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
This Action is in response to the Amendment filed November 27, 2025. Claims 1, 5, 8-9, 11, 15 and 18-20 are amended. Claims 1-20 are pending and have been examined in this application.
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 rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Specifically, claims 1-20 are directed toward at least one judicial exception without significantly more. In accordance with the MPEP 2106, the rationale for this determination is explained below:
Representative claim 1 is directed towards a method, claim 11 is directed towards a system, claim 20 is directed towards a non-transitory storage medium, which are statutory categories of invention.
Although, claim 1 is directed toward a statutory category of invention, the claim however, is directed towards an abstract idea. The limitations that recite the abstract ideas are: executing, having been trained to infer user behavior, based on the data associated with the plurality of items, the user data indicative of the respective behavior of the plurality of users with regard to the first set of items and the personalized offer strategies, to generate inferred user behavior data of the plurality of users with regard to the plurality of items; executing, based on the user interaction, the inferred user behavior data, the set of personalized offer strategies and the objective function, to generate personalized items recommendation from the second set of items to the given user, the personalized items recommendations being associated with a respective identifier, a respective type of discount and with a respective time period; and transmitting, the personalized items recommendations with the respective type of discount and the respective time period. These limitations, comprise commercial interactions including marketing or sales activities or behaviors, and business relations; as well as managing personal behavior, including following rules or instructions. And are thus, directed towards the abstract grouping of Certain Methods of Organizing Human Activity in prong one of step 2A of the Alice/Mayo test (see MPEP 2106.04(a)(2) II).
This judicial exception is not integrated into a practical application because, when analyzed as a whole under prong two of step 2A of the Alice/Mayo test (see MPEP 2106.04(d)), the additional elements provided by the claim are recited at a high level of generality and amounts insignificant extra-solution activity and generally “applying” the abstract idea in a computer environment. In particular the claim recites the additional elements: receiving data associated with a plurality of items provided on a given web resource associated with a given entity; receiving user data indicative of a respective behavior of a plurality of users, the user data comprising respective user profiles, respective user preferences, and respective past user interactions with a first set of items; receiving, from the given entity associated with at least one web resource, a set of personalized offer strategies for a second set of items, the second set of items comprising at least a subset of the plurality of items, the set of personalized offer strategies comprising a set of targeted users for the second set of items, and a set of constraints for the second set of items; receiving an objective function associated with the entity, the objective function being representative of at least one objective to optimize for the entity; receiving, from a client device associated with a given user of the plurality of users, a user interaction with the given web resource. These steps amount to necessary data gathering and obtaining particular type of data to be manipulated in implementing the judicial exception. See MPEP 2106.05(g). While, the additional elements: at the at least one processor, an inference engine comprising a behavioral machine-leaning model; at the at least one processor a personalized recommendation engine comprising a recommendation machine-learning model; to the client device, are merely the use of a computer as a tool to perform the abstract idea. See MPEP 2106.05(f).
Simply adding insignificant extra-solution activities and merely applying the abstract idea by a generic computer is not a practical application of the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional limitations amount to insignificant extra-solution activities and merely applying the abstract idea on a computer. Viewing the limitation individually, the receiving data associated with a plurality of items provided on a given web resource associated with a given entity; the receiving user data indicative of a respective behavior of a plurality of users, the user data comprising respective user profiles, respective user preferences, and respective past user interactions with a first set of items; the receiving, from the given entity associated with at least one web resource, a set of personalized offer strategies for a second set of items, the second set of items comprising at least a subset of the plurality of items, the set of personalized offer strategies comprising a set of targeted users for the second set of items, and a set of constraints for the second set of items; the receiving an objective function associated with the entity, the objective function being representative of at least one objective to optimize for the entity; and the receiving, associated with a given user of the plurality of users, a user interaction with the given web resource, are used only for insignificant extra-solution activity because such activities are used for necessary data gathering and providing the data source or type of data, used to implement the aforementioned abstract concept, see MPEP 2106.05(g). The courts have recognized performing receiving, processing, and storing data; electronic recordkeeping; automating mental tasks and receiving or transmitting data over a network to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner or as insignificant extra-solution activity, as they are here. See MPEP 2106.05(d)II; Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1321, 120 USPQ2d 1353, 1362 (Fed. Cir. 2016); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015).
Additionally, the limitation generically referring to a processor, an inference engine, recommendation engine, machine-leaning models, client device, also do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment1. Viewing these limitations as a combination, the additional elements amount to no more than applying the exception using a generic computer system, utilizing mathematical functionalities of a computer, as described in at least Applicant’s specification, paragraph [0166]. Moreover, the trained machine learning models are used as tools to perform the abstract idea as discussed above. Considered as an ordered combination, the additional elements of claim 1 add nothing that is not already present when the steps are considered separately. The additional elements of generic computer components and machine learning model (computing tool) are used to perform a marketing strategy. Merely applying an exception using generic computer components cannot provide an inventive concept. Therefore, the limitations of the claim as a whole, when viewed individually and as an ordered combination, do not amount to significantly more than the abstract idea.
A review of dependent claims 2-10, likewise, do not recite any limitations that would remedy the deficiencies outlined above as they do not add any elements which integrate the abstract idea into a practical application or constitute significantly more. For instance, claims 2-10 only add to certain methods of organizing human activities. Thus, while they may slightly narrow the abstract idea by further describing it, they do not make it less abstract and are rejected accordingly. Further still, claims 11-20 suffer from substantially the same deficiencies as outlined with respect to claims 1-10 and are also rejected accordingly.
Response to Arguments
Applicant's filed arguments have been fully considered but have not been found persuasive.
A. Applicant’s argument regarding the 35 U.S.C. § 101 rejection that a system and method for providing personalized item recommendations to a given user is not a method for organizing human activity, as the claims do not recite anything related to organizing human behavior, such as conducting surveys or human interaction that would otherwise enable recommendations, or otherwise organizing human behavior. The Examiner respectfully disagrees. The claims are directed to an abstract idea, grouped under Certain Methods of Organizing Human Activity because they entail commercial interactions including, marketing or sales activities or behavior; business relations; (receiving, organizing set of personalized offer strategies to provide item recommendation) and managing personal behavior including following rules or instructions (obtaining user behavior and user interactions). Applying the claims via machine learning models do not remove them from the realm of the abstract idea. See SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163, 127 USPQ2d 1597, 1599 (Fed. Cir. 2018) (holding that claims to a ‘‘series of mathematical calculations based on selected information and the presentation of the results of those calculations’’ are directed to abstract ideas).
Applicant submits that the claims recite a technical solution to a technical problem, which includes the use of one or more machine learning models to generate personalized item recommendations and are therefore eligible subject matter. The Examiner respectfully disagrees. The claims implementing the abstract idea by a computer using machine learning models solves an entrepreneurial problem rather than a technological one. The specification provides no technical evidence/technical support that the computing device itself, or the machine learning algorithm is improved. Indeed, the improvement proffered by the specification is that through “targeted and optimized recommendation, content providers and retailers can mitigate risks and achieve better outcomes, including increased sales, improved customer loyalty, and enhanced profitability.” [0008]. Dealing with large volumes of data does not make for an improvement in a technical field. That is essentially what a computer does and is similar to “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” which does not integrate the abstract idea into a practical application (see MPEP 2106.05(f)(2)).
Applicant argues that similar to DDR Holdings, the claims recite technical solutions to technical problems that are necessarily rooted in computer technology because do not merely recite the performance of some practice known from the pre-Internet world along with the requirement to perform it on the Internet. The Examiner respectfully disagrees. The claims in DDR were considered to be necessarily rooted in computer technology and supported by considerable technical disclosure in the Specification, whereby a unique website functionality and arrangement improved computing technology. Applicant’s claims are not analogous to the claims in DDR, nor is there technical disclosure for any steps that could be considered necessarily rooted in technology. Instead, the instant invention solves an entrepreneurial problem rather than a technological one. Applicant’s claims resemble a marketing optimization scheme for recommending items to a user with merely general computer implementation, which better aligns with the Certain Methods of Organizing Human Activity grouping. As, shown above, merely applying the abstract idea by the use of models/algorithms does not constitute technical solutions to technical problems.
Applicant submits that like Ex Parte Desjardins, the claims are directed to executing machine learning models and meet the requirements in Enfish, i.e. that they are directed to a specific asserted improvement in computer capabilities and thus an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity. The Examiner respectfully disagrees. Unlike Enfish, Applicant’s claims do not proffer nor the specification describe any technological problem that it aims to solve. Neither is there any technical support or evidence provided that would be apparent to one skilled in the art that the invention when implemented improves a computer or any other technology. 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. See SAP America, at 1163, 1599.
Applicant submits that certain of the limitations of the independent claims are integrated into a practical application because of the improvement in the functioning of a computer. The Examiner respectfully disagrees. Merely applying the abstract idea by a computer using machine learning models does not constitute additional elements that integrate the abstract idea into a practical application. Merely applying the abstract idea using machine learning models does not amount to an improvement in the functioning of a computer. See TLI Communications LLC v. AV Automotive LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (“It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea”).
As such, the claims as a whole, in view of Alice, do not connote an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer itself; and the claims do not move beyond a general link of the use of the abstract idea to a particular technological environment. Therefore, the Examiner considers that the current 35 U.S.C. § 101 rejection has not been overcome by the Applicant.
Applicant’s arguments relating to dependent claims 2-10, 12-19 are rejected accordingly to independent claims 1 and 11.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Errol CARVALHO whose telephone number is (571)272-9987. The examiner can normally be reached on M-F 9:30-7:00 Alt Fri.
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/E CARVALHO/
Primary Examiner, Art Unit 3622a
1 See, Alice Corp. Pty Ltd. v. CLS Bank lnt'l, 134 S. Ct. 2347, 2360 (2014) (noting that none of the hardware recited “offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment,’ that is, implementation via computers” (citing Bilski v. Kappos, 561 U.S. 593, 610-11 (2010))).