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
Examiner has given consideration to applicant’s PCT/JP2022/035 filed on September 21, 2022 and JP2021-153235 filed on September 21, 2021. For examining purposes of this application, the effective filing date will be September 21, 2021.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55 on March 18, 2024.
Status of the Claims
Claims 1-8 are currently pending and have been considered below.
Claims 1, 2, and 4-7 have been amended.
Response to Arguments
Applicant’s arguments, with respect to claims 1, 2 and 4-6 rejected under §112 (b) have been fully considered and are persuasive. The rejection of claims 1, 2 and 4-6 rejected under §112 (b) has been withdrawn. However, a new §112(b) rejection will be presented for other reasons as seen below.
Applicant's arguments regarding §101 rejection on pages 6-8 have been fully considered but they are not persuasive. The amendments and arguments do not demonstrate that the claims are directed to something other than an abstract idea, nor do they add significantly more than the abstract idea. Applicant argues on page 7 that the claims provide “significantly more than a mere abstract idea by storing and correlating various stored data to improve data collection from a user.” Examiner disagrees. Improvements to the content or completeness of stored data are business/organizational benefits, not improvements to computer functionality. The claims do not change how the computer stores or processes data at a technical level. See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161 (Fed. Cir. 2018).
Next, Applicant argues on page 8 that the claims are “directed to building information in a storage medium” by comparing previously obtained user information across facility types for a given user, then requesting additional input where the user has “relatively small” information, which Applicant characterizes as not taught in the prior art. Applicant further asserts this approach avoids collecting irrelevant data, reduces storage demand, and therefore is not a preemption of an abstract idea. Examiner disagrees. Novelty/non-preemption is not determined under §101 analysis. Novelty and whether the claimed subject matter is or is not taught in the prior art is a §102/§103 consideration and does not establish eligibility under §101. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138 (Fed. Cir. 2016) (“A claim for a new abstract idea is still an abstract idea.”).
Therefore, Examiner maintains the rejection of claims 1-8 under §101.
Next, Applicant’s arguments, see pages 8, with respect to the rejection(s) of claim(s) 1-5 and 7-8 under §103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly found prior art. Examiner notes that Applicant argues on pages 9-11 that Lessin fails to disclose the features of the recited “output unit” as amended. Examiner disagrees. Lessin’s system detects that the user’s stored information for a particular item is insufficient (unknown, stale, below time threshold or value threshold), selects which question format has the highest response probability/value, and transmits that request to the user device (see below).
Identification of insufficiency/missing/stale items and prioritization:
¶[0004]: “presents questions to a user to elicit information… missing… or outdated… identifies information items… not associated with data (‘unknown information items’). Based on a need or value… selects an unknown information item.”
¶[0018]: “identifies missing or outdated information items… and selects questions for presenting to the user to obtain the identified information items… choose a question… based on the value to the social networking system…”
Scoring/prioritization (a predetermined, repeatable comparison target/threshold):
¶[0041]: “The scoring module… associates a value… identifies unknown information items and selects an unknown item based on the values… may select the unknown item having the highest value.”
¶[0042]: “identifies information items… not updated for a threshold amount of time… assigns a recency score… decay rate… time limits per item type…” (explicit threshold comparison to detect “insufficiency/unknown/stale.”)
Question/prompt selection and transmission to the user device (the “output unit”):
¶[0048]-[0049]: “The selection module… determines a prompt or question… selects one or more questions… and presents the selected questions to a user.”
¶[0050]-[0054]: “presents the selected one or more questions to a user… via a data acquisition interface… via a push notification… via any suitable communication channel… presented along with content… a newsfeed… messages… mobile app… third-party app.” (This is the claimed “output unit… by transmitting the request information to a device of the one user.”)
¶[0023], ¶[0027]-[0029], ¶[0037]: Lessin’s API server/web server architecture explicitly provides for delivery of questions to user devices through standard network interfaces, again matching the claimed “output unit” transmission function.
Claim Objections
Claim 1 objected to because of the following informalities: on line 10 of claim 1, Applicant has recited “indicating an degree of user interest…” Grammatically, it should recite “indicating a degree of user interest….” Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1 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. Applicant recites on line 4, “a number of stores at the facility.” Examiner could not find support for this subject matter anywhere in originally filed specification. Examiner did find in paragraph 21, “The number of stores is the number of stores corresponding to each facility genre, and for example, in a case where the facility genre is an Italian restaurant, the number of stores is 50.” However, this does not support “a number of stores at the facility” as recited in claim 1.
Claims 2-8 rejected to as being dependent upon rejected claim 1.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 recites “a processor and memory storing instructions and configured to implement:…” in line 2. However, it is unclear and ambiguous as to how a processor and memory can be configured to “implement” a storage medium, an acquisition unit, an output unit and update unit. A processor and memory can be configured to perform a function like store content information, acquire user information, output request information and update information, however as written it is not clear how one skilled in the art can implement a storage medium, an acquisition unit, an output unit and update unit. For examination purposes, Examiner will assume the processor and memory are configured to store content information…, store data for a plurality of users…, acquire user information…,output request information… and update information.
Claim 1 recites the limitation “the one user information” in line 18. There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites the limitation “the requested content” in lines 3-4. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation “the requested content” in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation “the requested contents” in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation “the requested content” in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation “the user” in line 3. There is insufficient antecedent basis for this limitation in the claim. It is unclear which “user” Applicant is referring to as there is a “similar user” recited in line 2 and there is “a user” recited in claim 1.
Claim 7 recites the limitation “the requested contents” in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation “the recording medium” in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-8 rejected to as being dependent upon rejected claim 1.
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 rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
In the instant case, claims 1-8 are directed to a system (i.e. a machine). Thus, each of the claims falls within one of the four statutory categories. Nevertheless, the claims fall within the judicial exception of an abstract idea.
Step 2A- Prong 1
Independent claim 1 recites steps that, under their broadest reasonable interpretations, cover certain methods of organizing human activity, e.g. advertising, marketing or sales activities. Specifically, claim 1 recites:
A recommendation system comprising:
a processor and memory storing instructions and configured to implement:
a storage medium storing content information related to a plurality of facilities including for each a facility ID, facility coordinates, a facility type, a number of stores at the facility, review data for each of the stores at the facility, a total number of reviews for each store at the facility, and a keyword extracted from reviews of plural users;
the storage medium storing data for each of the plural users, the data for each user includes for each facility, a facility type, a degree of interest of the user in the facility type and keywords input by a corresponding user for the facility type;
a user information acquisition unit that acquires user information indicating an degree of user interest of one user in a content to be provided;
an output unit that outputs request information for requesting the one user to input information related to a content stored in the storage medium in which an amount of information of the content stored for a facility type is less than predetermined comparison target in information for each content stored as the user information, by transmitting the request information to a device of the one user; and
an update unit that updates the one user information on a basis of information input by the one user in response to the request information,
wherein the predetermined comparison target is based on amount of other content information stored in the storage medium for the one user for other facility types different from the facility type for which information is being requested.
But for the recitation of generic computer components like various processor, memory, user information acquisition unit, output unit, storage medium, device and update unit, the italicized functions, when considered as a whole, describe a situation where information is gathered from a user regarding content, the information is stored, more information is requested from user and the stored information is then updated. Accordingly, claim 1 recites an abstract idea in the form of a certain method of organizing human activity.
Dependent claims 2-8 inherit the limitations that recite an abstract idea from their dependence on claim 1, and thus these claims also recite an abstract idea under the Step 2A- Prong 1 analysis. In addition, claims 2-8 recite additional limitations that further describe the abstract idea identified in the independent claims.
Claim 2 recites wherein the request information requested by the output unit includes information as to whether the one user has an interest in the requested content, and the requested content is determined based on a current position of the user device or a current time period. (Advertising, Marketing or Sales Activities)
Claim 3 recites wherein the update unit receives an answer to whether the user has the interest as input data to the user information. (Advertising, Marketing or Sales Activities)
Claim 4 recites wherein the output unit recommends the requested content, and the update unit receives an answer to the recommendation as input data to the user information. (Advertising, Marketing or Sales Activities)
Claim 5 recites wherein in a case where there are a plurality of the requested contents, the output unit requests the user to make the input based on a degree of enrichment of the plurality of requested contents. (Advertising, Marketing or Sales Activities)
Claim 6 recites wherein the user information acquisition unit further acquires user information of a similar user whose interest in the content is similar to the user, and the output unit outputs the request information for requesting the one user to input information related to the requested content in user information of the one user and with user information of another user having data stored in the storage medium in common with the one user. (Advertising, Marketing or Sales Activities)
Claim 7 recites wherein the request information includes information related to the requested content, and
the information related to the requested content includes at least any one of a facility type, a distance to a facility, a facility name, a price range of a facility, or a facility review. (Advertising, Marketing or Sales Activities)
Claim 8 recites wherein the update unit records the information input in the recording medium. (Advertising, Marketing or Sales Activities)
Step 2A-Prong 1: YES. The claims are abstract
Step 2A- Prong 2
The judicial exception is not integrated into a practical application. In particular, independent claim 1 does not include additional elements that integrate the abstract idea into a practical application. The additional elements of claim 1 are processor, memory, user information acquisition unit, output unit, storage medium, device and update unit. These additional elements, when considered in the context of each claim as a whole, merely serve to automate interactions that could occur between human actors (as described above), and thus amount to instructions to “apply” the abstract idea using generic computer components (see MPEP 2106.05(f)). For example, a company could gather information from its customers about products that they sell or intend to sell in the future. They may find out that some information is lacking, so they could request additional information from customers. The additional information could then be compiled with the rest of the information and then business decisions could be made based on the information. Also, the additional elements as listed add insignificant extra-solution activity to the abstract idea. For example, collecting data, requesting data and updating data as seen in claim 1 amounts to mere data gathering and selecting a particular data source or type of data to be manipulated, (see MPEP 2106.05(g)) and Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016). Accordingly, claim 1 as a whole is directed to an abstract idea without integration into a practical application.
The judicial exception recited in dependent claims 2-8 are also not integrated into a practical application under a similar analysis as above. The functions of claims 2-8 are performed with the same additional elements introduced in the independent claims, however, even these additional elements amount to instructions to “apply” the abstract idea using generic computer components, (see MPEP 2106.05(f)) and mere data gathering and selecting a particular data source or type of data to be manipulated, (see MPEP 2106.05(g)).
Accordingly, the additional elements of claims 1-8 do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Claims 1-8 are directed to an abstract idea.
Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application
Step 2B
The claims do 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 elements of processor, memory, user information acquisition unit, output unit, storage medium, device and update unit amount to mere instructions to apply the exception using generic computer components. As evidence of the generic nature of the above recited additional elements, Examiner notes paragraphs 10, 11 and 26 and Figure 1 of Applicant’s specification, where the computerized implementations of the system are disclosed in terms of known computer architecture such as processors, software and communications or equivalent hardware. These disclosures do not indicate that the elements of the invention are particular machines, and instead provide generic examples of computer hardware such that one of ordinary skill in the art would understand that any generic processor-based computer device could be used to implement the invention.
Step 2B: NO. The claims do not provide significantly more.
Thus, when considered as a whole and in combination, claims 1-8 are not patent eligible.
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) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wilson et al., U.S. Patent Application Publication 2020/0184538 (see PTO-892, Ref. E) in view of Lessin et al., U.S. Patent Application Publication 2014/0143325 (see PTO-892, Ref. B) and further in view of Perowitz et al., U.S. Patent Application Publication 2015/0170042 (see PTO-892, Ref. A).
As per claim 1, Wilson teaches a recommendation system comprising:
a processor and memory storing instructions and configured to implement (see paragraphs 48 and 200-204):
a storage medium storing content information related to a plurality of facilities including for each a facility ID, facility coordinates, a facility type, a number of stores at the facility, review data for each of the stores at the facility, a total number of reviews for each store at the facility, and a keyword extracted from reviews of plural users ((see venue/“facility” attributes and review data; parsing into structured DB ([0040], [0064], [0100]–[0104]); unique IDs, address, lat/long matching ([0183]); review volumes as quality signals ([0058]));
the storage medium storing data for each of the plural users, the data for each user includes for each facility, a facility type, a degree of interest of the user in the facility type and keywords input by a corresponding user for the facility type ((see user profiles (favorites, demographics) and explicit interest feedback (thumbs up/down, ratings) ([0069]–[0071], [0083]–[0086]); type/genre present ([0100]–[0104]));
a user information acquisition unit that acquires user information indicating an degree of user interest of one a user in a content to be provided (see collects preferences and explicit feedback ([0069]–[0071], [0083]–[0086], [0197]);
Lessin teaches an output unit that outputs request information for requesting the one user to input information related to a content stored in the storage medium in which an amount of information of the content stored for a facility type is less than a predetermined comparison target in information for each content stored as the user information, by transmitting the request information to a device of the one user (identifies unknown/missing (or stale) information items in a user profile; determines data acquisition values; selects questions and formats; and presents questions across multiple channels, with response probabilities used to predict response ([0016]–[0019], [0038]–[0049], [0050]–[0054], [0064])).
an update unit that updates the one user information on a basis of information input by the one user in response to the request information (response module stores the user’s response into the profile, associated with the targeted information item ([0057], [0064]). Wilson also teaches updates repository with user input/feedback ([0195]–[0206])),
Therefore, it would be prima facie obvious to a person of ordinary skill in the art before the filing date of the invention to combine the teachings of Wilson and Lessin to implement Wilson’s “gap prompting” using Lessin’s exact mechanism for missing-profile fields: both problems—improving per-user data completeness to improve recommendation quality—are the same. The “predetermined comparison target” in claim 1 is obvious by Lessin’s data-acquisition value computation, which explicitly compares current profile data against a value/need threshold and response probabilities ([0041]–[0046]). One would be motivated because improving per-user data completeness would improve recommendation quality.
Perkowitz teaches wherein the predetermined comparison target is based on amount of other content information stored in the storage medium for the one user for other facility types different from the facility type for which information is being requested (per-user aggregated statistics across categories, distances, familiarity, price, with home/non-home segmentation ([0121]–[0129])).
Therefore, it would be prima facie obvious to a person of ordinary skill in the art before the filing date of the invention to combine the teachings of Wilson, Lessin and Perkowitz to implement use those per-user cross-type metrics as a benchmark and coupling that with Lessin’s “unknown item” scoring and prompting provides the claimed comparison target logic. It would have been obvious to use the per-user cross-category counts (amounts) as the threshold/target to compare information for less content for that particular user to maximize value of additional data because improving per-user data completeness would improve recommendation quality.
As per claim 2, Wilson, Lessin and Perkowitz teach the system of claim 1 as seen above. Lessin and Perkowitz teach wherein the request information requested by the output unit includes information as to whether the one user has an interest in the requested content, and the requested content is determined based on a current position of the user device or a current time period (Lessin: selects and formats questions to elicit missing/unknown items; can trigger based on user actions and select channels with highest response probability ([0050]–[0054], [0052]) and Perkowitz: context-aware agent uses current position/time to select and present recommendations/agent prompts ([0167]–[0171]); also computes distances and categories ([0120]–[0129])).
Therefore, it would be prima facie obvious to a person of ordinary skill in the art before the filing date of the invention to combine the teachings of Wilson, Lessin and Perkowitz to trigger Lessin-style gap prompts when Perkowitz indicates the user is at a relevant place/time (e.g., near a venue of the same facility type currently sparse for that user) to maximize utility and response probability (see Lessin, [0045]–[0046]).
As per claim 3, Wilson, Lessin and Perkowitz teach the system of claim 2 as seen above. Lessin teaches wherein the update unit receives an answer to whether the user has the interest as input data to the user information (stores responses in the user’s profile, associated with the targeted information item ([0057], [0064]).
Therefore, it would be prima facie obvious to a person of ordinary skill in the art before the filing date of the invention to combine the teachings of Wilson, Lessin and Perkowitz to update user data because improving user data completeness would improve recommendation quality.
As per claim 4, Wilson, Lessin and Perkowitz teach the system of claim 1 as seen above. Wilson teaches wherein the output unit recommends the requested content, and the update unit receives an answer to the recommendation as input data to the user information (recommendation engine outputs recommendations; user responses recorded and used to adapt links/models ([0091]–[0097], [0083]–[0086], [0195]–[0206]). Alternatively, Lessin also teaches wherein the output unit recommends the requested content, and the update unit receives an answer to the recommendation as input data to the user information (the targeted item is chosen precisely because it is missing/sparse; presenting it and recording the response are taught ([0016]–[0019], [0038]–[0049], [0057], [0064]). One would be motivated to record the user’s response to enrich the profile (predictable improvement in data quality and personalization).
As per claim 5, Wilson, Lessin and Perkowitz teach the system of claim 1 as seen above. Lessin teaches wherein in a case where there are a plurality of the requested contents, the output unit requests the user to make the input based on a degree of enrichment of the plurality of requested contents (scoring module computes a “data acquisition value” per unknown item that combines value to the system and response probability; selection module picks the highest-valued item or those above a threshold ([0041]–[0049]). This is a prioritization among multiple gaps—i.e., a “degree of enrichment.”). One would be motivated to pick the highest-value item for prioritization because it would lead to predictable improvement in data quality and personalization.
As per claim 6, Wilson, Lessin and Perkowitz teach the system of claim 1 as seen above. Lessin teaches wherein the user information acquisition unit further acquires user information of a similar user whose interest in the content is similar to the user, and the output unit outputs the request information for requesting the one user to input information related to the requested content in user information of the one user and user information of another user having data stored in the storage medium in common with the one user (can use responses and behavior of users connected to the target user to estimate response probability and can route/format questions accordingly ([0045]–[0046], [0054] (prompting another/connected user)).
It would have been obvious to consider a “similar user” (friend/cohort) when identifying shared unknowns and to prompt the target user because the same item is missing or low-confidence for the cohort—this leverages social/context cues to raise response probability, as taught by Lessin ([0045]–[0046], [0054]).
As per claim 7, Wilson, Lessin and Perkowitz teach the system of claim 1 as seen above. Wilson further teaches wherein the request information includes information related to the requested content, and the information related to the requested content includes at least any one of a facility type, a distance to a facility, a facility name, a price range of a facility, or a facility review (all enumerated fields are present (genre/type, name, price, and location/distance via neighborhood/GPS), and reviews are harvested/parsed ([0100]–[0104], [0115]–[0146], [0040], [0064], [0095]–[0097]).
As per claim 8, Wilson, Lessin and Perkowitz teach the system of claim 1 as seen above. Wilson further teaches wherein the update unit records the information input in the recording medium (updates persistent data repository with user inputs/feedback ([0195]–[0206])).
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 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 SHAHID R MERCHANT whose telephone number is (571)270-1360. The examiner can normally be reached M-F 7:30-5.
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/Shahid Merchant/Supervisory Patent Examiner, Art Unit 3684