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 .
Status of Claims
This action is in reply to the claims filed on 05/22/2026.
Claim 1-5, 8-14, 17-19 are amended.
Claims 7 and 16 are cancelled.
Claims 1-6, 8-15, and 17-19 are currently pending and have been examined.
Subject Matter Free of Prior Art
Claims 1-6, 8-15, and 17-19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Independent claims 1, 10, and 19 have been amended to incorporate the allowable subject matter of cancelled claims 7 and 16, as indicated in the Office Action on 01/22/2026. The amended limitations recite, in part: wherein the predetermined condition is a condition that, among the products included in the candidate group, a number of products that have not yet been displayed as recommended products is greater than or equal to a predetermined number.
The following references have been identified as the most relevant prior art to the claimed invention: Soohoo et al. (US 2020/0250731 A1) and Correa et al. (US 2022/0058713 A1). Soohoo discloses acquiring product data including a tag, identifying a relevant product in response to a display request, searching for product data and extracting corresponding tags, and determining whether the corresponding products satisfies a predetermined condition (see pgs. 6-7 of the Office Action on 01/22/2026). However, Soohoo does not disclose or render obvious: wherein the predetermined condition is a condition that, among the products included in the candidate group, a number of products that have not yet been displayed as recommended products is greater than or equal to a predetermined number. Correa discloses modifying a candidate group of recommended items selected for display by adding or removing items in ¶ [0037]. However, Correa does not disclose or render obvious: wherein the predetermined condition is a condition that, among the products included in the candidate group, a number of products that have not yet been displayed as recommended products is greater than or equal to a predetermined number.
Moreover, even assuming arguendo that the features of the claims exist individually, the combination of features as claimed would not have been obvious to one of ordinary skill in the art because any combination of the evidence obtained to reach the combination of features as claimed would require substantial reconstruction of Applicant' s claimed invention relying on improper hindsight bias.
Accordingly, claims 1-6, 8-15, and 17-19 are determined to be free of prior art rejections but remain rejected under 35 USC 101 for reasons explained below.
Claim Rejections- 35 U.S.C. § 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 1-6, 8-15, and 17-19 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Under Step 1 of the subject matter eligibility (SME) analysis described in MPEP 2106.03, the instant claims fall within the four statutory categories of invention identified by 35 U.S.C. 101. In the instant case, claims 1-9 are directed to a method, claims 10-18 are directed to a manufacture, and claim 19 is directed to a system. Claims 1, 10, and 19 are parallel in nature, therefore, the analysis will use claim 1 as the representative claim.
In Step 2A Prong One, it must be considered whether the claims recite a judicial exception. Claim 1, as exemplary, recites abstract concepts including: acquiring, for plurality of products, product data including a tag expressing a feature of each product; identifying a relevant product that is relevant to a user in response to a display request or an update request of a predetermined screen from the user; searching the product data and extracting the tag attached to the relevant product; extracting, based on the extracted tag, a candidate group of products to be recommended to the user; determining whether the extracted candidate group satisfies a predetermined condition to control selection of products to be displayed on the predetermined screen, the predetermined condition being a condition that, among the products included in the candidate group, a number of products that have not yet been displayed as recommended products is greater than or equal to a predetermined number; when the extracted candidate group satisfies the predetermined condition, randomly selecting, from among the candidate group, a predetermined number of products corresponding to a number of display products to be displayed on the predetermined screen; generating and controlling to display, on the predetermined screen, based on the randomly selected predetermined number of products, a menu screen displaying the randomly selected predetermined number of products as recommended products; and in response to the update request of the predetermined screen from the user, re-executing the determining whether the extracted candidate group satisfies the predetermined condition, the randomly selecting, and the generating and controlling to display steps to update the menu screen with a different set of recommended products.
These identified limitations recite an abstract idea best characterized as “identifying relevant products to recommend a user”, which is a sales activity. Sales activities are commercial interactions classified under “Certain Method of Organizing Human Activities. Accordingly, claims 1, 10, and 19 recite an abstract idea. See MPEP 2106.04.
In Step 2A Prong Two, 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.
Instant claims 1, 10, and 19 recite additional elements including: a computer comprising: a memory storing a program; and at least one processor that executes the program; a terminal device; a first device; and a second device. The predetermined screen and menu screen are not explicitly tied to hardware, but are understood to refer to a computer display. The re-executing step is not considered an additional element because this step is just performance of the same abstract idea again, and the claims do not recite any technical mechanism for performing the re-execution. The computer, screen, terminal device, and first and second devices are recited at a high-level of generality (i.e., as a generic device performing generic computer functions) such that these recitations amounts to no more than “apply it” or mere instruction to implement the abstract idea on a computer. Implementing an abstract idea on a generic computer does not integrate the abstract idea into a practical application in Step 2A Prong Two similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. See MPEP 2106.05(f). The combination of these additional elements is no more than mere instruction to apply an exception with a generic computer. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05. Claims 1, 11, and 19 are thus directed to an abstract idea.
Under Step 2B of the SME analysis, if it is determined that the claims recite a judicial exception that is not integrated into a practical application of that exception, it is then necessary to evaluate the additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above with respect to integration of the abstract idea into a practical application, the additional element(s) individually and in combination are merely being used to apply the abstract idea to a general computer components. For the same reason, the elements are not sufficient to provide an inventive concept. As explained in MPEP 2106.05(f), implementing an abstract idea with a generic computer does not add significantly more in Step 2B. Therefore, the additional elements, alone or in ordered combination, there is no inventive concept in the claim, and thus claims 1, 11, and 19 are not patent eligible.
Dependent claim(s) 2-6, 8-9, 15 and 17-18 and do not aid in the eligibility of the independent claims. These claims merely further define the abstract idea without reciting any further additional elements. Thus, dependent claims 2-6, 8-9, 15 and 17-18 are also ineligible.
Dependent claim 12-14 recites additional elements including: a display. Similar to the additional elements identified above, the display is described in ordinary terms and merely used as a generic tool to perform the abstract idea. This limitation does no more than generally link the abstract idea to a particular technological environment which cannot integrate an abstract idea into a practical application, or provide amount to significantly more than the abstract idea itself. See MPEP 2106.05(h). Accordingly, claim(s) 12-14, considered both individually and as a combination, is/are ineligible.
Response to Arguments
Applicant’s arguments filed 05/22/2026 with respect to the 35 U.S.C. § 101 rejections of claims 1-6, 8-15, and 17-19 have been fully considered but they are not persuasive.
On page 11 of the Remarks, Applicant argues amended claim 1 “does not merely recite recommending a product” because the amended limitations “define a specific data-processing workflow and a specific screen-generation operation implemented by a processor”.
The Examiner respectfully disagrees. Claim 1 still sets forth abstract activity of identifying a relevant product, searching for related products based on a shared tag, determining whether enough unseen products remain, and randomly selecting some of the products to present to a user. The step of re-executing this process upon request is part of the same sales activity and recites no improvement to computer operation. The “structured series of processes” which Applicant relies on to show “a particular machine-implemented selection and display control mechanism”, each describe the abstract product identification process itself in greater detail. These features (e.g., data acquisition, tag extraction, conditional evaluation, filtering of products that have not yet been displayed, random selection based on a number of display products, generating a menu screen) describe how the recommendation and selection are carried out, and not how the underlying technology performs it. None of the limitations recites a technical mechanism, such as particular data structure, algorithm, or display rendering process, that differs from generic computer operation.
Applicant further argues that “the menu screen generation step defines how the system controls and structures the displayed interface” and that the recited re-execution “defines how the system dynamically controls the display in response to user input, rather than merely determining which products to recommend” (Remarks. Pg.12-13).
The Examiner respectfully disagrees. These characterizations are not supported by the claim language or specification. Claim 1 recites “generating and controlling to display, on the predetermined screen, based on the randomly selected predetermined number of products, a menu screen displaying the randomly selected predetermined number of products as recommended products”. The claim does not recite any structuring of the interface (e.g., layout, arrangement, etc.) that differs from existing displays, or any technical mechanisms for updating the display. Instead, claim 1 simply describes outputting results of the selection and then outputting new results. Displaying the outcome of an abstract idea is insignificant post-solution activity (necessary data gathering and outputting) and does not add a meaningful limitation to the method of identifying relevant products to recommend a user. See MPEP 2106.05(g). Additionally, because the recited computer and display screen are used in their ordinary capacity they amount to no more than “apply it”. See MPEP 2106.05(f).
Applicant repeatedly characterizes the claims as performing selection “in a single processor-controlled operation”, however this feature is not recited in claim 1 or 11, and neither Applicant nor the Specification describes any technical significance to performing the selection this way. Accordingly, this argument does not support claim eligibility.
Applicant further argues that the Examiner’s reference to generic computer components does not address the “specific processor-controlled operations” of controlling how data is processed and presented by the computer system. However, those operations simply instruct the computer to output the recommendation result on a display, re-execute the abstract product identification, and output the new result. The use of a computer in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer after the fact to an abstract idea does not integrate a judicial exception into a practical application or provide significantly more. See MPEP 2106.05(f).
On page 13 of the Remarks, Applicant argues “the ordered combination of limitations provides significantly more than the alleged abstract idea”. Specifically, Applicant argues the claims recite a “structured sequence” of tag acquisition, tag extraction, conditional evaluation, randomized selected based on display count, and controlled menu screen generation, together with re-execution of the processing to update the displayed recommendations in response to an update request, which “represents a specific implementation of data processing and display control that goes beyond merely applying a recommendation concept on a generic computer”.
The Examiner respectfully disagrees. An inventive concept "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself." Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016). Instead, an "inventive concept" is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself. See MPEP 2106.05.
The features Applicant argues in the “structured sequence” are an ordered combination of abstract limitations with generic processing and display steps which add nothing significant to the abstract idea itself. The additional elements recited in claim 1, a computer and (computer) screen, perform well-understood, routine, and conventional functions of acquiring data (see MPEP 2106.05(d) “Receiving or transmitting data over a network, e.g., using the Internet to gather data”), analyzing data and displaying a result (see MPEP 2106.05(f) “Requiring the use of software to tailor information and provide it to the user on a generic computer, Intellectual Ventures I LLC v. Capital One Bank (USA)”). Applicant’s remarks describe what the computer selects and displays, but do not identify any respect in which the acquiring, extraction, evaluating, selecting, displaying, or re-executing is performed differently from the generic, well-understood manner in which computers already perform these functions.
For at least these reasons, the Examiner is maintaining the 101 rejection of claims 1-6, 8-15, and 17-19.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
C. Dabre and A. Despande (NPL Reference U) proposes a recommendation system using clustering method based on item category and weight.
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 KENNEDY A GIBSON-WYNN whose telephone number is (571)272-8305. The examiner can normally be reached M-F 8:30-5:30 PM.
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 and Kambiz Abdi can be reached at 571-272-6702. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/K.G.W./Examiner, Art Unit 3688
/KELLY S. CAMPEN/Primary Examiner, Art Unit 3691
