DETAILED ACTION
This Office action is responsive to the following communication: Amendment filed on 19 September 2025.
Claim(s) 1, 3, 4, 6-10 is/are pending and present for examination. Claim(s) 1 and 10 is/are in independent form.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
As per claims 1 and 10, the claim(s) recite(s) “execute a machine learning model to categorize each of a the plurality of text data messages into one of a plurality of categories indicating an emotional sense…”, “sum a number of text data messages in each category”, “calculate a correlation”, “calculate respective predetermined index values”, “calculate… a positive/negative total value”, “determine…an item… that forms a basis for calculating.” These limitations are interpreted to be the observation or judgment that a user has taken, and therefore, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. Nothing in the claim element precludes the step from practically being performed in the mind.
For example, the “execute a machine learning model to categorize each of the plurality of data messages” in the context of this claim encompasses the user evaluating the message to indicate a specific emotional sense. For example, “sum a number of text data messages” in the context of this claim encompasses the user mentally evaluating and counting the number of text data messages in each category. For example, the “calculate” steps in the context of this claim encompasses the user mentally evaluating and making specific calculations such as subtraction operations. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Under step 2A, Prong 2, of the 2019 Revised Guidance, 84 Fed. Reg., we determine whether any of the additional elements beyond the abstract idea integrate the abstract ideas into a practical application. 2019 Guidance, 84 Fed. Reg. 54; MPEP §§ 2106.04(d), 2106.05. The 2019 Guidance provides exemplary considerations that are indicative of an additional element or combination of elements integrating the judicial exception into a practical application, such as an additional element reflecting an improvement in the functioning of a computer or an improvement to other technology or technical field. Id. at 55; see also MPEP § 2106.05(a). This judicial exception is not integrated into a practical application by additional elements. In particular, the claim recites using a processor to perform the steps. The processor in both steps is recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component.
In addition to the claim limitations, which were determined to recite concepts identified as abstract ideas, certain elements of claim 1 also constitute insignificant extra-solution activity to the judicial exception. In particular, the claim recites "receive a plurality of text data messages from a social media platform." This limitation reasonably can be characterized as merely constituting the insignificant pre-solution activity of data gathering:
“An example of pre-solution activity is a step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered information by a series of steps in order to detect whether the transactions were fraudulent.” See MPEP § 2106.05(g).
The Federal Circuit has held that data gathering steps "cannot make an otherwise nonstatutory claim statutory." CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (quoting In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989)). In this case, the pre-solution activity of storing a unified contextual graph for analysis may be considered a step of gathering data for use in a claimed process such as resolving conflicting attributes. This is highly analogous with the example provided above regarding insignificant pre-solution activity of data gathering.
Additionally, the claimed feature of “display… the predetermined index values of the company names and at least two radar charts” is merely insignificant extra-solution activity, i.e., necessary data outputting. See MPEP 2106.05(g). At step 2A, prong two, considering these limitations individually and the claim as a whole, the claim fails to integrate the abstract idea into a practical application. The elements directed to “display” do not integrate the abstract idea into a practical application because they do not impose a meaningful limit on the judicial exception and provide only insignificant extra solution activity that is mere data gathering in conjunction with the abstract idea.
At Step 2B, all claim elements, with the exception of the processor and memory, correspond to concepts determined to be abstract ideas for the reasons discussed above in connection with Prong One of the analysis and/or merely constitute extra-solution activity under Prong Two. Applicant's lack of a detailed disclosure of computer hardware or functional requirements and the lack of details describing a computer-specific implementation of the recited functions (such as might have been indicated by inclusion of a detailed flow chart depicting unconventional computer operations and/or routines for performing each of the claimed steps), persuades us that the omitted details are well-understood, routine, and conventional. See, e.g., MPEP § 2106.07(a)(III)(A).
Consistent with the Berkheimer Memorandum, the claims merely recite generic computer components performing generic computing functions that are well-understood, routine, and conventional. 5 See Alice, 573 U.S. at 225 (The "use of a computer to obtain data, adjust account balances, and issue automated instructions; all of these computer functions are 'well-understood, routine, conventional activit[ies]' previously known to the industry.") ( quoting Mayo, 566 U.S. at 71-73); see also Benson, 409
U.S. at 65 (Noting that a "computer operates then upon both new and previously stored data. The general-purpose computer is designed to perform operations under many different programs."); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (noting that using generic computing components like a microprocessor or user interface does not transform an otherwise abstract idea into eligible subject matter); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324-25 (Fed. Cir. 2016) (indicating components such as an "interface" are generic computer components that do not satisfy the inventive concept requirement); and MPEP § 2106.05(d)(II) (citing Alice and Mayo) accord Berkheimer Memo 3-4.
In this case, the "a processor” and “a memory" limitations are clearly well-understood, routine, and conventional; see MPEP 2106.05(d)(II), "receiving or transmitting data over a network." The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the computing of measures only add well-understood, routine and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception (Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93). The claims provide that the measures may be computed by program code that may be stored in memory. Therefore, the computing is nothing more than what can be handled by a conventional search engine and does not provide significantly more than the judicial exception. The claim(s) is/are not patent eligible.
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim(s) is/are not patent eligible.
As per claim 2, the limitation directed towards “analyze the input message through use of a model” is interpreted to be an observation or judgment that a user may take. Therefore, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, nothing in the claim element precludes the step from practically being performed in the mind.
As per claims 3-5, the limitations are directed towards utilizing an ESG score, which is an additional element beyond the above identified judicial exception. These additional elements represent mere extra-solution activities to the judicial exception. These elements do not integrate the abstract idea into a practical application because they do not impose a meaningful limit on the judicial exception and provide only insignificant extra solution activity that is mere data processing in conjunction with the abstract idea.
As per claims 6-9, the limitations directed towards “output an item having a value”, “categorize…, calculate…, output”, “select and output evaluation targets”, and “analyze the input message” are interpreted to be an observation or judgment that a user may take. Therefore, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, nothing in the claim element precludes the step from practically being performed in the mind.
Allowable Subject Matter
Claims 1, 3, 4, and 6-10 are allowable over the prior art.
Response to Arguments
Applicant's arguments regarding the claim rejections under 35 U.S.C. 101 have been fully considered but they are not persuasive.
Claim Rejection under 35 U.S.C. 101
Statutory Subject Matter Rejection Under §101 Principles of Law
An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLSBankInt’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Alice and Mayo. See id. at 217—18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75—77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.”
Id. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”).
If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].”’ Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requiring] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
The PTO has published revised guidance on the application of § 101. See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).2 Under that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or a mental process); and
(2) additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)—(c), (e)—(h) (9th ed. Rev. 08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance, 84 Fed. Reg. at 56.
The Examiner’s Rejection
The Examiner rejects independent claims 1 and 10 together, finding that the features of those claims correspond to concepts identified as abstract ideas by the courts. The Examiner finds that the limitations of the current claims are performed by the generically recited computer/processor, and that the limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. The Examiner also finds that these additional limitations are not sufficient to amount to significantly more than the judicial exception, whether considered individually or as an ordered combination. Specifically, the Examiner finds that the use of generic computer components to categorize and count a number of messages does not impose any meaningful limit on the computer implementation of the abstract idea, and there is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Rather, their collective functions merely provide conventional computer implementation.
Judicial Exception (Step 2A, Prong 1)
As per the rejection of independent claims 1 and 10 under 35 U.S.C. 101, viewing the rejection through the lens of the Guidance, we must first consider whether the claim recites a judicial exception. Guidance, 84 Fed. Reg. at 51. The USPTO has synthesized the key concepts identified by the courts as abstract ideas into three primary subject-matter groupings: mathematical concepts, certain methods of organizing human activity (e.g., a fundamental economic practice), and mental processes. Id. at 52. As explained below, the claims recite certain methods of organizing human activity (commercial or legal interactions, including advertising, marketing, or sales activities or behaviors) and mental processes, which are identified by the Guidance as abstract ideas. Id.
Applicant asserts the argument that “the human mind is not practically capable of executing a machine learning model” the claimed features of claim 1. See Amendment, page 8. The Examiner respectfully disagrees. Applicants argument is not commensurate with the analysis required under the 2019 Revised Patent Subject Matter Eligibility Guidance (PEG).
Under Step 2A, Prong One, the claim recites a process that falls within the judicial exception of an abstract idea, namely a mathematical concept and a mental process. Specifically, the step of “executing a machine learning model to categorize text data messages” amounts to mathematical data analysis and classification, which have been identified by the courts as abstract. Furthermore, implementing this concept on a generic computer does not remove it from the abstract-idea grouping (MPEP 2106.04(a)(2)). Courts have long held that performing a mental process faster or more accurately using a computer remains abstract. Additionally, the determination is not whether a human could literally perform every step of the process, but whether the claim as a whole is directed to an abstract idea, such as observation, evaluation, or classification of information. Furthermore, merely implementing such abstract ideas on a computer does not render them patent eligible.
Claims 1 and 10 recite concepts that can be performed in the human mind (observation, evaluation, judgement), an example of a mental process. See Elec. Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (“[W]e have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.”). The Guidance lists a mental process as another example of an abstract idea. Guidance, 84 Fed. Reg. at 52.
Because the claims recite an abstract idea, we now proceed to determine whether the recited judicial exception is integrated into a practical application. See Guidance, 84 Fed. Reg. at 51. Specifically, we look to whether the claim recites additional elements that integrate the exception into a practical application of that exception. Limitations that are indicative of integration into a practical application include additional elements that reflect an improvement in the functioning of a computer, or an
improvement to other technology or technical field. When a claim recites a judicial exception and fails to integrate the exception into a practical application, the claim is directed to the judicial exception.
Additionally, we find that the limitations of the current claims are performed by the generically recited computer/processor and that the use of generic computer components to store and categorize message data does not impose any meaningful limit on the computer implementation of the abstract idea. While the claim recites the user of a machine learning model and the presentation of results via radar charts, these elements do not reflect a practical application of the abstract idea. The claimed steps of receiving a plurality of text data messages, categorizing said text data messages according to an emotional sense, performing mathematical functions on said text data messages, and displaying the results are all abstract data processing and visualization functions that can be and routinely are performed by generic computer systems. The claimed “machine learning model” is described at a high level and is invoked in a manner that does not amount to an improvement in the function of the computer or another technology. As to the claim as a whole, we find that there is no indication that the combination of elements improves the functioning of a computer or improves any other technology as calculating a correlation between the sum of text data messages of each category and a predetermined index value is well-understood, routine, and conventional, and therefore does not add significantly more than the abstract idea (see MPEP 2106.05(d)(ii), "receiving or transmitting data over a network").
Transmitting results of data collection and analysis is an ancillary part of the abstract idea. Elec. Power, 830 F.3d at 1354. Claim 1 does not recite features of a user interface as does Example 37 of the 2019 PEG Examples. See Appeal Br. 12. Example 37’s claims organize icons automatically on a GUI. 2019 PEG Examples 2–3. Such features are not claimed here. Core Wireless illustrates why claim 1 is not integrated into a practical application. Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018). The claimed user interface displayed a summary window of un-launched applications reached from a menu without launching the applications. Id. at 1362–63. This display of application data improved prior art interfaces that displayed an index and required users to navigate to an application and open it to access data. Id. at 1363. Here, claim 1 recites no similar features. It transmits, for presentation via a user interface, the results of abstract processes on a generic interface that is not a particular machine that is integral to the claim. Any such improvements to network affinity of a creator with other members results from generic computer automation rather than a technological improvement to computers or other technology. See Credit Acceptance, 859 F.3d at 1055;see Spec. ¶¶ 1, 35, 46, 59. Accordingly, we determine that claims 1 and 10 lack additional elements that are sufficient to integrate the abstract idea into a practical application and provide an improvement over the prior art.
“Directed to ” the Judicial Exception (Step 2A, Prong 2)
Because the claims recite an abstract idea, we now proceed to determine whether the recited judicial exception is integrated into a practical application. See Guidance, 84 Fed. Reg. at 51. Specifically, we look to whether the claim recites additional elements that integrate the exception into a practical application of that exception. Limitations that are indicative of integration into a practical application include additional elements that reflect an improvement in the functioning of a computer, or an
improvement to other technology or technical field. When a claim recites a judicial exception and fails to integrate the exception into a practical application, the claim is directed to the judicial exception.
Additionally, Applicant again asserts the argument that claim 1 “integrates the alleged abstract idea into a practical application at least because these claims recite additional elements that are a technological improvement to understanding the emotional context of text data messages on a social media platform with respect to a predetermined keyword to compare one company’s ESG scores with other companies with respect to different items.” See Amendment, page 8. The Examiner respectfully disagrees.
Under Step 2A, Prong Two of the PEG, integration into a practical application requires that the additional elements apply, rely on, or use the abstract idea in a manner that imposes a meaningful limit on the judicial exception, such as an improvement to the functioning of a computer or other technology. Merely applying an abstract idea to a particular data environment (e.g., message or ESG comparisons) does not constitute such an improvement. Here, the claim improvement lies in what is being analyzed (emotional context of text data) and the type of information being compared (ESG scores), rather than in how the computer performs the analysis. The claim does not improve the functioning of a computer, the operation of a machine learning model, or the processing of social media data itself. Instead, it merely uses generic computing components to analyze and display information in a specific field of use, which is insufficient to integrate the abstract idea into a practical application.
The aforementioned assertion that the invention is used to assess ESG scores or compare companies based on sentiment data does not, by itself, satisfy the requirements of Step 2A, Prong Two. A field-of-use limitation or an intended use, without more, does not transform an abstract idea into a practical application. The claim lacks any specific implementation detail that would render the application of the abstract idea technologically meaningful. That is, there is no indication that the recited operations are performed in a non-conventional or non-routine manner. The claim merely applies known techniques related to text processing, categorizing, and correlation, within a conventional computing environment.
As previously provided, we note that the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Specifically, we find that the limitations of the current claims are performed by the generically recited computer/processor and that the use of generic computer components to categorize and count the number of messages does not impose any meaningful limit on the computer implementation of the abstract idea. As to the claim as a whole, we find that there is no indication that the combination of elements improves the functioning of a computer or improves any other technology as transmitting an advertisement to a broadcasting entity is well-understood, routine, and conventional, and therefore does not add significantly more than the abstract idea (see MPEP 2106.05(d)(ii), "receiving or transmitting data over a network").
More broadly, we find that the instant claims merely recite abstract ideas implemented on generic computer hardware, with generic programming instructions. Unlike the claimed invention in McRO, for example, that improved how a physical display operated to produce better quality images, the claimed invention here merely uses generic computing components to evaluate content triggers and insert triggered content on a media channel. In particular, the individual steps of the instant claims are recited as performed by generic computer equipment, including steps performed by “executing a program instruction in a data processing apparatus.” Consistent with this, the Specification describes the invention as implemented on generic computer equipment with generic computer instructions.
Simply reciting generic computer hardware for performing an abstract idea does not integrate that abstract idea into a practical application. See Alice, 573 U.S. at 225—26 (“Viewed as a whole, petitioner’s method claims simply recite the concept of intermediated settlement as performed by a generic computer. The method claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to ‘nothing significantly more’ than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer.” (internal citations omitted)); DealertrackInc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) (“Simply adding a ‘computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible.”). The invention of the instant claims does not focus on improving computers as tools, but rather certain independently abstract ideas that use computers as tools. See Elec. Power Group, 830 F.3d at 1354. The Guidance also discusses other ways that additional elements can integrate the judicial exception into a practical application—e.g., a particular machine or manufacture, a particular transformation, and a particular treatment of a disease. See Guidance, 84 Fed. Reg. at 55. The instant claims also lacks such features.
Accordingly, claim 1 does not integrate the recited abstract ideas into a practical application. For the same reasons, the remainder of the claims do not integrate the recited abstract ideas into practical applications.
We find that the additional limitations of the dependent claims do not integrate the abstract ideas into practical applications; rather, they simply recite the use of generic computer components and do not impose meaningful limits on the computer implementations of the abstract ideas.
Inventive Concept (Step 2B)
To determine whether a claim provides an inventive concept, we consider the additional elements - individually and in combination - to determine whether they (1) add a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field or (2) simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Guidance, 84 Fed. Reg. at 56. Also, we reevaluate our conclusions about the additional elements discussed in the previous step. Id.
We find that the limitations of the instant claims, individually and in an ordered combination, do not recite significantly more than the abstract idea because the limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. Thus, Applicant’s arguments are not persuasive.
In sum, the limitations of claims 1 and 10, considered individually and in combination, do not provide an inventive concept. For the same reasons, claims 3-9 do not provide inventive concepts.
Conclusion
Claims 1 and 3-10 are directed to abstract ideas (certain method of organizing human activity (commercial interactions, specifically advertising, marketing or sales activities or behaviors) and mental processes). The additional limitations of the claims, considered individually and in combination, do not provide an inventive concept. Accordingly, we maintain the claim rejections under 35 U.S.C. 101 as the instant claims do not recite patent-eligible subject matter.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL KIM whose telephone number is (571)272-2737. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neveen Abel-Jalil can be reached on (571) 270-0474. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Paul Kim/
Primary Examiner
Art Unit 2152
/PK/