive trait values, receiving a user selection of one or more destinations and transmitting the computed predicted trait values (a more detailed abstract idea remains an abstract idea). Claims 7 and 18 further limit the abstract idea further comprising specifying a condition require or precluding a first user action, configuring a time window and specifying a second user action (a more detailed abstract idea remains an abstract idea). Claims 8 and 20 further limit the abstract idea by limiting the selected trait to lifetime value, limiting the configuration setting with the event type, and detecting a user selection of a completed order event (a more detailed abstract idea remains an abstract idea). Claim 9 further limits the abstract idea by training a first model to predict likelihood that a user is a zero or non-zero LTV, training a second model to predict a LTV score (a more detailed abstract idea remains an abstract idea). Claim 10 further limits
None of the limitations considered as an ordered combination provide eligibility because taken as a whole the claims simply instruct the practitioner to apply the abstract idea to a generic computer.
Further regarding claims 1-20, Applicant’s specification discloses that the claimed elements directed to a processor, memory component storing instructions, user interface, orchestrator (software per se), computer-readable storage medium at best merely comprise generic computer hardware which is commercially available (Specification: Figures 13, 14). More specifically Applicant’s claimed features directed to a system do not represent custom or specific computer hardware circuits, instead the terms merely refers to commercially available software and/or hardware. Thus, as to the system recited, "the system claims are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea." See Alice Corp. Pry. Ltd., 134 S.Ct. at 2360.
Accordingly, the claims merely recite manipulating data utilizing generic computer hardware (e.g. memory, processor, etc.). Generic computers performing generic computer functions, alone, do not amount to significantly more than the abstract idea. Further the lack of detail of the claimed embodiment in Applicant’s disclosure is an indication that the claims are directed to an abstract idea and not a specific improvement to a machine.
Accordingly given the broadest reasonable interpretation and in light of the specification the claims are interpreted to include the process steps being performed by a human mind or via pen and paper. The claim limitations which recite a computer implemented method is at best recite generic, well-known hardware. However, the recited generic hardware simply performs generic computer function of displaying or processing data. Generic computers performing generic, well known computer functions, alone, do not amount to significantly more than the abstract idea. Further the recited memories are part of every conventional general-purpose computer.
Applicant has not demonstrated that a special purpose machine/computer is required to carry out the claimed invention. A special purpose machine is now evaluated as part of the significantly more analysis established by the Alice decision and current 35 U.S.C. 101 guidelines. It involves/requires more than a machine only broadly applying the abstract idea and/or performing conventional functions.
Applicant’s specification discloses that the claimed elements directed to a computer, processor, memory, user interface, orchestrator (software per se) and computer readable medium storing instructions s merely comprise generic computer hardware which is commercially available (Specification: Figures 13, 14). More specifically Applicant’s claimed features directed to a system and components do not represent custom or specific computer hardware circuits, instead the term system merely refers to commercially available software and/or hardware. Thus, as to the system recited, "the system claims are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea." See Alice Corp. Pry. Ltd., 134 S.Ct. at 2360.
Accordingly, the claims are not patent eligible under 35 U.S.C. 101.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT L JARRETT whose telephone number is (571)272-7033. The examiner can normally be reached M-TH 6am-4:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Beth Boswell can be reached at (571) 272-6737. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
SCOTT L. JARRETT
Primary Examiner
Art Unit 3625
/SCOTT L JARRETT/Primary Examiner, Art Unit 3625