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 .
Status of the Claims
Claims 11-25 were previously pending. Claims 11, 13, 17-18, and 23-25 were amended, and claim 12 was canceled in the reply filed November 24, 2025. Claims 11 and 13-25 are currently pending.
Response to Arguments
Applicant's amendments obviate the interpretation under § 112(f) and it is withdrawn.
Applicant's amendments overcome the rejection of claim 25 made under § 101 for the claim not falling within a statutory category and it is withdrawn.
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.
"No organization of human activities or mental process can cause communication between terminal devices." Remarks, 9. This is not the basis of the rejection. The terminal devices have been treated as additional elements. Their presence in the claim does not mean that an abstract idea is not also recited at Step 2A – Prong One. Moreover, "communication between terminal devices" is a generic feature of nearly every computer and the mere presence of a computer does not exclude the claim from reciting certain methods of organizing human activities. "Finally, the sub-groupings encompass both activity of a single person (for example, a person following a set of instructions or a person signing a contract online) and activity that involves multiple people (such as a commercial interaction), and thus, certain activity between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within the 'certain methods of organizing human activity' grouping." MPEP 2106.04(a)(2) II. (emphasis added). Interpreting the claimed invention as only covering the relationship between two devices and not the people operating them would "exalt[] form over substance" and reduce the § 101 inquiry to one of drafting technique.
"Using the evaluation of a user, and particularly the evaluation value compared to a threshold is not a conventional method of performing a search." Remarks, 10. As above, this is not the basis of the rejection. Using an evaluation value compared to a threshold is part of the abstract idea as it describes a non-technological methodology for coordinating interactions between people. Applicant has not established that this or any other element is an improvement that can confer eligibility. Accordingly, the rejection is maintained.
Applicant's arguments with respect to the rejections made under §§ 102 & 103 have been fully considered but are moot in view of the new grounds of rejection.
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 and 13-25 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 and 13-25, 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:
communicating with a user to present an input portion;
receiving, from the user, content of communication desired by the user which is input on the input portion;
specifying a person based on 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 and specifying features of the specified person as a first feature that the partner of the communication should have based on results of communication performed by the user in past and/or results of communication performed by other users similar to the user in past;
determining at least one partner based on the content of the communication desired by the user and the first feature;
transmitting, to the at least one partner, a request for communication with the user;
in response to receiving, from the at least one partner, an input that the at least one partner has approved the request, communicating with the user to present the at least one partner who has approved the request as the partner of the communication; and
after receiving, from the user, an input selecting that the user performs communication with the at least one partner, initiating the communication between the user and the at least one partner, wherein
the specifying the first feature includes: 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.
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 (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 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 (two generic terminal devices with generic user interfaces, computer system including a processor unit, non-transitory computer-readable storage medium —all recited at a high level of generality). Although they 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. 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. 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 (two generic terminal devices with generic user interfaces, computer system including a processor unit, non-transitory computer-readable storage medium—see published Specification ¶¶ 0138-141, 149, 162 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 abstract idea 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 computer system with "means" to perform the functions). Claim 20 introduces a generic database and claim 23 introduces a generic user interface. However, as with the other elements, these merely serve to describe the general link to a particular technological environment in which to perform the abstract idea.
Dependent Claims Step 2B:
The dependent claims merely use the same general technological environment and instructions to implement the abstract idea. Although they add the elements identified in 2A above (generic database and user interface), these do not amount to significantly more for the same reasons they fail to integrate the abstract idea into a practical application. 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 (see ¶¶ 0140, 160). 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, 13-18, and 20-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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 attached PTO-892).
As per claim 11, Kabdebon teaches a computer system for determining a partner of communication, the computer system comprising:
a processor (¶ 0067) configured to:
communicate with a terminal device of a user to present an input portion on a user interface of the terminal device of the user (¶ 0049);
receive, from the terminal device of the user, content of communication desired by the user which is input on the input portion via the user interface (¶¶ 0024, 49);
specify a person based on 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 and specify features of the specified person as a first feature that the partner of the communication should have based on results of communication performed by the user in past and/or results of communication performed by other users similar to the user in past (¶ 0014, 24);
determine at least one partner based on the content of the communication desired by the user and the first feature (¶ 0014, 24);
transmit, to the terminal device of the at least one partner, a request for communication with the user (¶ 0014);
in response to receiving, from the terminal device of the at least one partner, an input that the at least one partner has approved the request, communicate with 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 user interface (¶¶ 0014, 58, 72); and
after receiving, from the terminal device of the user, an input selecting that the user performs communication with the at least one partner, initiate the communication between the user and the at least one partner via the terminal device of the user and the terminal device of the at least one partner (¶ 0059), wherein
the processor is further configured to specify the first feature by: specifying features of the specified person as the first feature (¶ 0014, 24).
Kabdebon does not explicitly teach specifying the person who is evaluated by the user or the other users to have an evaluation value above a threshold value; which is taught by Meltzer (¶¶ 0004, 28). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Meltzer—namely, to apply evaluation standards to the matching. 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 13, Kabdebon in view of Meltzer teaches claim 11 as above. Kabdebon further teaches the processor is further configured to extract a plurality of candidates for the partner based on the content of the communication desired by the user and the first feature (¶ 0054), for each candidate for the partner of the plurality of candidates for the partner, specify a second feature that the 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 (¶¶ 0014, 24, 50-51), and determine 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 (¶¶ 0014, 24).
As per claim 14, Kabdebon in view of Meltzer 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 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 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 teaches claim 16 as above. Kabdebon further teaches the processor is further configured to receive 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 18, Kabdebon in view of Meltzer teaches claim 11 as above. Kabdebon further teaches the processor is further configured to transmit a request for communication with the user to the determined at least one partner (¶ 0014); and present the at least one partner who has approved the request to the user as the partner of the communication in response to approval of the request by the at least one partner (¶¶ 0058-59).
As per claim 20, Kabdebon in view of Meltzer teaches claim 11 as above. Kabdebon further teaches a database unit that stores evaluation of communication performed by a plurality of users in the past and features of the plurality of users (¶¶ 0050-51).
As per claim 21, Kabdebon in view of Meltzer teaches claim 11 as above. Kabdebon further teaches the computer system is configured to enable communication between the user and the determined at least one partner to be executed (¶ 0059).
As per claim 22, Kabdebon in view of Meltzer teaches claim 21 as above. Kabdebon further teaches the communication is executed via only speech or via video and speech or via text or via an avatar (¶ 0059—text).
As per claim 23, Kabdebon in view of Meltzer teaches claim 11 as above. Kabdebon further teaches the processor is further configured to provide a plurality of input portions on the user interface (¶ 0063); and receive the content of communication input to one of the plurality of input portions via the user interface (¶¶ 0049, 63), and wherein the determined at least one partner is presented on the user interface (¶¶ 0057-58).
As per claim 24, Kabdebon in view of Meltzer teaches a method for determining a partner of communication, the method comprising: steps implementing the functions of analogous claim 1 (see citations above).
As per claim 25, Kabdebon in view of Meltzer 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 above).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Kabdebon, et al. in view of Meltzer, et al. as applied to claim 18 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 teaches claim 18 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
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 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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