DETAILED ACTION
This is in response to the reply filed on 10/01/2022. Claims 1-8, 10, 12, 14-16, 18, and 19 are pending in this Office Action. Claims 9, 11, 13, 17, and 20 have been previously cancelled.
Remark
In the response filed 06/16/2026, claims 1, 8, 10, and 15 have been amended, no claim has been cancelled, and no new claim has been added.
Response to Arguments
With respect to 35 USC 101 rejections:
Applicant's arguments filed 06/16/2026 have been fully considered but they are not persuasive.
The applicant with respect to new amendments to claims 1, 8, and 15 alleges that:
… these additional details describe how the disclosed embodiments are performed, making it even more clear that the alleged abstract idea is integrated into a practical application.
Specifically, operating system search is a feature of operating systems of computing devices. Removing potentially offensive search results improves the quality of operating system search, and therefore improves the functionality of a computing device.
The proposed amendment recites two pluralities of historical user interactions- one based on the query and the other based on a suspect phrase that is extracted from the query. Then, 'overlapping historical user interactions' - represented by the overlap 600 in FIG. 6- are removed from the query-based interactions. Removing historical user interactions that are based on the suspect phrase is what improves the quality of the search results.
As such, Applicant's representative respectfully submits that the instant amendments make it even more clear that the instant claims integrate any abstract idea into a practical application under step 2A prong 2. Accordingly, the instant claims are subject matter eligible, and so Applicant's representative respectfully requests the rejection of claim 1 under 35 USC § 101 be withdrawn.
The Examiner respectfully disagrees.
The courts do not distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. As the Federal Circuit has explained, "[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind." Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (Fed. Cir. 2016) (holding that computer-implemented method for "anonymous loan shopping" was an abstract idea because it could be "performed by humans without a computer"). See MPEP 2106.04(a)(2)(III).
The Examiner holds that the newly amended limitations to claims 1, 8, and 15 are recited at a high level of generality. Given the amended limitations their broadest and reasonable interpretation of (BRI), they are either mental processes or extra-solution activities that are incapable of improving computer functionality or technology.
For instance, the amended limitations of “identifying a second plurality of historical user interaction…”, “identifying one or more overlapping historical user interaction...”, and “modifying the first plurality of historical user interactions…” involve the concepts of observation, evaluation, and/or judgment that could be practically implemented in the human mind. These functions are not limited to computer implementations and nothing in the limitations preclude them from being implemented those functions in the human mind. A person can mentally observe a plurality of historical user interactions with a computer device either on a piece of paper or on a computer monitor. The person can evaluate and identify a first and a second plurality of historical user interactions. The person can further mentally and manually modify data by removing or deleting offensive data from a search result. As such, said limitations fall within the mental process grouping of abstract ideas enumerated in MPEP § 2106.04(a) and therefore, they do not integrate the judicial exception into a practical application.
Furthermore, the additional limitation of “providing the query response that includes representations of the modified first plurality of historical user interactions with the computing device” is also recited at a high level of generality and based on BRI, it involves is considered to be an insignificant extra solution activity of outputting the result. See MPEP 2106.04(d) and 2106.05(g). The courts have identified adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g), did not integrate a judicial exception into a practical application.
Based on above explanation and reasoning, the Examiner holds that the amended limitations to at least claims 1, 8, and 15 are either mental processes or extra-solution activities that are not sufficient to integrate a judicial exception into a practical application.
Therefore, the 35 USC 101 rejections of claims 1-8, 10, 12, 14-16, 18, and 19 for being directed to ineligible subject matter of abstract idea are maintained.
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 1-8, 10, 12, 14-16, 18, and 19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter of abstract ideas.
Step 1:
Claims 1-8, 10, 12, 14-16, 18, and 19 are directed to a method/system/storage
medium which is one of the statutory categories of invention.
Step 2A:
Prong 1:
Claims 1, 8, and 15 are directed to an abstract idea without significantly more.
Regarding claims 1 and 8,
the claims recite the steps of:
generating a query embedding from the user computer interaction history query; [recited at a high level of generality and based on broadest and reasonable interpretation of the claim (BRI), it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind. A person (e.g., a developer) can mentally and manually create a numerical representation (vector) for a query with aid of a pen and paper]
identifying a first plurality of historical user interactions with the computing device that have embeddings within a first defined distance of the query embedding; [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind]
identifying a suspect phrase derived from the user computer interaction history query; [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind]
generating a suspect phrase embedding from the suspect phrase; [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind. A person (e.g., a developer) can mentally and manually create a numerical representation (vector) for the suspect phrase]
identifying a second plurality of historical user interactions with the computing device that have embeddings within a second defined distance of the suspect phrase embedding; [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind]
identifying one or more overlapping historical user interactions with the computing device that appear in both the first and second pluralities of historical user interactions with the computing device [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement
which could be practically performed in the human mind]
modifying the first plurality of historical user interactions with the computing device by removing the one or more overlapping historical user interactions with the computing device, wherein the one or more overlapping historical user interaction with the computing device could be perceived as offensive when returned in response to the user computer interaction history query [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind. A person (e.g., a developer) can mentally and manually modify data by removing or deleting offensive data from the search result]
The above-mentioned steps are processes that, under their broadest reasonable interpretation, cover performance of the limitation in the mind. That is, nothing in the claim element precludes the step from practically being performed in a human mind or with pen and paper. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental
Processes” grouping of abstract ideas (concepts performed in the human mind including
an observation, evaluation, judgment, and opinion).
Prong 2:
This judicial exception is not integrated into a practical application. The claims recite the additional steps of:
receiving a user computer interaction history query, wherein the user
computer interaction history query comprises a criteria for identifying historical user interactions between a user and a computing device; [recited at a high level of generality and based on BRI, it is considered to be an insignificant extra pre-solution activity of receiving data and data gathering. See MPEP 2106.04(d) and 2106.05(g)]
and
providing the query response that includes representations of the modified first plurality of historical user interactions with the computing device [recited at a high level of generality and based on BRI, it is considered to be an insignificant extra solution activity of outputting the result. See MPEP 2106.04(d) and 2106.05(g)]
Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea. See MPEP 2106.04(d) and
2106.05(g).
Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claims recite the additional steps of:
receiving a user computer interaction history query, wherein the user computer interaction history query comprises a criteria for identifying historical user interactions between a user and a computing device; [recited at a high level of generality and based on BRI, it is considered to be a well-understood, conventional, and routine activity of receiving data and data gathering. See MPEP 2106.04(d) and 2106.05(g)] and
providing the query response that includes representations of the modified first plurality of historical user interactions with the computing device [recited at a high level of generality and based on BRI, it is considered to be a well-understood, conventional, and routine activity of outputting the result. See MPEP 2106.04(d) and 2106.05(g)].
Therefore, the claim is not patent eligible.
Regarding claim 15,
the claim recites the steps to:
Infer,
history query; [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind. A person (e.g., a developer) can mentally and manually create a numerical representation (vector) for a query with aid of a pen and paper]
identifying a first plurality of screenshot of historical user interactions with the computing device that have embeddings within a first defined distance of the query embedding, wherein the plurality of screenshots of historical user interactions with the computing device have embeddings within a first defined distance of the query embedding [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind]
identify a suspect phrase derived from the user computer interaction history query; [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind]
infer, ; [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind]
identify a second plurality of screenshots of historical user interactions with the computing device that have embeddings within a second defined distance of the suspect phrase embedding; [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind]
identify one or more overlapping screenshots of historical user interactions with the computing device that appear in both the first and second pluralities of screenshots of historical user interactions with the computing device; [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind]
modifying the first plurality of historical user interactions with the computing device by removing the one or more overlapping historical user interactions with the computing device, wherein the one or more overlapping historical user interaction with the computing device could be perceived as offensive when returned in response to the user computer interaction history query [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind. A person (e.g., a developer) can mentally and manually modify data by removing or deleting offensive data from the search result]
The above-mentioned steps are processes that, under their broadest reasonable
interpretation, cover performance of the limitation in the mind. That is, nothing in the claim element precludes the step from practically being performed in a human mind or with pen and paper. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract ideas (concepts performed in the human mind including an observation, evaluation, judgment, and opinion).
Prong 2:
This judicial exception is not integrated into a practical application. The claim recites the additional steps of:
receive a user computer interaction history query, wherein the user computer interaction history query comprises a criteria for identifying historical user interactions between a user and a computing device; [recited at a high level of generality and based on BRI, it considered to be an insignificant extra pre-solution activity of receiving data and data gathering. See MPEP 2106.04(d) and 2106.05(g)]
and
providing the query response that includes representations of the modified first plurality of historical user interactions with the computing device [recited at a high level of generality and based on BRI, it is considered to be an insignificant extra solution activity of outputting the result. See MPEP 2106.04(d) and 2106.05(g)]
Moreover, the additional steps of using “a machine learning model” to infer are recited at a high level of generality and merely invokes a machine learning model to infer embeddings without providing any technological details as to how such embeddings are inferred. The steps of using the machine learning algorithm to infer embeddings are extra-solution activities to the central idea of claims. Such insignificant extra-solution activities do not lend patent eligibility to the abstract idea of the claims by integrating the abstract idea into a practical application.
Furthermore, the "storage medium" is recited so generically that they represent
no more than mere instructions to apply the judicial exception on a computer. This limitation can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014).
Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea. See MPEP 2106.04(d) and 2106.05(g).
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim recites the additional steps of:
receive a user computer interaction history query, wherein the user computer interaction history query comprises a criteria for identifying historical user interactions between a user and a computing device; [recited at a high level of generality and based on BRI, it is considered to be a well-understood, conventional, and routine activity of receiving data and data gathering. See MPEP 2106.04(d) and
2106.05(g)] and
providing the query response that includes representations of the modified first plurality of historical user interactions with the computing device [recited at a high level of generality and based on BRI, it is considered to be a well-understood, conventional, and routine activity of outputting the result. See MPEP 2106.04(d) and 2106.05(g)]
Moreover, the additional steps of using “a machine learning model” to infer are recited at a high level of generality and merely invokes a machine learning model to infer embeddings without providing any technological details as to how such embeddings are inferred. The steps of using the machine learning algorithm to infer embeddings are extra-solution activities to the central idea of claims. Such insignificant extra-solution activities do not lend patent eligibility to the abstract idea of the claims by integrating the abstract idea into a practical application.
Moreover, the feature of using a machine learning function to process data is a conventional and well-understood function in the art (See for example Koudas et al., US 2009/0319518, paragraph 130) which is simply appending well-understood, routine, conventional activities previously known to the industry, specified at high level of generality to the general exception (See MPEP 2106.05(d)). Thus, the claimed additional elements individually and in combination do not amount significantly more than abstract idea.
Furthermore, the claim recites a generic computer component (e.g., a "storage
medium") to implement the steps of the invention. Said generic computer component is
recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component and considered to be well-understood, conventional, and routine activities. Therefore, the claim is not patent
eligible.
Regarding claim 2,
The claim includes a mathematical concept which is not sufficient to integrate the judicial exception into a practical application or amount to significantly more than abstract idea found in the independent claims.
Regarding dependent claims 3-5, 12, 16, 18, and 19,
the dependent claims also lack additional elements that sufficient to integrate the judicial exception into a practical application or amount to significantly more than abstract idea found in the independent claims. The dependent claims additional limitations are either data definitions or steps (e.g., selected, identified, comparison) that could be performed mentally failing to integrate the judicial exception into a practical
application or to amount significantly to more than an abstract idea.
Regarding dependent claims 6, 7, 10, and 14,
The dependent claims using a machine learning model to generate embeddings or select a suspected phrase at a high level of generality without providing any technological details. The steps of using the machine learning algorithm to generate embeddings or select a suspected phrase are extra-solution activities to the central idea of claims. Such insignificant extra-solution activities do not lend patent eligibility to the abstract idea of the claims by integrating the abstract idea into a practical application.
Moreover, the feature of using a machine learning function to process data is a conventional and well-understood function in the art (See for example Koudas et al., US 2009/0319518, paragraph 130) which is simply appending well-understood, routine, conventional activities previously known to the industry, specified at high level of generality to the general exception (See MPEP 2106.05(d)). Thus, the claimed additional elements individually and in combination do not amount significantly more than abstract idea.
These additional elements do not: (1) improve the functioning of a computer or
other technology; (2) are not applied with any particular machine (except for a generic computer); (3) do not effect a transformation of a particular article to a different state; and (4) are not applied in any 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(a)-(c), (e)-(h). In other words, the aforementioned additional element (or combination of elements) recited in the claims do not integrate the judicial exception into
a practical application.
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.
Points of Contact
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/Hares Jami/ Primary Examiner, Art Unit 2164
07/27/2026
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