DETAILED ACTION
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
This Final office action is responsive to Applicant’s amendment filed on
December 18, 2025. With the Amendment, Applicant has amended claims 1 and 12. Claims 1-20 remain pending and are under examination. Applicant’s amendment do not overcome the 35 U.S.C. §101 rejection. The 101 rejection is maintained below.
Response to Arguments
Applicant’s arguments with respect to the 35 U.S.C. §101 rejection filed on December 18, 2025 have been fully considered but they are not persuasive.
Applicant asserted that amended independent Claims 1 and 12 recite "third-party information of an entity other than the customer company are pseudonymized and combined such that individual privacy of the third-party information is maintained. Thus, as it appears as though privacy of the third-party data could not be maintained if the process was being performed in the human mind of someone in the customer company”. Applicant further argued that the claims amount to significantly more than an abstract idea.
In response, it has been clearly enumerated that claims directed to an abstract idea are patent-ineligible. Abstract ideas are characterized as concepts identified by the courts which include (1) mathematical concepts, (2) mental processes and (3) certain methods of organizing human activity.
Among those concepts performed as being identified in the category of “Certain Methods of Organizing Human Activity” are “commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).
Like those concepts, limitations found in claim 1 and as similarly containing in claims 9 and 15 recite the concept of:
receiving pseudonym association data in which first- party information of a customer company and third-party information of an entity other than the customer company are pseudonymized and combined such that individual privacy of the third- party information is maintained.
Each of these independent claims uses generic computer technology to perform data reception, and analysis and then sending a notification as such do not recite an improvement to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F .3 d 1299, 1314-1315 (Fed. Cir. 2016) ( finding claims not abstract because they "focused on a specific asserted improvement in computer animation"). As such, claims 1, and 12 recite receiving data, generating data, estimating data, and providing data as such is not a technological implementation or application of that idea.
Applicant is to be reminded that a system, apparatus, machine or method for performing business, however, novel, useful, or commercially successful, is not patentable apart from the means for making the system practically useful or carrying it out. The applicant is making use of a generic device (i.e., a processor) to provide the estimated third-party information for a service related to the customer company. The claims are void of anything significantly more than the abstract idea itself.
Accordingly claims 1-20 are directed even as amended to an abstract idea.
Applicant further argued that the present claims amount to significantly more than an abstract idea because the problem solved by the present invention, when considered as an ordered combination, does not merely recite well-understood, routine and conventional combination of activities for using third-party data while protecting individual privacy through pseudonym association.
In response, the Examiner respectfully disagrees. In processing the claims, it is noted that the recitation of these additional elements does not impact the analysis of the claims because these elements in combination are noted only to be a general purpose computer for performing basic or routine computer functions. These claimed elements are noted to a be a generic computer for collecting data and performing routine and conventional functions. These additional elements do not overcome the analysis as these elements are merely considered as additional elements which amount to instructions to be applied to the generic computer.
The claimed invention does not improve the processors as tools, but rather independently abstract ideas that use the processors as tools. Applicant is directed to Mortgage Grader Inc. v. First Choice Loan Services, Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016) (noting that components such an "interface,", "network," and "database" are generic computer components that do not satisfy the inventive concept requirement); see also Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05).
Applicant further asserted on page 10 in the remarks that “as stated on page 9 in Exparte Skiba et al. (Appeal 2017-004849; Application Serial No. 13/929,090, PTAB, August 22, 2019) "Whether a particular technology is well-understood, routine and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in prior art, for example, does not mean it was well-understood, routine and conventional"”. Applicant further supported his assertion by arguing that there is a higher standard for something to be considered as "well-understood, routine and conventional" than there is to be used for a prior art rejection. In response, the Examiner respectfully disagrees. The 35 USC 101 and 35 USC 102 are different statues or statutorial requirements which are examined differently. Accordingly, the applicant’s argument is not persuasive
In response, the cited prior art as noted, comprises a computing system and a mobile device for performing the claimed invention.
The reliance of a computer or computing system or mobile device to perform its routine tasks even more accurately is not sufficient to transform a claim into patent eligible subject matter as noted in Alice 134 S. Ct. at 2359. As indicated by the court "use of a computer to create electronic records, track multiple transactions and issue simultaneous instructions" was not an inventive incept. The claims or even the applicant's specification does not support or provide or claim any specifically inventive technology or algorithm for performing the claimed functions.
As noted in the applicant’s specification, there is not a specific structure or computer components to perform the claimed functions. The generic computing system and mobile device can be any known server or computer processor or software or hardware components. However, there is not a specific or new algorithm noted in the applicant’s specification to generate the claimed functions. The claimed processor noted in the applicant's specification is routine computer processor or computer performing generic computer functions.
Further, there is not a showing or description of generating and receiving data or information, and providing the data to a computing system to effect specific improvements to the processor. Furthermore there is a lacking of evidence that the claims improve the manner in which the processor generates and receives data or information, and provides data to the processor, as the claims in Enfish had performed their claimed invention via a “self-referential table” for a computer database. Applicant is being referred to Enfish, 822, F.3d at 1327, 1337.
The instant claims merely generate and receive data or information, and provide the data to a computing system. These are routine and generic computer functions for processing or effecting the abstract idea. Hence, there is not a significant improvement of the computing system or mobile device or the architecture of the overall system. The elements together execute in routinely and conventionally accepted coordinated manners and interact with their partner elements to achieve an overall outcome which, similarly, are merely the combined and coordinated execution of generic computer functionalities which are well-understood, routine and conventional activities previously known to the industry. Accordingly, the applicant’s arguments are not persuasive.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and requirements
of this title.
Claims 1-20 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.
Subject Matter Eligibility Standard
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
Specifically, claim 1 is directed to a method. Claim 11 is directed to a non-transitory computer-readable recording medium. Claim 12 is directed to a system. Each of the claims falls under one of the four statutory classes of invention.
If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea).
The claim limitations in the abstract idea have been highlighted in non-bold and the “additional elements” in bold below.
Representative Claim 1 recites:
receiving, by the at least one processor, pseudonym association data in which first-party information of a customer company and third-party information of an entity other than the customer company are pseudonymized and combined;
generating, by the at least one processor, an interpretation model for data estimation by modeling the pseudonym association data;
estimating, by the at least one processor, the third-party information using target information of the customer company through the interpretation model; and
providing, by the at least one processor, the estimated third-party information for a service related to the customer company.
Claim 2 further recites wherein the generating comprises pseudonymizing and de-identifying the pseudonym association data.
Claim 3 further recites wherein the generating comprises de-identifying the pseudonym association data through at least one of a process of smoothing the pseudonym association data and a process of adding an error to the pseudonym association data.
Claim 4 further recites wherein the generating comprises generating the interpretation model through: a method of summarizing the pseudonym association data in a table form, a method of summarizing the pseudonym association data using similarity between 30 items, or a method of modeling the pseudonym association data using a logistic regression model or a deep learning model.
Claim 5 further recites wherein the generating comprises deleting the pseudonym association data after generation of the interpretation model is completed.
Claim 6 further recites wherein the providing comprises providing the customer company with expanded data in which the target information and the estimated third-party information are connected.
Claim 7 further recites 7 wherein the providing comprises utilizing the target information and the estimated third-party information for advertising targeting for the customer company.
Claim 8 further recites wherein: the estimating comprises estimating third-party data using first-party data of a target customer of the customer company using the interpretation model, and the providing comprises defining expanded data in which the first-party data and the third-party data are connected as an advertising targeting option for the target customer.
Claim 9 further recites wherein the receiving comprises receiving pseudonym association data in which a pseudonym association key is deleted from an external specialized association agency.
Claim 10 further recites wherein the receiving comprises receiving the pseudonym association data in which pseudonym data of the customer company and pseudonym data of at least one third party selected as a target company for information use by the customer company are combined.
Claim 11 recites a non-transitory computer-readable recording medium storing instructions that, when executed by a processor, cause the processor to computer-implement the third- party data providing method of claim 1.
Claim 12 recites:
a process of receiving pseudonym association data in which first-party information of a customer company and third-party information of an entity other than the customer company are pseudonymized and combined;
a process of generating an interpretation model for data estimation by modeling the pseudonym association data;
a process of estimating the third-party information using target information of the customer company through the interpretation model; and
a process of providing the estimated third-party information for a service related to the customer company.
Claim 13 further recites wherein the at least one processor is configured to pseudonymize and de-identify the pseudonym association data.
Claim 14 further recites wherein the at least one processor is configured to de-identify the pseudonym association data through at least one of a process of smoothing the pseudonym association data and a process of adding an error to the pseudonym association data.
Claim 15 further recites wherein the at least one processor is configured to generate the interpretation model through:
a method of summarizing the pseudonym association data in a table form,
a method of summarizing the pseudonym association data using similarity between items, or
a method of modeling the pseudonym association data using a logistic regression model or a deep learning model.
Claim 16 further recites wherein the at least one processor is configured to delete the pseudonym association data after generation of the interpretation model is completed.
Claim 17 further recites wherein the at least one processor is configured to provide the customer company with expanded data in which the target information and the estimated third-party information are connected.
Claim 18 further recites wherein the at least one processor is configured to utilize the target information and the estimated third-party information for advertising targeting for the customer company.
Claim 19 further recites wherein the at least one processor is configured to:
estimate third-party data using first-party data of a target customer of the customer company using the interpretation model, and
define expanded data in which the first-party data and the third-party data are connected as an advertising targeting option for the target customer.
Claim 20 further recites wherein the at least one processor is configured to receive the pseudonym association data in which pseudonym data of the customer company and pseudonym data of at least one third party selected as a target company for information use by the customer company are combined.
When considering subject matter eligibility under 35 U.S.C.101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
Under Step 1 of the analysis, claim 1 is directed to a method. Claim 11 is directed to a non-transitory computer-readable medium. Claim 12 is directed to a system. The claims fall under one of the four statutory classes of invention under step 1.
Regarding independent claims 1 and 12, applicant is to be noted that the steps or functions of "receive" or "receiving" are considered as data gathering functions. The functions of "generating" or "generate" and “providing” or “provide” involve mental processes and/or generic computer functions.
If the claims do fall within one of the statutory categories, it must then be determined whether the claims are directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea) under step 2.
Step 2A, Prong One, claim 1 is found to include at least one judicial exception, that the resent claims recite steps that can be performed using the human mind, pen, and paper. According to the 2019 Revised Guidance, concepts performed in the human mind (including an observation, evaluation, judgement, or opinion) fall into the category of mental processes. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
Regarding claims 1, Applicant is to be noted that the steps or functions recited in claim 1, namely “ “receiving” is considered as data gathering functions. The functions of “generating”, “estimating” and “providing” involve mental processes and/or generic computer functions. Similar limitations comprise the abstract ideas of Claims 11 and 12.
Functions of estimating, the third-party information using target information of the customer company through the interpretation model, and providing, the estimated third-party information for a service related to the customer company, is the Broadest Reasonable Interpretation (BRI) of the claimed limitations describe functions.
Step 2A, Prong Two of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception(s) into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application.2019 PEG Section III(A)(2), 84 Fed. Reg. at 54-55. In particular, the claims recite the following bolded limitations understood to be additional limitations:
In addition to the abstract ideas recited in claim 1, the claimed method recites additional elements including a processor and an interpretation model (See Paragraph [0012] of applicant’s specification]. When considered in view of the claims as a whole, the recited computer elements do not integrate the abstract idea into a practical application because the computer elements are generic computer elements that are merely used as a tool to perform the recited abstract idea. As a result, claim 1 does not include additional elements that integrate the abstract idea into a practical application under Step 2A Prong Two.
Similar limitations comprise the additional elements of claims 11 and 12. In addition, claim 12 recites the additional element of a memory which does not include that integrate the abstract idea into a practical application under Step 2A Prong Two.
Performing steps or functions by a user device, processor or a computing system merely limits the abstraction to a computer field by execution by generic computers. See MPEP 2106.05.
As noted in MPEP 2106.04(d), limitations which amount to instructions to implement an abstract idea on a computer or merely using a computer as a tool, limitations which amount to insignificant extra-solution activity, and limitations which amount to generally linking to a particular technological environment do not integrate a practical exception into a practical application.
"estimating, by the at least one processor, the third-party information using target information of the customer company through the interpretation model…" is similar to Alappat, which as noted in MPEP 2106. 05(b)(l) is superseded, and the correct analysis is to look whether the added elements integrate the exception into a practical application or provide significantly more than the judicial exception. The functions of the claims in the instant application are performed by one or more processors or computing system which receives data, determines data and transmits data.
Consideration of these steps as a combination does not change the analysis as they do not add anything compared to when the steps are considered separately. The claims recite a particular sequence of functions of estimating, by the at least one processor, the third-party information using target information of the customer company through the interpretation model, and providing, by the at least one processor, the estimated third-party information for a service related to the customer company.
Performance of these steps or functions technologically may present a meaningful limit to the scope of the claim does not reasonably integrate the abstraction into a practical application.
Step 2B: The elements discussed above with respect to the practical application in Step 2A, Prong 2 are equally applicable to consideration of whether the claims amount to significantly more. Accordingly, the claims fail to recite additional elements which, when considered individually and in combination, amount to significantly more. Reconsideration of these elements identified as insignificant extra-solution activity as part of Step 2B does not change the analysis.
Receiving, generating, estimating, and providing data by a processor or computer hardware amounts to receiving and processing data over a network has been recognized by the courts as well-understood, routine, and conventional (See MPEP 21065(d)(H), citing Symantec. 838 F.3d at ! 32 ! , 120 USPQ2d at l 362 (utilizing an intermediary computer to forward information): TU Communications LLC v. AV Auto. LLC, 823 F3d 607,610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission): OIP Techs., Inc., v, Amazon.com, Inc., 788 F3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir, 2015) (sending messages over a network: buySAFE, Inc.v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network).
Positively reciting the computer processor, memory storing data or software instructions does not change the analysis as these aspects are properly considered as additional elements which amount to instructions to apply with a computer.
These claimed elements also as found in the dependent claims are also recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using a generic component.
In processing the claims, it is noted that the recitation of these additional elements do not impact the analysis of the claims because these elements in combination are noted only to be a general purpose computer or processor for performing basic or routine computer functions. These claimed elements are noted to a be a generic computer for accessing data similar to collecting data, storing data and performing routine and conventional functions.
The judicial exception is not integrated into a practical application. In particular, the claimed “user device” and “processor” or computing system are recited at a high level of generality such they amount to no more than mere instructions to apply the exception using generic components. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
As a result of the above analysis, claim 1, as well as claims 11 and 12, do not appear to be patent eligible under 101.
With regards to the dependent claims, the dependent claim(s) when analyzed and each taken as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea.
The prior art taken alone or in combination failed to teach or suggest:
“generating, by the at least one processor, an interpretation model for data estimation by modeling the pseudonym association data; estimating, by the at least one processor, the third-party information using target information of the customer company through the interpretation model; and providing, by the at least one processor, the estimated third-party information for a service related to the customer company”, as recited in independent claim 1 and as similarly recited in claim 12.
- Hertz et al (US Patent No. 7844717) teach a pseudonymous proxy server that is viewed as an intermediary and trusted third party who mediates and controls data transmissions which contain records about an individual, an organization, two or more individuals or two or more organizations. The proxy server is to collect and/or receive and record individual-specific information associated with an individual . This individual-specific information includes an individual's identifiable personal data and non-identifiable personal data.
- Komatsu et al (2022/0147655) teach an information computer processing method for receiving a holding request that includes target data and first identification information regarding the target data to generate second identification information different from the first identification information, generating first pseudonymized data that includes the second identification information and the target data, and holding the first pseudonymized data, generating first pseudonymous association data that associates the first identification information with the second identification information, and storing the first pseudonymous association data in a first hardware storage, calculating a first value by an operation based on the first pseudonymous association data; and providing first record information for a storage system, the storage system being configured to store the first record information, the first record information including the first value and including first information based on the first identification information.
7. 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.
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Romain Jeanty whose telephone number is (571)272-6732. The examiner can normally be reached M-F 9:00AM to 5:30PM.
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, Jerry O'Connor can be reached at 571 272-6787. 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.
/RJ/
/ROMAIN JEANTY/Primary Examiner, Art Unit 3624