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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 26, 2026 has been entered.
Status of the Claims
Claims 11 and 13-25 were previously pending. Claims 11, 14-17, 19, and 24-25 were amended and claims 13, 18, and 20-23 were canceled in the reply filed March 26, 2026. Claims 11, 14-17, 19, and 24-25 are currently pending.
Response to Arguments
Applicant's arguments filed with respect to the rejection made under § 101 for the claims being directed to a judicial exception have been fully considered but they are not persuasive. "The amended claim 11 recites a server device that electrically communicates with a database via a communication interface to obtain data indicating evaluation of communication and electrically communicates with a plurality of terminal devices each comprising a processor, a communication interface, and a display screen. These are not abstract concepts as they define a technical architecture with distinct hardware components that interact through defined signal exchanges." Remarks, 10. This is not the basis of the rejection. The terminal devices and other generic hardware have been treated as additional elements. Their presence in the claim does not mean that an abstract ide ais not also recited at this point in the framework. "Prong One asks does the claim recite an abstract idea, law of nature, or natural phenomenon?" MPEP 2106.04 II. A. 1. Applicant does not provide any reasons as to why the limitations identified as abstract are not abstract.
With respect to the elements argued as providing an integration into a practical application or "significantly more" (see Remarks, 11—"a signal exchange between identified hardware components through their communication interfaces," "a functioning server architecture that manages real time communication session establishment across multiple devices," "a specific communication of the hardware of the server device with the database, and terminal devices to 'establish[] electrical communication channel between the terminal devices of the user and the at least one partner'") these all describe generic devices communicating over a nonspecific network. This amounts to nothing more than applying the abstract idea via generic conventional computers connected to the Internet. "The use and arrangement of conventional and generic computer components recited in the claims—such as a database, user terminal, and server— do not transform the claim, as a whole, into 'significantly more' than a claim to the abstract idea itself. We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept in the application of an abstract idea." Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1056 (Fed. Cir. 2017) (citations and quotation marks omitted). Accordingly, the rejection is maintained.
Applicant's arguments with respect to the rejections made under § 103 have been fully considered but are moot in view of the new grounds of rejection.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the detailed description lacks antecedent basis for the claim terms "electrically," "electric," "signal."
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 11, 14-17, 19, and 24-25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (abstract idea without significantly more). Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014). Claims 11, 14-17, 19, and 24-25, each considered as a whole and as an ordered combination, are directed to a judicial exception (i.e., an abstract idea) without significantly more.
MPEP 2106 Step 2A – Prong 1:
The claims recite an abstract idea reflected in the representative functions of the independent claims—including:
store evaluation of communication performed by people including the user in the past,
present an input portion on the display;
indicating information input on the input portion, wherein the information includes content of communication desired by the user;
obtain data indicating evaluation of communication performed by the user in the past and/or evaluation of communication performed by other users similar to the user in the past;
specify a person based on the obtained data and specify features of the specified person as a first feature that a partner of the communication should have;
determine at least one partner based on the content of the communication desired by the user and the first feature;
communicate with the at least one partner and transmit a request for communication with the user;
receive that the at least one partner has approved the request;
communicate with the user and present the at least one partner who has approved the request as the partner of the communication on the display;
receive an input that the user has selected to perform communication with the at least one partner;
enable communication between the user and the at least one partner,
wherein specifying the first feature comprises:
specifying the person who is evaluated by the user or the other users to have an evaluation value above a threshold value; and
specifying features of the specified person as the first feature, wherein determining the at least one partner comprises:
extracting a plurality of candidates for the partner based on the content of the communication desired by the user and the first feature,
for each candidate for the partner of the plurality of candidates for the partner, specifying a second feature that a partner should have in communication with the candidate for the partner based on results of communication performed by the candidate for the partner in past, and
determining the at least one partner from the plurality of candidates for the partner based on whether or not the user has the second feature of each of the plurality of candidates for the partner.
These limitations taken together qualify as a certain method of organizing human activities because they recite collecting, analyzing, and outputting information matching people with one another based on similar features and past evaluations (i.e., in the terminology of the 2019 Revised Guidance, managing personal behavior or relationships or interactions between people (including social activities, teaching). Additionally, it covers purely mental processes (e.g., a person observing and evaluating features and communications, and arriving at a judgment on a partner).
It shares similarities with other abstract ideas held to be non-statutory by the courts (see Trinity Info Media, LLC, fka Trinity Intel Media, LLC, v. Covalent, Inc., No. 2022-1308 (Fed. Cir. July 14, 2023)—matching users based on responses to questions, similar because at another level of abstraction the claims could be characterized as matching users based on user communications; Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015)—tailoring sales information presented to a user based on, e.g., user data or time data, similar because at another level of abstraction the claims could be characterized as tailoring partner information presented to a user based on, e.g., user data or communication data; Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)—process of gathering and analyzing information of a specified content, then displaying the results, similar because at another level of abstraction the claims could be characterized as process of gathering and analyzing information of a potential user partners, then presenting the results).
These cases describe significantly similar aspects of the claimed invention, albeit at another level of abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer.").
MPEP 2106 Step 2A – Prong 2:
This judicial exception is not integrated into a practical application because there are no meaningful limitations that transform the exception into a patent eligible application. The elements merely serve to provide a general link to a technological environment (e.g., computers and the Internet) in which to carry out the judicial exception (non-transitory computer-readable storage medium; processor; communication interface; server device; database; plurality of terminal devices that comprise a processor, a communication interface, and a display screen; electrical communication via signals via the communication interface among these generic devices; voice communication and/or video communication by establishing an electrical communication channel between the terminal devices—all recited at a high level of generality).
Although the claims have and execute instructions to perform the abstract idea itself (e.g., modules, program code, etc. to automate the abstract idea), this also does not serve to integrate the abstract idea into a practical application as it merely amounts to instructions to "apply it." Aside from such instructions to implement the abstract idea, they are solely used for generic computer operations (e.g., receiving, storing, retrieving, transmitting data), employing the computer as a tool. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter.") (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,1256 (Fed. Cir. 2014)) (emphasis added).
The claims only manipulate abstract data elements into another form and communicate between generic devices over a generic network. They do not set forth improvements to another technological field or the functioning of the computer itself and instead use computer elements as tools to improve the functioning of the abstract idea identified above (i.e., facilitating communications between people via generic computers).
Looking at the additional limitations and abstract idea as an ordered combination and as a whole adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Rather than any meaningful limits, their collective functions merely provide generic computer implementation of the abstract idea identified in Prong One. None of the additional elements recited "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Alice Corp., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)).
At the levels of abstraction described above, the claims do not readily lend themselves to a finding that they are directed to a nonabstract idea. Therefore, the analysis proceeds to step 2B. See BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) ("The Enfish claims, understood in light of their specific limitations, were unambiguously directed to an improvement in computer capabilities. Here, in contrast, the claims and their specific limitations do not readily lend themselves to a step-one finding that they are directed to a nonabstract idea. We therefore defer our consideration of the specific claim limitations’ narrowing effect for step two.") (citations omitted).
MPEP 2106 Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for the same reasons as presented in Step 2A Prong 2 (i.e., they amount to nothing more than a general link to a particular technological environment and instructions to apply it there). Moreover, the additional elements recited are known and conventional computing elements (non-transitory computer-readable storage medium; processor; communication interface; server device; database; plurality of terminal devices that comprise a processor, a communication interface, and a display screen; electrical communication via signals via the communication interface among these generic devices; voice communication and/or video communication by establishing an electrical communication channel between the terminal devices—see published Specification ¶¶ 0104, 124, 137-141, 149, 160-163 describing these at a high level of generality and in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy the statutory disclosure requirements).
The Federal Circuit has recognized that "an invocation of already-available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is 'well-understood, routine, [and] conventional.'" SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (alteration in original) (citing Mayo v. Prometheus, 566 U.S. 66, 73 (2012)). Apart from the instructions to implement the abstract idea, they only serve to perform well-understood functions (e.g., receiving, storing, retrieving, transmitting data—see Specification above as well as Alice Corp.; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016); and Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) covering the well-known nature of these basic computer functions).
"The use and arrangement of conventional and generic computer components recited in the claims—such as a database, user terminal, and server— do not transform the claim, as a whole, into 'significantly more' than a claim to the abstract idea itself. We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept in the application of an abstract idea." Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1056 (Fed. Cir. 2017) (citations and quotation marks omitted). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Dependent Claims Step 2A:
The limitations of the dependent claims but for those addressed below merely set forth further refinements of the same abstract idea identified above without changing the analysis already presented (i.e., they merely narrow the abstract idea without adding any new additional elements beyond it). Additionally, for the same reasons as above, the limitations fail to integrate the abstract idea into a practical application because they use the same general technological environment and instructions to implement the abstract idea as the independent claims (i.e., generic computers communicating over a generic network).
Dependent Claims Step 2B:
The dependent claims merely use the same general technological environment and instructions to implement the abstract idea. They do not add any new additional elements to be analyzed here. Moreover, the Specification also indicates this is the routine use of known components for the same reasons presented with respect to the elements in the independent claims above. Accordingly, they are not directed to significantly more than the exception itself, and are not eligible subject matter under § 101.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 11, 14-17, and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Kabdebon, et al., U.S. Pat. Pub. No. 2018/0300818 (Reference A of the PTO-892 part of paper no. 20250718) in view of Meltzer, et al., U.S. Pat. Pub. No. 2010/0198659 (Reference A of the PTO-892 part of paper no. 20251229) and Vrijsen, U.S. Pat. Pub. No. 2021/0365864 (Reference B of the PTO-892 part of paper no. 20250718).
As per claim 11, Kabdebon teaches a server device comprises:
a processor (¶ 0067); and
a communication interface, the server device is configured to electrically communicate with a database via the communication interface (¶¶ 0052, 69, 71),
wherein each of the plurality of terminal devices comprises a processor, a communication interface and a display screen (¶ 0052),
wherein the processor is configured to:
electrically communicate with the terminal device of the user via the communication interface to transmit instructions to cause the terminal device of the user to present an input portion on the display screen (¶¶ 0049, 52-53, 63);
receive a signal indicating information input on the input portion via the communication interface, wherein the information includes content of communication desired by the user (¶¶ 0049, 53-54, 63);
electrically communicate with the database via the communication interface and obtain data (¶¶ 0050-51, 69);
specify a person based on the obtained data and specify features of the specified person as a first feature that a partner of the communication should have (¶ 0014, 24);
determine at least one partner based on the content of the communication desired by the user and the first feature (¶ 0014, 24);
electrically communicate with the terminal device of the at least one partner via the communication interface and transmit a signal indicating a request for communication with the user (¶ 0014);
receive a signal indicating that the at least one partner has approved the request via the communication interface (¶¶ 0014, 58, 72);
electrically communicate with the terminal device of the user and transmit instructions to cause the terminal device of the user to present the at least one partner who has approved the request as the partner of the communication on the display screen (¶¶ 0014, 57-59);
receive an input that the user has selected to perform communication with the at least one partner via the communication interface (¶ 0059);
enable communication between the user and the at least one partner by establishing an electrical communication channel between the terminal devices of the user and the at least one partner (¶¶ 0059-61),
wherein specifying the first feature comprises:
specifying features of the specified person as the first feature (¶ 0024), wherein determining the at least one partner comprises:
extracting a plurality of candidates for the partner based on the content of the communication desired by the user and the first feature (¶¶ 0024, 54),
for each candidate for the partner of the plurality of candidates for the partner, specifying a second feature that a partner should have in communication with the candidate for the partner (¶ 0024), and
determining the at least one partner from the plurality of candidates for the partner based on whether or not the user has the second feature of each of the plurality of candidates for the partner (¶¶ 0024, 54).
Kabdebon does not explicitly teach the database stores evaluation of communication performed by people including the user in the past; obtain data indicating evaluation of communication performed by the user in the past and/or evaluation of communication performed by other users similar to the user in the past; specifying the person who is evaluated by the user or the other users to have an evaluation value above a threshold value; and specifying a second feature based on results of communication performed by the candidate for the partner in past. However, this is taught by Meltzer (¶¶ 0004, 23, 27-28). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Meltzer—namely, to apply past evaluation standards to the matching and match the user with more helpful people. Moreover, this is merely a combination of old elements in the art of pairing mentors and mentees. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
Kabdebon does not explicitly teach to enable voice communication and/or video communication; which is taught by Vrijsen (¶ 0051). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Vrijsen—namely, to facilitate communication. Moreover, this is merely a combination of old elements in the art of pairing mentors and mentees. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
As per claim 14, Kabdebon in view of Meltzer and Vrijsen teaches claim 11 as above. Kabdebon further teaches the content of the communication desired by the user includes a topic that the user wants to talk about in the communication and/or response of the partner desired by the user in the communication (¶¶ 0040, 63).
As per claim 15, Kabdebon in view of Meltzer and Vrijsen teaches claim 11 as above. Kabdebon further teaches the first feature includes a feature regarding a job (¶ 0025).
As per claim 16, Kabdebon in view of Meltzer and Vrijsen teaches claim 15 as above. Kabdebon further teaches the feature regarding the job includes a career (¶ 0025).
As per claim 17, Kabdebon in view of Meltzer and Vrijsen teaches claim 16 as above. Kabdebon further teaches the processor is further configured to receive a signal indicating content of a career desired by the user, and determine the at least one partner further based on the content of the career (¶¶ 0024-25).
As per claim 24, Kabdebon in view of Meltzer and Vrijsen teaches a method for determining a partner of communication, the method comprising: steps implementing the functions of analogous claim 1 (see citations and obviousness rationale above).
As per claim 25, Kabdebon in view of Meltzer and Vrijsen teaches a computer-readable storage medium that stores a program for determining a partner of communication, the program being executed in a computer system including a processor unit, and the program causing the processor unit to execute processing comprising: steps implementing the functions of analogous claim 1 (¶¶ 0067-68, see also citations and obviousness rationale above).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Kabdebon, et al. in view of Meltzer, et al. and Vrijsen as applied to claim 11 above, further in view of Diehl, et al., U.S. Pat. Pub. No. 2010/0094679 (Reference C of the PTO-892 part of paper no. 20250718).
As per claim 19, Kabdebon in view of Meltzer and Vrijsen teaches claim 11 as above. The references not explicitly teach the user is anonymously indicated in the request, and the at least one partner is anonymously presented to the user; which is taught by Diehl (Abst.). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Diehl—namely, to retain privacy of the users prior to establishing the relationship. Moreover, this is merely a combination of old elements in the art of pairing mentors and mentees. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL VETTER whose telephone number is (571)270-1366. The examiner can normally be reached M-F 9:00-6:00.
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/DANIEL VETTER/Primary Examiner, Art Unit 3628
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