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 office action is responsive to amendment filed on 8/4/2025. No claims are amended or added. Claims 1-20 are pending examination.
Claim Rejections - 35 USC § 101
35 USC § 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 non-statutory subject matter. In particular, claims are directed to a judicial exception (abstract idea) without significantly more. 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. 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), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include mental processes; certain methods of organizing human activities; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al.,573 U.S. (2014). Analysis has been updated based on the new 2019 Patent Eligibility Guidance (2019 PEG).
Claim 1 (exemplary) recites a series of steps for providing relevant results to requests. The claim is directed to a machine, which is a statutory category of invention.
The claim is then analyzed to determine whether it is directed to a judicial exception. The claim recites the limitations of receive a request via a communication interface, wherein said request is associated with a user-related or user-group-related identification and said request comprises an indication of digital-resource-related information; determine one or more digital resources in relation to said digital-resource-related information and another user-related or user-group-related identification, wherein an indication of a relationship between said user-related or user-group-related identification and said other user-related or user-group-related identification is stored in one or more databases; and present one or more responses via said communication interface or another communication interface, wherein said one or more responses comprise at least one indication of at least one digital resource from among said one or more digital resources.
The claimed system simply describes series of steps for providing relevant results to requests. These limitations, as drafted, are processes that, under its broadest reasonable interpretation, covers performance of the limitations in the mind or via manual human activity, but for the recitation of generic computer component, such as
the processor. That is, other than reciting one or more processors, one or more memories bearing computer readable instructions, digital resources, nothing in the claim precludes the limitations from practically being performed in the human mind or manually. These limitations are directed to an abstract idea because they are activities that falls within the enumerated group of “mental process’ in the 2019 PEG. “Mental processes” are defined by the 2019 PEG as including “concepts performed in the human mind (including an observation, evaluation, judgment, opinion). Next, the claim is analyzed to determine if it is integrated into a practical application. The claim recites additional limitation of using one or more processors, one or more memories bearing computer readable instructions, digital resource to perform the steps. The processor in the steps is recited at a high level of generality, i.e., as a generic processor performing a generic computer function of processing data. This generic processor limitation is no more than mere instructions to apply the exception using generic computer component. Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, these 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. The claim is directed to the abstract idea.
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a processor (using the processor as a
tool to implement the abstract idea). Taking the additional elements individually and in combination, the processor at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at or provide an inventive concept.
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea. Therefore, the claim is not patent eligible. The analysis above applies to all statutory categories of invention including claims 1, 11 and 13. Furthermore, the dependent claims 2-10, 12 and 14-20 do not resolve the issues raised in the independent claims. The dependent claims do not add limitations that meaningfully limit the abstract idea. Dependent claims 2-10, 12 and
14-20 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer. The claim merely amounts to the application or instructions to apply the abstract idea on a processor, and is considered to amount to nothing more than requiring a generic server to merely carry out the abstract idea itself.
The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as integrating the abstract idea into a practical application. Accordingly, claims 1-20 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis. The instant claims are rejected under 35 USC 101 in view of The Decision in Alice Corporation Ply. Ltd. v. CLS Bank International, et al. in a unanimous decision, the Supreme Court held that the patent claims in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. ("Alice Corp. ") are not patent-eligible under 35 U.S.C. § 101.
Response to Arguments
Applicant's arguments filed regarding 35 USC § 101 have been fully considered but they are not persuasive. Applicant argues in substance:
Argument: no supported mapping to patent ineligible idea categories under 2019 revised PEG.
Response, the claims clearly fall under the abstract idea of “organizing human activity”, specifically managing relationships and interactions between people for recommendations purposes. The 2029 PEG explicitly lists “managing personal behavior or relationship or interaction between people”, as abstract idea.
Argument: Unrebutted evidence of “well understood” status.
Response, as previously explained during the interview with the applicant, a librarian could mentally perform these steps: receive a person’s request, consider who they are friends with, recall what resources those friends like, and recommend accordingly. The process mirrors fundamental human recommendation practices.
Argument: No evidence of “well understood” status.
Response, collaborative filtering and social based recommendations were well established by the priority date. Systems like Amazon’s “people who bought this also bought” and Facebook’s social recommendations demonstrate conventional status.
Argument: claimed operations demand specialized computer functionality.
Response, the claims recite generic database operations: receiving requests, querying databases, ranking results, presenting responses. These are basic computer functions, not specialized ones.
Argument: The focus is on specific improvement in computer functionality.
Response, no computer functionality improvements are claimed. The specification must describe how the computer operates differently or more efficiently. Merely implementing known recommendation algorithms does not qualify.
Office acknowledgement of technical improvement.
Response, the examiner disagrees with this statement. The claims describe conventional database queries and result ranking without technical implementation details that would improve computer operations.
Argument: ordered combination solves computer centric problem.
Response: the problem solved is providing better recommendations to users, is a business or user experience problem, not a technological one. Automating known business process does not create patent eligible subject matter.
Argument: not purely mental or conventional analogue.
Response: social recommendation systems existed before computers. Libraries used card catalogs with patron preferences tracking, bookstores-maintained customer recommendation files, and word of mouth recommendations based on social connections and fundamental human activities.
Argument: dependent claims supply field-specific refinement.
Response: the dependent claims add conventional database operations like ranking, filtering and list generation. These are standard computer functions that do not transform the abstract idea into a concrete application.
Argument: claims align with controlling precedent.
Response, controlling federal Circuit precedent consistently rejects data processing and recommendation systems as abstract idea, even when computerized.
Argument: specialized machine through transformational configuration.
Response, the system performs conventional database and web server operations. Programming a general-purpose computer to execute database queries does not create a specialized machine under Alice.
Argument: No evidence of routine and conventional status.
Response: database storage, querying, ranking algorithms, and web interfaces were all conventional by any reasonable priority date. The claims themselves acknowledge using “one or more database” and “communication interfaces”. These are standard components.
Argument: Conclusory generic computer statements insufficient.
Response, the rejection specifically analyzes each element and explains why they constitute abstract idea implementation using conventional technology. The claims themselves are generic, reciting “one or more processors”, “one or more memories”, and “computer readable instructions” without specificity.
Argument: Cited PTAB decision remain unrebutted.
Response: applicant argument does not apply for the following reasons:
PTAB decisions are not binding precedent. Only Federal Circuit and Supreme Court decisions control patent eligibility determinations.
The record contains enough evidence of conventional status, the generic computer language (one or more processors, databases) evidence of conventional implementation. Well known databases and communication technologies. Unlike the cited PTAB cases, the rejection provides detailed element by element analysis with supporting Federal Circuit Authority, not conclusory.
Argument ordered combination provides search specific solution.
Response, the combination performs known recommendation system operations in known ways. Social collaborative filtering was established prior to these claims.
Argument: claims improve computer functionality unlike Power or Alice.
Response, no computer improvements are described. The claims implement known recommendation algorithms using standard database and communication technologies.
Argument: Lack of 102/103 rejections.
Response, the examiner submits that under the current 35 USC 101 examining practice, the existence of such novel features would still not cure the deficiencies with respect to the abstract idea. See for example: Ultramercial, Inc. v. Hulu, LLC, 112 USPQ2d 1750, U.S. Court of Appeals Federal Circuit, No. 2010-1544, Decided November 14, 2014, 2014 BL 320546, 772 F.3d 709, Page 1754 last two ¶: “We do not agree with Ultramercial that the addition of merely novel or non-routine components to the claimed idea necessarily turns an abstraction into something concrete”. Indeed, in this in instant case, the limitations simply narrow or limit the abstract idea without providing anything significantly more than the abstract idea itself.
For these reasons the rejection under 35 USC § 101 directed to non-statutory subject matter set forth in this office action is maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/SARGON N NANO/ Primary Examiner, Art Unit 2443