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 .
Priority
This application claims priority to US Provisional Application No. 63/495,875 filed April 13, 2023.
Claim Rejections - 35 USC § 112(a)
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.
Claim 3 is 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.
Regarding claim 3, claim 3 recites 3. The method of claim 1 in which the members of the set are determined by set management software implemented on a computer. The specification as originally filed does not adequately describe “set management software” or how such software performs determining members. That is, the specification is devoid of any steps or procedures in which the members of the set are determined by set management software implemented on a computer, while simultaneously failing to disclose the set management software itself.
Elements that are essentially a "black box" will not be sufficient. Moreover, whether one of ordinary skill in the art could devise a way to accomplish these functions is not relevant to the issue of whether the inventor(s) has shown possession of the claimed invention. This is because the ability to make and use the invention does not satisfy the written description requirement if details of how a function (such as the claimed updating) is performed are not disclosed.
It is noted that this is not an enablement rejection. Applicant’s failure to sufficiently describe any algorithm, steps, or procedures taken to perform the claimed determination raises questions as to whether Applicant truly had possession of this feature at the time of filing.
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 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Regarding claims 1-7, under Step 2A claims 1-7 recite a judicial exception (abstract idea) that is not integrated into a practical application and does not provide significantly more.
Under Step 2A (prong 1), and taking claim 1 as representative, claim 1 recites:
1. A method for selecting a member of a set by a user comprising the steps of:
a. selecting two members of a set of unselected items,
b. presenting the pair of members of the set to a user,
c. prompting the user to choose a selected member from one of the two members of the set,
d. rejecting the unselected member of the pair,
e. selecting another two members of the set,
f. presenting the second pair of members to a user,
g. prompting the user to choose a selected member from one of the newly presented members of the set,
h. rejecting the unselected member of the pair,
i. continuing to make pairwise selections between unselected and selected members of the set until all set members are either selected or rejected.
These limitations recite ‘certain methods organizing human activity’, such as by managing personal behavior or relationships or interactions between people, (including social activities, teaching, and following rules or instructions) (see: MPEP 2106.04(a)(2)(II)). This is because claim 1 sets forth or describes a method for selecting a member of a set, which represents at least managing personal behavior. Accordingly, under step 2A (prong 1) claim 1 recites an abstract idea because claim 1 recites limitations that fall within the “Certain methods of organizing human activity” grouping of abstract ideas.
Additionally, claim 1 can also be understood to recite limitations that set forth or describe “mental processes” that are performable in the human mind, or by pen and paper. This is because the steps of claim 1 noted above can be accomplished in the human mind, or using a physical aid such as pen and paper, and represent observations, evaluations or judgments (see: MPEP 2106.04(a)(2)(III)). Notably, the courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation.
Accordingly, under step 2A (prong 1) claim 1 also recites an abstract idea because claim 1 recites limitations that fall within the “Mental processes” grouping of abstract ideas.
Under Step 2A (prong 2), the abstract idea is not integrated into a practical application. As written, claim 1 does not set forth any additional elements for consideration under Step 2A (Prong 2). Accordingly, claim 1 does not provide additional elements that integrate the recited exception into a practical application.
Under Step 2B, examiners should evaluate 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). In this case, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed under Step 2A (Prong 2) above, claim 1 fails to set forth additional elements for consideration. Accordingly, representative claim 1 does not provide an inventive concept (“significantly more”) under Step 2B, and is therefore ineligible for patenting.
In view of the above, representative claim 1 does not provide an inventive concept (“significantly more”) under Step 2B, and is therefore ineligible for patenting.
Regarding dependent claims 2-7, dependent claims 2-7 recite more complexities descriptive of the abstract idea itself, and at least inherit the abstract idea of claim 1. As such, claims 2-7 are understood to recite an abstract idea under step 2A (prong 1) for at least similar reasons as discussed concerning claim 1.
Under prong 2 of step 2A, the additional elements of dependent claims 2-7 also do not integrate the abstract idea into a practical application, considered both individually or as a whole. More specifically, additional elements such as a “set management software” (claim 3), “a local computer” (claim 6), and “a remote computer in communication with a local computer” (claim 7) are recited only at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea).
Secondly, the noted additional elements of claims 3, 6 and 7 are insufficient to integrate the abstract idea into a practical application because the claim fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement the judicial exception with, or use the judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Accordingly, claims 2-7 (viewed individually or as a whole) do not provide additional elements that integrate the recited exception into a practical application.
Lastly, under step 2B, claims 2-7 also fail to result in “significantly more” than the abstract idea under step 2B. This is again because the claims amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). Even when viewed as an ordered combination (as a whole), the additional elements of the dependent claims do not add anything further than when they are considered individually.
In view of the above, claims 2-7 do not provide an inventive concept (“significantly more”) under Step 2B, and are therefore ineligible for patenting.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-2 and 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huberman (US 2014/0025455) in view of PTO form 892-U (herein Sage).
Regarding claim 1, Huberman discloses a method for selecting a member of a set by a user comprising the steps of:
a. selecting two members of a set of unselected items (see: Fig. 1A (102), Fig. 1B (Photograph 1 – Eifel Tower, Photograph 2 – Arc de Triomphe), 0009),
Note: photographs 1 and 2 (members) are selected for presentation from the album.
b. presenting the pair of members of the set to a user (see: Fig. 1B (Photograph 1, Photograph 2), 0006, 0010 (presents a series of pairs of photographs from the photo album)),
c. prompting the user to choose a selected member from one of the two members of the set (see: Fig. 1B (104), 0010 (asks the user to indicate which photograph of each pair the user prefers by selecting a corresponding radio button 104)),
d. rejecting the unselected member of the pair (see: Fig. 1B (104), Fig. 1C (Photograph 1 – Arc de Triomphe, Photograph 2 – Sacre Coeur de Montmarle), 0010 (asks the user to indicate which photograph of each pair the user prefers by selecting a corresponding radio button 104)),
Note: the non-selected photograph (e.g., Eifel Tower) has been rejected, and is not included in Fig. 1C.
e. selecting another two members of the set (see: Fig. 1A (102), Fig. 1C (Photograph 1, Photograph 2), 0009),
f. presenting the second pair of members to a user (see: Fig. 1C (Photograph 1, Photograph 2)),
Note: photos of The Arc de Triomphe and Sacre Coeur de Montmarle are another two members selected and presented to the user.
g. prompting the user to choose a selected member from one of the newly presented members of the set (see: Fig. 1C (104), 0010 (asks the user to indicate which photograph of each pair the user prefers by selecting a corresponding radio button 104)),
h. rejecting the unselected member of the pair (see: : Fig. 1C (104), Fig. 1D (Photograph 1 – Sacre Coeur de Montmarle, Photograph 2 – The Louvre), 0010 (asks the user to indicate which photograph of each pair the user prefers by selecting a corresponding radio button 104)),
Note: the non-selected photograph (e.g., Arc de Triomphe) has been rejected, and is not included in Fig. 1D.
i. continuing to make pairwise selections between unselected and selected members of the set (see: Fig. 1B-1F, 0006, 0010).
Huberman discloses all of the above as noted included presenting a series of pairwise comparisons for a set or subset of items, the set of items may be some form of media (e.g., songs or other audio tracks, videos, photographs or other graphical elements, books, etc.), textual descriptions (e.g., business ideas, slogans, new product features, etc.), or any other collection of items (see: 0006). Though this serial process is continued for a plurality of pairwise comparisons, Huberman does not explicitly disclose that the serial process is continued until all set members are either selected or rejected.
Continuing pairwise selections until all set members are either selected or rejected was well-known in the art before the effective filing date of the invention and would have been obvious.
For example, Sage teaches utilization of a bracket for assisting in decision making, the bracket made up of a plurality of members (see: p. 2 (Box 1-2)) and presenting those members for pairwise selection (see: p. 3 (Box 3)). This process continues until all set members are either selected or rejected (see: p. 3 (Box 3 – keep choosing the winner), p. 6 (Box 5 – until you have a winner), p. 7 (Box 6 – shows all members as selected or rejected, arriving at a final winner)).
It would have been obvious to one of ordinary skill in the art at before the effective filing date of the invention to have utilized the known technique of continuing selection until all members were selected or rejected, as taught by Sage, to the selection of members in the set/subset of Huberman since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable – namely, selecting and rejecting all members of the set of Huberman. Moreover, one of ordinary skill in the art would have recognized that incorporating such well-known features as taught by Sage would have provided a fun and easy way to help users make decisions when they have a ton of choices (see: Sage: p. 1 (Box A)).
2. The method of claim 1 in which the number of members within the set is determined by a user (see: Sage: Boxes 1-2).
4. The method of claim 1 in which the members of the set are determined by a user (see: Sage: Box 2, Box 4).
5. The method of claim 1 in which the members of the set are selected from a larger set of items sharing at least on characteristic (see: Huberman: 0006 (may not actually gather preference information for each item within the set), 0010 (evaluate a subset of less than all), 0015).
6. The method of claim 1 in which the steps are executed on a local computer (see: Sage: Fig. 4 (404), 0031).
7. The method of claim 1 in which at least some of the steps are executed on a remote computer in communication with a local computer (see: Fig. 4 (402, 406), 0033-0034).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huberman in view of Sage as applied to claim 1 above, and further in view of Wu (US 2016/0086202)
Regarding claim 3, Huberman in view of Sage teaches all of the above as noted but does not teach in which the members of the set are determined by set management software implemented on a computer.
To this accord, Wu teaches a pairwise ranking algorithm that solicits feedback in teh form of pairwise questions (see: Fig. 3B-3C) in which the members of the set are determined by set management software (e.g., pairing module) implemented on a computer (see: 0031, Fig. 2 (s202-s204)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the invention of Huberman in view of Sage to have utilized the known technique of using management software to determine members of a set as taught by Wu in order to have improve the efficiency of rating such that the result of the rating is made more objective (see: Wu: 0025, 0035).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
PTO form 892-V: The provided citations refer to a video available at:
https://www.youtube.com/watch?v=KwQQgl34gso
The citations provide a time stamp of minutes/seconds (MM:SS) as well as a reference to the attached PTO form 892-U by page number. The screen captures of PTO 892-U correspond to the provided timestamps.
PTO form 892-V teaches a. selecting two members of a set of unselected items (see: 00:30-00:40, p. 1), such as by selecting candidates (members) such as A and C (00:30) or A and B (01:30) from the agenda from which a choice may be made. This further includes rejecting the unselected member of the pair (see: 00:55, p. 2), such as by deleting an unselected member (e.g., candidate C). This process continues throughout the entire agenda (see: 01:10, p. 3). Accordingly, SPV teaches i. continuing to make pairwise selections between unselected and selected members of the set until all set members are either selected or rejected
Hirsch (US 20220203246) teaches a bracket contest system enabling selection of tournament format and members for presentation and selection (see: abstract, Fig. 4A-4D, 0058, 0060).
Yi (US 20190188274) discloses utilizing pairwise comparisons to generate recommendations (see: Fig. 4, 0014, 0020, 0048-0049, 0052).
Frascati (US 20160180503) discloses a prompting a user to select from a plurality of test graphic images in for assessment for vision (see: Fig. 7, Fig. 10, 0095, 0124).
PTO form 892-W teaches a bracket system that allows a user to title and define the bracket size (see form fields)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J ALLEN whose telephone number is (571)272-1443. The examiner can normally be reached Monday-Friday, 8:00-4:00.
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, Anita Coupe can be reached at 571-270-3614. 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.
WILLIAM J. ALLEN
Primary Examiner
Art Unit 3625
/WILLIAM J ALLEN/Primary Examiner, Art Unit 3619