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 Arguments
Applicant's arguments filed with respect to the rejection made under § 101 have been fully considered but they are not persuasive.
Applicant argues that the claims are not directed to an abstract idea and, even viewed as such, are integrated into a practical application that improves the functioning of a computer-implemented recommendation system; and the claimed operations are performed under specific conditions designated to reduce unnecessary computations during item recommendation, thereby improving system efficiency.
Examiner respectfully disagrees.
This is a problem at the abstract layer of organizing human activities, not one borne out of technology. The problems noted in Specification do not highlight any failures of modern computers. These are business implementation problems and do not set forth any deficiencies that are particular to computer capabilities or any other technology. "In sum, 'software can make non-abstract improvements to computer technology just as hardware improvements can.' Enfish, 822 F.3d at 1335. But to be directed to a patent-eligible improvement to computer functionality, the claims must be directed to an improvement to the functionality of the computer or network platform itself." Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020) (emphasis added).
Specifically, making recommendations based on changes in user’s body shape is an abstract endeavor. It does not become technological merely by using generic computer elements such as a processor to perform the abstract making recommendation functions at such a high level. The claimed invention does not improve any particular machine or allow one to perform a new function that it was not previously able to do. Instead, it merely chooses one that is properly scaled. This is analogous to, e.g., choosing an appropriately-sized memory when an application requires more storage or a higher-powered processor that is capable of performing faster calculations when those are necessary. It is still using a generic computing element as a tool to perform an abstract function, without setting forth any technological improvements. "[P]atents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied, are patent ineligible under § 101. Recentive Analytics, Inc. v. Fox. Corp., Fed Cir. No. 2023-2437 (Apr. 18, 2025) (slip op. at 18).
These elements are all abstract and when viewed in combination only amount to applying the abstract idea on generic computers. "Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application…" MPEP 2106.04(d) II. (emphasis added).
Accordingly, the rejection is maintained.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
With respect to claims 1-10, claim limitations “unit configured to…“ has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder a “unit” coupled with functional language “for acquiring, determining, identifying ” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 1-10 are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
It is reiterated that this is a claim interpretation, and is not a rejection.
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 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (a judicial exception without significantly more). Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014). Claims 1-12, each considered as a whole and as an ordered combination, are directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 1 recites an information processing apparatus. Claim 11 recites a method. Claim 12 recites a non-transitory computer-readable media.
Step 2A, prong 1: Claim 11 recites the abstract idea of recommending a substitute of a personal property (garment) based on the body shape of the user. This idea is described by the following steps:
A method comprising:
acquiring information on a body shape of a user, the information including at least purchase history of the user who has purchased an item having different sizes;
determining, in response to change in size of a newly purchased item from a size of a same type of an item purchased by the user in past, whether a change of the body shape of the user is equal to or larger than a predetermined threshold based on the acquired information on the body shape of the user; and
in response to determining that the change of the body shape is equal to or larger than the predetermined threshold, identifying, from purchased items by the user, a replacement target item that no longer fits the user due to the change in the body shape, selecting a substitute item that is of a same type as the identified replacement target item and is of a size that fits the user’s changed body shape, and providing information for proposing purchase of the selected substitute item.
Claims 1 and 12 recite equivalent limitations.
This idea falls into the certain methods of organizing human activity grouping of abstract ideas as it is directed towards commercial interactions including advertising, marketing or sales activities or behaviors (i.e., recommending substitute merchandise).
Step 2A, prong 2: Claims 1 and 12 recite additional elements that fail to integrate the abstract idea into practical application.
Claims 1 and 12 recite an information processing apparatus; and a non-transitory, computer-readable media storing instructions that are executable by the one or more processors to cause the computing system to perform operations. However, these elements are generic computing components (see at least paragraphs 049) that are simply used to perform operations that would otherwise be abstract (see MPEP2106.05(f)).
Step 2B: Claims 1, 11 and 12 fail to recite additional elements that amount to an inventive concept.
For the reasons identified with respect to Step 2A, prong 2, claims 1, 11 and 12 fail to recite additional elements that amount to an inventive concept. For example, use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more (see MPEP 2106.05(g)).
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information). For example, at least paragraph 31 describes a network system that facilitates a request for services received from a user including a selection of a merchant.
Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93. For example, at least paragraph 107describes presenting an offer for an add-on order to be added to a primary order.
Dependent Claims Step 2A:
The limitations of the dependent claims merely set forth further refinements of the abstract idea identified at step 2A—Prong One, without changing the analysis already presented. Additionally, for the same reasons as above, the limitations fail to integrate the abstract idea into a practical application because they use the same general technological environment and instructions to implement the abstract idea as the independent claims identified at step 2A—Prong Two.
Dependent Claims Step 2B:
The dependent claims merely use the same general technological environment and instructions to implement the abstract idea. These do not amount to significantly more for the same reasons they fail to integrate the abstract idea into a practical application. Moreover, the Specification also indicates this is the routine use of known components for the same reasons presented with respect to the elements in the independent claims above.
Thus, when considering the combination of elements and the claimed invention as a whole, the claims are not patent eligible.
Allowable Subject Matter
Claims 1-12 remain allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action.
The prior art of record neither anticipates nor renders obvious the combination of: acquiring information on a body shape of a user, the information including at least purchase history of the user who has purchased an item having different sizes;
determining, in response to change in size of a newly purchased item from a size of a same type of an item purchased by the user in past, whether a change of the body shape of the user is equal to or larger than a predetermined threshold based on the acquired information on the body shape of the user; and in response to determining that the change of the body shape is equal to or larger than the predetermined threshold, identifying, from purchased items by the user, a replacement target item that no longer fits the user due to the change in the body shape, selecting a substitute item that is of a same type as the identified replacement target item and is of a size that fits the user’s changed body shape, and providing information for proposing purchase of the selected substitute item.
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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/MILA AIRAPETIAN/Primary Examiner, Art Unit 3688