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 .
The following is a Final Office Action in response to communications received on 6/4/2026. Claims 1-7, 9-18, and 20 are currently pending and have been examined. Claims 1, 9, and 15 have been amended. Claims 8 and 19 are cancelled.
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.
Step 1: The claims 1-7 and 9-14 are a method and claims 15-18 and 20 are a server. Thus, each independent claim, on its face, is directed to one of the statutory categories of 35 U.S.C. §101. However, the claims 1-7, 9-18, and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 2A Prong 1: The independent claims (1 and 15, taking claim 1 as a representative claim) recite:
A computer-implementable method of generating digital item recommendations for a given user of an online recommendation platform, the online recommendation platform hosting a plurality of digital items, the method being executable by a server hosting the online recommendation platform, the method comprising:
receiving, from an electronic device associated with the given user, a given recommendation request for digital item recommendations;
acquiring indications of past user interactions associated with the given user;
feeding, by the server, to a machine-learning algorithm (MLA): (i) the indications of the past user interactions of the given user and (ii) an indication of at least one predetermined user interaction executable by the given user with a given digital item of the plurality of digital items, thereby causing the MLA to generate, for the given recommendation request:
a sub-set of core digital items;
for a given core digital item of the sub-set of core digital items, at least one auxiliary digital item digital item during appreciation thereof, the MLA having been trained to determine, in the plurality of digital items, recommended digital items for users of the online recommendation platform based on past user interactions of the users with the plurality of digital items;
and generating a set of digital items including (i) the sub-set of core digital items and (ii) the at least one auxiliary digital item for the given core digital item;
transmitting, by the server, the set of digital items to the electronic device associated with the given user;
causing, by the server, presentation of the sub-set of core digital items of the set of digital items on the electronic device associated with the given user without presenting the at least one auxiliary digital item; and
in response to receiving an indication of the respective user interaction with the given core digital item during the appreciation thereof, causing the electronic device to:
abort presentation of the given core digital item; and
execute presentation of the at least one auxiliary digital item.
These limitations, except for the italicized portions, under their broadest reasonable interpretations, recite certain methods of organizing human activity for managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) as well as commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). The claimed invention recites steps for generating a set of recommended items for a user based on their previous actions with other items of a recommendation system. As set forth in the instant specification in [0002] and [004] the claimed invention is directed to item recommendations being made through the pre-determination of auxiliary recommended items. The steps under its broadest reasonable interpretation specifically fall under sales activities. The Examiner notes that although the claim limitations are summarized, the analysis regarding subject matter eligibility considers the entirety of the claim and all of the claim elements individually, as a whole, and in ordered combination.
Prong 2: This judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements of
A computer-implementable method of generating digital item recommendations for a given user of an online recommendation platform, the online recommendation platform hosting a plurality of digital items, the method being executable by a server hosting the online recommendation platform, the method comprising: (claim 1)
A server for generating digital item recommendations for a given user of an online recommendation platform hosted by the server, the online recommendation platform hosting a plurality of digital items, the server comprising at least one processor and a non-transitory computer-readable memory storing instructions, which, when executed by the at least one processor, cause the server to: (claim 15)
receiving, from an electronic device associated with the given user, a given recommendation request for digital item recommendations;
acquiring indications of past user interactions associated with the given user;
feeding, by the server, to a machine-learning algorithm (MLA): (i) the indications of the past user interactions of the given user and (ii) an indication of at least one predetermined user interaction executable by the given user with a given digital item of the plurality of digital items, thereby causing the MLA to generate, for the given recommendation request:
a sub-set of core digital items;
for a given core digital item of the sub-set of core digital items, at least one auxiliary digital item digital item during appreciation thereof, the MLA having been trained to determine, in the plurality of digital items, recommended digital items for users of the online recommendation platform based on past user interactions of the users with the plurality of digital items;
and generating a set of digital items including (i) the sub-set of core digital items and (ii) the at least one auxiliary digital item for the given core digital item;
transmitting, by the server, the set of digital items to the electronic device associated with the given user;
causing, by the server, presentation of the sub-set of core digital items of the set of digital items on the electronic device associated with the given user without presenting the at least one auxiliary digital item; and
in response to receiving an indication of the respective user interaction with the given core digital item during the appreciation thereof, causing the electronic device to:
abort presentation of the given core digital item; and
execute presentation of the at least one auxiliary digital item.
The additional elements of emphasized above are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of processing data) such that it amounts no more than mere instructions to apply the exception using a generic computer component. The limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do not integrate the abstract idea into a practical application– MPEP 2106.05(f).
The additional elements of “causing the electronic device to: abort presentation of the given core digital item; and execute presentation of the at least one auxiliary digital item” merely confines the use of the abstract idea to a particular technological environment (streaming/recommendation platforms on a computer) and thus fails to add an inventive concept to the claims. See MPEP 2106.05(h).
Accordingly, these additional elements when considered individually or as a whole do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The independent claims are directed to an abstract idea.
Step 2B: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed with respect to Step 2A Prong two, the additional elements in the claims amount to no more than mere instructions to apply the judicial exception using a generic computer component.
Dependent claims 2-7 and 9-14 and 16-18 and 20 when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. §101 because the additional recited limitations fail to establish that the claims are not directed to the same abstract idea of Independent Claims 1 and 15 without significantly more.
Claim 2 recites further comprising determining, by the server before transmitting the set of digital items to the electronic device, the at least one auxiliary digital item. The limitation merely further limits the abstract idea and does not integrate the judicial exception into a practical application.
Claim 3 recites determining, by the server, the at least one auxiliary digital item which is similar to the given core digital item to present to the given user if the respective user interaction is indicative of a positive user engagement with the given core digital item; determining, by the server, the at least one auxiliary digital item which is different from the given core digital item to present to the given user if the respective user interaction is indicative of a negative user engagement with the given core digital item. The limitation merely further limits the abstract idea and does not integrate the judicial exception into a practical application.
Claim 4 recites wherein each one of the plurality of digital items is associated with at least one item feature; and the determining the at least one auxiliary digital item which is one of similar to and different from the given core digital item comprises determining, by the server, in the plurality of digital items, a digital item having the at least one feature which is, respectively, one of similar to and different from a respective item feature of the given core digital item. The limitation merely further limits the abstract idea and does not integrate the judicial exception into a practical application.
Claim 5 recites wherein the at least one item feature comprises one of: a category of the digital item and an item provider of the digital item. The limitation merely further limits the abstract idea and does not integrate the judicial exception into a practical application.
Claim 6 recites wherein the online recommendation platform is an audio streaming platform; the digital item is an audio track; and the at least one item feature comprises one of: a genre of the audio track, a mood induced by the audio track, a rhythm of the audio track, an artist performing the audio track, an album including the audio track, and user-generated playlists including the audio track. The limitation merely further limits the abstract idea and does not integrate the judicial exception into a practical application.
Claim 7 recites wherein the at least one auxiliary digital item comprises: a first auxiliary digital item, similar to the given core digital item, to be provided to the given user in case of the respective user interaction being indicative of the positive user engagement with the given core digital item; and a second auxiliary digital item, different from the given core digital item, to be provided to the given user in case of the respective user interaction being indicative of the negative user engagement with the given core digital item. The limitation merely further limits the abstract idea and does not integrate the judicial exception into a practical application.
Claim 9 recites further comprising: transmit a request to the server for generating, by the server, based on the at least on the auxiliary digital item, an other set of digital items to be recommended to the given user after appreciation of the auxiliary digital item such that: each one of a respective sub-set of core digital items of the other set of digital items is similar to the at least one auxiliary digital item; and in response to an absence of any user interaction with the given core digital item, the electronic device is configured to: execute, after the presentation of the given core digital item, presentation of a sequentially following core digital item in the sub-set of core digital items. The additional elements of “and transmit a request to the server for generating, by the server, based on the at least on the auxiliary digital item” and “and in response to an absence of any user interaction with the given core digital item, the electronic device is configured to: execute, after the presentation…” merely confines the use of the abstract idea to a particular technological environment (streaming/recommendation platforms on a computer) and thus fails to add an inventive concept to the claims. See MPEP 2106.05(h). Therefore the abstract idea is further limited and the recitation of the additional elements does not integrate the judicial exception into a practical application.
Claim 10 recites wherein the presentation of the set of digital items on the electronic device associated with the given user is further configured to trigger the electronic device to: in response to an absence of any user interaction with any one of the sub-set of core digital items until a predetermined percentage of presentation of a last one thereof, transmit a request to the server for generating, by the server, the other set of digital items to be recommended to the given user after appreciation of the set of digital items such that: each one of the respective sub-set of core digital items of the other set of digital items is similar to at least one of the sub-set of core digital items of the set of digital items. The limitation merely further limits the abstract idea and does not integrate the judicial exception into a practical application.
Claim 11 recites wherein the respective user interaction comprises the given user providing user feedback about the at least one auxiliary digital item. The limitation merely further limits the abstract idea and does not integrate the judicial exception into a practical application.
Claim 12 recites wherein the sub-set of core digital items has a predetermined number of digital items. The limitation merely further limits the abstract idea and does not integrate the judicial exception into a practical application.
Claim 13 recites wherein the predetermined number of digital items has been determined such that a latency of the server is minimized. Per MPEP 2106.05(a), the courts found that accelerating a process (i.e. retrieval of real estate listings) when the increase speed comes solely from the capabilities of a general-purpose computer, (see FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095, 120 USPQ2d 1293, 1296 (Fed. Cir. 2016)) was not sufficient to show improvement to the computer functionality.
Claim 14 recites wherein the online recommendation platform is an audio streaming platform; and a given one of the plurality of digital items is a respective audio track. This type of limitation merely confines the use of the abstract idea to a particular technological environment (streaming services) and thus fails to add an inventive concept to the claims. See MPEP 2106.05(h).
Claim 16-18 and 20 recite parallel claim language and therefore it rejected for the same reasons as set forth above. For these reasons claims 1-20 are rejected under 35 USC 101.
Subject Matter Free of Prior Art
Claims 1 and 15 are determined to have overcome the prior art of rejection and are free of prior art, however the claims remain rejected under 35 USC 101, as set forth above. All dependent claims are also free of prior art by virtue of dependency, but remain rejected under 35 USC 101.
Taking amended claim 1 as a representative claim, the claims as amended are found to overcome the prior art rejection for the reasons set forth below.
Claim 1 now recites the additional claimed features of:
for a given core digital item of the sub-set of core digital items, at least one auxiliary digital item, pre-determined for presentation to the given user in response to the given user having executed a respective user interaction of the at least one predetermined user interaction with the given core digital item during appreciation thereof,
and generating a set of digital items including (i) the sub-set of core digital items and (ii) the at least one auxiliary digital item for the given core digital item;
transmitting, by the server, the set of digital items to the electronic device associated with the given user;
causing, by the server, presentation of the sub-set of core digital items of the set of digital items on the electronic device associated with the given user without presenting the at least one auxiliary digital item; and
in response to receiving an indication of the respective user interaction with the given core digital item during the appreciation thereof, causing the electronic device to:
abort presentation of the given core digital item; and execute presentation of the at least one auxiliary digital item.
The closest prior art was found the be the previously cited combination of Snell in view of Harris. Snell discloses displaying a set of subset available files that are filtered based on a set of criteria and the subset if based on a reference video that is associated with the past activity of the user (0074). The subset is created also from analyzing past behavior and interactions of the user to include or exclude videos to show to the end user (0075). The subset of videos is then presented to the user for viewing (0078). Harris discloses advancing media based on received user actions to include skipping, rating, or other feedback inputs by the end user (0029). However the combination does not alone or in combination disclose the claims as amended including for a given core digital item of the sub-set of core digital items, at least one auxiliary digital item, pre-determined for presentation to the given user in response to the given user having executed a respective user interaction of the at least one predetermined user interaction with the given core digital item during appreciation thereof, and generating a set of digital items including (i) the sub-set of core digital items and (ii) the at least one auxiliary digital item for the given core digital item; transmitting, by the server, the set of digital items to the electronic device associated with the given user; causing, by the server, presentation of the sub-set of core digital items of the set of digital items on the electronic device associated with the given user without presenting the at least one auxiliary digital item; and in response to receiving an indication of the respective user interaction with the given core digital item during the appreciation thereof, causing the electronic device to: abort presentation of the given core digital item; and execute presentation of the at least one auxiliary digital item.
The closest NPL of record was found to be “Real Time Short Video Recommendation on Mobile Device” which addresses a recommender system that perceives the real time preferences of a user based on the past videos the end user has viewed (Abstract). Further, the reference discloses real-time triggered context aware re-ranking and states “List wise re-ranking approaches provide promising solutions to search for the best possible permutation of candidates with optimal total reward. However, deploying these approaches on the server side suffers from delayed and incomplete contextual information along with high time delay. (see page 2).
It was found that no references alone or in combination, neither anticipates, reasonable teaches, nor renders obvious the below noted features of Applicant’s invention. The features of claim 1 (and parallel claim 15) in combination that overcome the prior art are:
for a given core digital item of the sub-set of core digital items, at least one auxiliary digital item, pre-determined for presentation to the given user in response to the given user having executed a respective user interaction of the at least one predetermined user interaction with the given core digital item during appreciation thereof,
and generating a set of digital items including (i) the sub-set of core digital items and (ii) the at least one auxiliary digital item for the given core digital item;
transmitting, by the server, the set of digital items to the electronic device associated with the given user;
causing, by the server, presentation of the sub-set of core digital items of the set of digital items on the electronic device associated with the given user without presenting the at least one auxiliary digital item; and
in response to receiving an indication of the respective user interaction with the given core digital item during the appreciation thereof, causing the electronic device to:
abort presentation of the given core digital item; and execute presentation of the at least one auxiliary digital item.
Therefore, none of the cited references disclose or render obvious each and every feature of the claimed invention and the claimed invention is determined to be free of the prior art. Although individually the claimed features could be taught, any combination of references would teach the claimed limitations using a piecemeal analysis, since references would only be combined and deemed obvious based on knowledge gleaned from the applicant's disclosure. Such a reconstruction is improper (i.e., hindsight reasoning). See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The examiner emphasizes that it is the interrelationship of the limitations that renders these claims free of the prior art/additional art.
Therefore, it is hereby asserted by the Examiner that, in light of the above, that the claims are free of prior art as the references do not anticipate the claims and do not render obvious any further modification of the references to a person of ordinary skill in art.
Relevant Art Not Cited
Mosthaf (US 10068257) discloses providing recommendation to a group of users associated with a playlist.
Manning (US20160147767) discloses [0048] Alternatively or in addition, items similar to the skipped item may be removed from the pool. The number of items removed from the pool may be proportional to the number of skips in recent history. Thus, if a user skips several items in a row, a relatively larger percentage of items may be removed from the pool, as this may indicate that the user's current preferences have changed, or similar. When items from a pool are placed into the user's playlist, similar items may be placed together so as to provide for smooth transitions between items. For example, in a music recommendation system, acoustically-similar songs may be placed adjacent within the playlist, presuming that they are of comparable likelihood to be presented at a particular point in the playlist, so as to allow for relatively smooth acoustic transitions between items in the playlist.
Response to Arguments
Applicant’s remarks filed 6/4/2026 directed to the prior art rejections under 35 USC 103 are found to be moot for the reasons set forth above under “Subject Matter Free of Prior Art”.
Applicant's arguments filed 6/4/2026 have been fully considered but they are not persuasive for the reasons set forth below.
With respect to the remarks directed to 35 USC 101 prong one, the examiner first asserts that the MLA is considered an additional element and is not part of the abstract idea. The data processed by the MLA does still fall into the category of the methods of organizing human activity as shown in the rejection above. The MLA and its functionality will be discussed under prong 2.
With respect to the prong 2, the examiner first notes that none of the claimed limitations were characterized as well-understood, routine and conventional. As such, the remarks to this characterization are determined to be moot. As to the MLA, as was found in the Recentive decision, “Stated differently, patents may be directed to abstract ideas where they disclose the use of an “already available [technology], with [its] already available basic functions, to use as [a] tool[] in executing the claimed process.” SAP Am., 898 F.3d at 1169–70. We think those cases are equally applicable in the machine learning context. [page 15]. In the instant case, the machine learning is being used in its already available basic functions. The environment of the MLA has now merely been limited to generating digital recommendations. The technical improvement appears to be merely consequential to the information the claimed invention has chosen to feed into the MLA and the timing of the structure being generated, not that the MLA itself is improved. Feeding the server and/or the MLA less information and therefore reducing the computational load on the server using the MLA is merely consequential in nature not a technical improvement to a technical problem.
For at least these reasons the claims remain rejected under 35 USC 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 VICTORIA E. FRUNZI whose telephone number is (571)270-1031. The examiner can normally be reached Monday- Friday 7-4 (EST).
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, Marissa Thein can be reached at (571) 272-6764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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VICTORIA E. FRUNZI
Primary Examiner
Art Unit TC 3689
/VICTORIA E. FRUNZI/Primary Examiner, Art Unit 3689 7/31/2026
Prosecution Insights