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
The amendment filed on November 26, 2025 cancelled no claims. Claims 1, 3, 5, 8, 10, 12, and 15-20 were amended and no new claims were added. Thus, the currently pending claims addressed below are claims 1-20.
Claim Objections
The amendment filed on November 26, 2025 overcomes the Claim Objections of claims 16-20 raised in the Office Action dated September 17, 2025. Thus, the objections are hereby withdrawn.
Double Patenting
The Terminal Disclaimer filed on November 26, 2025 has overcome the Double Patenting rejections of claim 1-20 raised in the Office Action dated September 17, 2025. Thus, the rejections are hereby withdrawn.
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 directed to a method, a system and a computer program product which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
However, claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Independent claims 1, 8, and 15 recite(s) the following abstract idea: (Examiner note: The server and its functions; the multiple different client devices and their functions; and the content selection service and its functions are outside of the scope of the claimed invention which is to a client computing device (i.e., data processing apparatus) and the functions it performs. As such, the server and its functions, the multiple different client devices and their functions, and the content selection service and its functions have been included as part of the abstract idea itself because they cannot be considered “additional elements” of the claimed invention.)
providing access data corresponding to an information source access history to a server;
generating a profile vector based on the information source access history;
receiving, from the server, singular vectors and weights of a model generated based on multiple sets of access data provided to the server by multiple different client devices;
generating a reduced dimension vector of the profile vector using the singular vectors received from the server;
classifying the reduced dimension vector to identify a class identifier based on the weights of the model received from the server;
transmitting, to a content selection service, a request for content that includes the class identifier; and
presenting content provided by the content selection service in response to the request for content that includes the class identifier.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely advertising, marketing and sales activities or behaviors because they merely gather data, analyze the data, determine results based on the analysis, generate tailored content based on the results, and transmit the tailored content. In addition to being steps that fall within the “Certain Method of Organizing Human Activity” bucket, the generating and classifying steps, are also considered to fall within the “Mathematical Concepts” grouping of abstract ideas. Accordingly, the claim recites an abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application because the claim only recites the additional elements of one or more client computing device (i.e., data processing apparatus) comprising one or more memory devices and instructions causing the performance of operations which is a general-purpose computer with generic computer component upon which the abstract idea is merely applied.
The following limitations, if removed from the abstract idea and considered additional elements, merely perform generic computer function of processing, communicating (e.g., transmitting and receiving), and displaying:
providing, to a server, access data corresponding to an information source access history of the client device (transmitting data);
receiving, from the server, singular vectors and weights of a model generated based on multiple sets of access data provided to the server by multiple different client devices (receiving data);
transmitting, to a content selection service, a request for content that includes the class identifier (transmitting data); and
presenting content provided by the content selection service in response to the request for content that includes the class identifier (receiving data and displaying data).
The additional technical elements above are recited at a high-level of generality (i.e., as a generic processor and generic computer components performing a generic computers function of processing, communicating and displaying) such that it amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and generic computer components. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (see MPEP 2106.05(e) and Vanda memo).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on one or more computers, or merely uses computers as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
Thus, the claim is “directed to” an abstract idea (i.e. “PEG” Revised Step 2A Prong Two=Yes)
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using one or more client computing device (i.e., data processing apparatus) comprising one or more memory devices and instructions to perform the claimed functions amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and one or more generic computer component.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on one or more computers, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent-eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires one or more general-purpose computer and generic computer components (as evidenced from paragraphs 73 and 74 of the applicant’s specification); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility. Finally, the following limitations, if removed from the abstract idea and considered additional elements, would be considered insignificant extra solution activity as they are directed to merely receiving, storing and/or transmitting data:
providing, to a server, access data corresponding to an information source access history of the client device (transmitting data);
receiving, from the server, singular vectors and weights of a model generated based on multiple sets of access data provided to the server by multiple different client devices (receiving data);
transmitting, to a content selection service, a request for content that includes the class identifier (transmitting data); and
presenting content provided by the content selection service in response to the request for content that includes the class identifier (receiving data and displaying data).
Thus, taken individually and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea) (i.e., “PEG” Step 2B=No).
The dependent claims 2-7, 8-14, and 16-20 appear to merely further limit the abstract idea by adding an additional step of determining parameters of clusters which is considered part of the abstract idea (Claims 2, 9, and 16); adding an additional step of adjusting a classifier model which is considered part of the abstract idea (Claims 3, 10, and 17); adding an additional step of determining scores of the cluster which is considered part of the abstract idea (Claims 4, 11, and 18); further limiting classifying the reduced dimensional vector which is considered part of the abstract idea (Claims 5, 12, and 19); adding an additional categorizing step which is considered part of the abstract idea (Claims 6, 13, and 20); and adding an additional step of determining that two applications that have matching browsing patterns, as well as, further limiting the categorizing which are both considered part of the abstract idea (Claims 7 and 14), and therefore only further limit the abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes), does/do not include any new additional elements that are sufficient to amount to significantly more than the judicial exception, and as such are “directed to” said abstract idea (i.e. “PEG” Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. “PEG” Step 2B=No)..
Thus, based on the detailed analysis above, claims 1-20 are not patent eligible.
Claim Rejections - 35 USC § 112
The amendment filed on November 26, 2025 has overcome the 35 U.S.C. 112(b) rejections of claims 1-20 raised in the Office Action dated September 17, 2025. Thus, the rejections are hereby withdrawn.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As per the “Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications” issued on January 21, 2011 and MPEP 2161.01, the first paragraph of § 112 contains a written description requirement that is separate and distinct from the enablement requirement. To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. The written description requirement of § 112, ¶ 1 applies to all claims including original claims that are part of the disclosure as filed. Claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function.
Independent claims 1, 8, and 15 have been amended to recite:
“receiving, by the client device from the server, singular vectors and weights of a model generated based on multiple sets of access data provided to the server by multiple different client devices”; and
“classifying, by the client device, the reduced dimension vector to identify a class identifier based on the weights of the model received from the server”.
These limitations are functional limitations that describe a genus of how the client device is expected to classify the reduced dimension vector. The breadth of said genus being classifying the reduced dimension vector using the received weights in all possible ways. The examiner has been unable to find support for the claimed genus in the applicant’s disclosure. Based on the applicant’s disclosure, the examiner has only been able to identify a single species of the client device classifying the reduced dimension vector using weights obtained from the server. In this species, both the server and the client device have store thereon a classifier model 218. Initially, the classifier model 218 resides only on the server. The server initially provides to the client device the classifier model 218 at a first time; determines, at a second time, weights of the classifier model 218 based on multiple sets of access data received from multiple different client devices; and transmits the weights to the client device; then the client device: classifies the reduced dimension vector to identify a class identifier by applying the weights to the classifier model 218. Thus, the only manner of the client device classifying the reduced dimension vector to identify a class identifier based on the weights of the model received from the server that is disclosed in the applicant’s disclosure is when both the server and the client device have stored thereon a specific classifier model, the weight identified by the server and transmitted to the client device are associated with the specific classifier model, and the client device executes the classifier model based on the received weights. The examiner has been unable to find support for any other species of a client device classifying the reduced dimension vector to identify a class identifier based on the weights of the model received from the server.
The test for sufficiency, under the first paragraph of 35 USC 112(a) written description, is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. In order to find support for the claimed genus of the client device classifying using any means the reduced dimension vector based on weights received from a server, the applicant’s disclosure would need to have support for enough species of classifying the reduced dimension vector based on weights received from a server to reasonably convey to one skilled in the art that the applicant has possession of the claimed genus recited in claims 1, 8, and 15. The examiner finds that the single species of classifying the reduced dimension vector based on weights received from a server is insufficient to convey to one of ordinary skill in the art that the applicant had possession of the claimed genus. As such, there is no support in the applicant specification for the genus of invention in which the client device classifies, by any possible means, the reduced dimension vector to identify a class identifier based on the weights of the model received from the server.
As per the “Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications” issued on January 21, 2011 and MPEP 2161.01, claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. The level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Computer-implemented inventions are often disclosed and claimed in terms of their functionality. This is because writing computer programming code for software to perform specific functions is normally within the skill of the art once those functions have been adequately disclosed. Nevertheless, for computer-implemented inventions, the determination of the sufficiency of disclosure will require an inquiry into both the sufficiency of the disclosed hardware as well as the disclosed software due to the interrelationship and interdependence of computer hardware and software. When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. Specifically, if one skilled in the art would know how to program the disclosed computer to perform the necessary steps described in the specification to achieve the claimed function and the inventor was in possession of that knowledge, the written description requirement would be satisfied. If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed computer to perform the claimed function, a rejection under § 112, ¶ 1 for lack of written description must be made. In the instant case, the claimed invention fails to satisfy the written description requirement because one or ordinary skill in the art would not know how to program the client device to classify the reduced dimension vector to identify a class identifier based on the weights of the model received from the server if the server did not generate the weights based on the classifier model stored on the server, and the same classifier model, stored on the client device, was not was used by the client device to classify the reduced dimension vector. There are no algorithms that describe the how the applicant’s invention performs this process using any other mean of classifying the reduced dimension vector using weights received from the server. There are no flow charts that describe how the applicant’s invention performs this process using any other mean of classifying the reduced dimension vector using weights received from the server. Hence, it is clear that the genus of claims 1, 8, and 15 fail to satisfy the written description requirement.
For the purpose of prosecuting the claims, the examiner is going to interpret claims 1, 8, and 15, as if they recited: “receiving, by the client device and from the server, a first instance of a classifier model”; “receiving, by the client device and from the server, singular vectors and weights derived from a second instance of the classifier model, wherein the singular vectors and weights derived based on applying multiple sets of access data provided to the server by multiple different client devices to the second instance of the classifier model”; and “classifying, by the client device using the first instance of the classifier model, the reduced dimension vector to identify a class identifier, wherein the client device applies the weights of the model received from the server to the first instance of the classifier model”.
Possible Allowable Subject Matter
Claims 1-20 would be allowable over the prior art if the applicant were to be able to overcome the 35 USC 101 rejections and the 35 USC 112 rejections above.
The following is a statement of reasons for the indication of allowable subject matter: The examiner has found prior art (see Leng et al. - "Topic model based behaviour modeling and clustering analysis for wireless network users, 2015, " 2015 21st Asia-Pacific Conference on Communications (APCC), pp. 410-415; Hicks - 7,827,186; and Ezepov - 10,552,505; and Wang et al. - 10,666,741) that discloses a method, system, and one or more non-transitory computer readable medium, comprising:
a client device and a server (i.e., data processing apparatus) performing the steps of:
receiving, by the server and from the client device, access data corresponding to an information source access history of the client device;
determining, by the server, singular vectors and weights of a model based on the access data provided to the server;
determining, by the server, weights of a classification model based on the access data provided to the server
generating, by the server, a reduced dimension vector of the access data using the singular vectors;
classifying, by the server, the reduced dimension vector to a class based on the weights of the classification model, wherein the class has a class identifier;
transmitting, by the server and to the client device, the class identifier;
transmitting, by the client device and to a content selection service, a request for content that includes the class identifier;
receiving, from the content selection server, content provided in response to the request for content that includes the class identifier; and
presenting, by the client device, the content provided by the content selection service in response to the request for content that includes the class identifier.
However, the examiner has been unable to find prior art, that would be obvious to combine with Leng, Hicks, Ezepov, and Wang, in which the server provides a first instance of the classifier model to the client device; executes a second instance of the classifier model based on access data received from multiple different client devices to generate singular vectors and weights of the second instance of the classifier model; and transmitting only the singular vectors and weights of the second instance of the classifier model, wherein the client device applies the weights received from the server to the first instance of the classifier model in order to classify the reduced dimension vector using the first instance of the classifier model to identify a class identifier.
As such claims 1-20 contain limitations that would be allowable over the prior art if the applicant were to be able to overcome the 35 USC 101 rejections and the 35 USC 112 rejections above.
Response to Arguments
The applicant's arguments filed November 26, 2025 have been fully considered but they are not persuasive.
The applicant argues that the examiner’s analysis improperly dissects the claims in a manner inconsistent with MPEP 2106.04(II) and the August 2025 Memo by bundling the novel computational steps (“generating” and “classifying” into the abstract idea itself. The examiner disagrees. The applicant appears to be misconstruing both MPEP 2106.04(II) and the August 2025 Memo.
MPEP 2106.04(II) is a two-part analysis that first requires the examiner to determine whether the claim recites a judicial exception as described in MPEP 2106.04(II)(1) and then whether the claim recites “additional elements” that integrate the judicial exception into a practical application as described in MPEP 2106.04(II)(1). Thus, it is clear the examiner has dissected the claim in the exact manner required under MPEP 2106.04(II)(1). Perhaps the applicant is unclear as to what constitutes an “additional element” of a claim. An “additional element” is defined as an element of the claim that is outside of the identified abstract idea itself. Since the argued “generating” and “classifying” steps are part of the abstract idea, the argued bundling of these novel steps would be an improvement to an abstract idea which is an improvement in ineligible subject matter (see SAP v. Investpic: Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because they are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms. Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non-abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract.). The only “additional elements” recited in the claims are one or more client computing device (i.e., data processing apparatus) comprising one or more memory devices and instructions causing the performance of operations which, when considered individual and as a whole, amounts to more than a general-purpose computer with generic computer components upon which the abstract idea is merely applied. As such, the additional elements of the claim are insufficient to transform an abstract idea into a practical application under Step 2a, Prong 2 and insufficient to be considered significantly more under Step 2b. Thus, the rejection has been maintained.
The August 2025 memo did not change the process used by the USPTO to determine whether a claim was eligible under 35 USC 101. Instead, it was merely a reminded to make sure that the steps identified as part of the abstract idea actually falls within the boundaries required by its classification bucket. First, the courts have found that gathering data, analyzing data, determining results, generating tailored content, and transmitting data such as the tailored content are all parts of an abstract idea directed to “Certain Methods of Organizing Human Activity” (see at least the Electric Power Group, Int, Ventures v. Erie Indemnity, Digitech, Berkheimer, and Int. Ventures v. Cap One Bank decision). Since the argued “generating” and “classifying” steps deal with analyzing data and determining results they have been properly included as part of the abstract idea itself and, as such, is consistent with the August 2025 Memo. The examiner has also clearly included the “providing”, “receiving”, and “transmitting” steps as part of the abstract idea that falls within the “Certain Methods of Organizing Activity” bucket. Second, the Mathematical Concept bucket requires that identified limitation recite mathematical relationships; mathematical formulas or equations; and/or mathematical calculations. Since the argued “generating” and “classifying” steps require generating a vector (e.g., a mathematical relationship associated with the access data), generating a reduced vector (e.g., a mathematical calculation), and classifying the reduced dimension vector (e.g., a mathematical relationship between the classification and the reduced dimension vector), the “generating” and “classifying” steps being identified as part of a Mathematical Concept is also consistent with the August 2025 memo. Note the examiner did not indicate that the providing, receiving, or transmitting steps where “Mathematical Concepts” because such steps do not recite mathematical relationships; mathematical formulas or equations; and/or mathematical calculations. Thus, the examiner analysis is consistent with the August 2025 memo and the rejection has been maintained.
The applicant indicates that the examiner has bundled the “generating” and “classifying” steps into the abstract idea and then dismisses the “providing”, “receiving”, and “transmitting” steps as generic. The examiner strongly disagrees with this characterization of the rejection. The examiner has clearly indicated that the “generating”, “classifying”, “providing”, “receiving”, and “transmitting” are all part of the abstract idea itself with respect to the identified “Certain Method of Organizing Human Activity”. Then, the examiner indicates that the “generating” and “classifying” steps also recite an abstract idea that falls within the “Mathematical Concepts” bucket. As such, each and every limitation of the claim, aside from the general-purpose computer with generic computer components, has been identified as part of the abstract idea itself. Thus, the examiner has not dismissed the “providing”, “receiving”, and “transmitting” as the applicant contends. The examiner notes in the rejection that even if the “providing”, “receiving”, and “transmitting” were removed from the abstract idea and considered “additional elements” these steps would be considered insignificant extra-solution activity incapable of transforming an abstract idea into a practical application under Step 2a, Prong 2 and incapable of being considered significantly more under Step 2b. Thus, the applicant’s characterization of the rejection is inaccurate, and the rejection has been maintained.
The applicant asserts that the claims recite a technical solution to a technical problem with conventional personalized content delivery system and, as such, should overcome the 35 USC 101 rejection under Step 2a, Prong 2 because they result in technical improvements to a computer and network functionality. The examiner disagrees. First, in order to overcome a 35 USC 101 rejection under Step 2a, Prong 2, it is the “additional elements” the must provide a technical solution to a technical problem. Additional elements are defined as those elements outside the identified abstract idea itself. The only additional elements recited in the claims are a general-purpose computer with generic computer component which are merely used as a tool to apply the abstract idea. Thus, the purported technical solution to a technical problem with conventional personalized content delivery system is rooted solely in the abstract idea itself which is merely applied using a general-purpose computer. Improvement of this nature, even when the the applicant considers them technical improvement, are improvements to an abstract idea which are improvements in ineligible subject matter (See SAP v. Investpic as cited by the examiner in the first argument). The computer itself and the functionality of a network are not changed by the applicant’s invention. The general-purpose computer itself still has the same hardware and executes software in the same manner that it always has. Thus, the computer itself remains unchanged. Likewise, the network still has the same capacity for carrying data, the same transmission speeds, and functions in the same manner in which it always has. The execution of a software program on a computer that merely sends data over said network does not change the network itself in any manner. As such, merely applying the abstract idea using the general-purpose computer with generic computer components does not improve the computer itself or the network itself. Thus, the rejection has been maintained.
The applicant argues that the claims should overcome the 35 USC 101 rejection under Step 2b because the distributed architecture in the claims is not well-understood, routine, or conventional set of features. The examiner disagrees. The claims do not recite an invention to distributed architecture. The scope of the applicant’s invention is limited to operations performed by only the client device. This means the scope of the claims does not include the server and it’s functions. Even if the claims did positively recite the server, the server merely transmits data (e.g., singular vectors and weights) to the client device. This type of architecture is notoriously well-known as a client-server architecture. Since, the server itself is outside the scope of the applicant’s invention it cannot be considered an “additional element” of the claimed invention. Thus, the only “additional element” of the claim invention which can be analyzed under Step 2b is the general-purpose computer with generic computer components (e.g., the client device) upon which the abstract idea is merely applied which is insufficient to be considered “significantly more” under Step 2b. Thus, the rejection has been maintained. (Examiner note: If the applicant truly believes that such an arrangement of devices each performing a significant step of the abstract idea is a distributed architecture that is not well-understood and conventional, then the examiner suggests amending the claims to positively recite both the client device and the server within the scope of the claim. Should such an amendment be made the applicant may be able to provide convincing argument that the arrangement of devices and the specific steps performed by both the client device and the server results in an improvement that overcomes the 35 USC 101 rejection in a manner similar to the claims of the BASCOM decision.)
The applicant’s arguments with regards to the 35 USC 112(b) rejections are moot, as the claim amendment has overcome the 35 USC 112(b) rejections. The examiner notes, however, that the claim amendment has resulted in a new 35 USC 112(a) rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Huang et al. (2012/0203723) which discloses generating recommendations based on performing dimensionality reduction on user history data, wherein users are grouped based on an model that used aggregated dimensionally reduced user profiles of a plurality of users.
Skoe et al. (8,521,594) which discloses classifying users into groups that have group identifiers and using these group identifier to obtain content for the user which preserve the privacy of the individual users.
Ishii et al. (2011/0302032) which discloses generating recommendations for a user by performing dimensionality reduction on the user access data, wherein the user access data includes the day of the week in which access occurred.
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 JOHN W VAN BRAMER whose telephone number is (571)272-8198. The examiner can normally be reached Monday-Thursday 5:30 am - 4 pm EST.
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/John Van Bramer/Primary Examiner, Art Unit 3622