Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Claims 1 and 10 have been amended.
Claims 19-20 are newly added.
Claims 1-20 are presently pending.
Applicant's arguments filed 17 November 2025 have been fully considered but they are not persuasive.
Regarding Applicant’s arguments that the amended claims overcome the rejections under 35 USC 101 (see Remarks, pgs. 10-11), the Examiner disagrees. See rejections below for full analysis and reasoning.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,999,632 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘632 are generally narrower and anticipate most of the claims and limitations of the instant Application. Although the claims of the ‘632 patent do not discuss normalizing the various consumption data, normalization of data is a well-known and routine statistical process to allow comparison of different data sets.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,722,736 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘736 are generally narrower and anticipate most of the claims and limitations of the instant Application. Although the claims of the ‘736 patent do not discuss normalizing the various consumption data, normalization of data is a well-known and routine statistical process to allow comparison of different data sets. It is noted the ‘736 Patent is subject to a Terminal Disclaimer over the ‘632 Patent.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,063,417 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘417 are generally narrower and anticipate most of the claims and limitations of the instant Application. (it is noted that the term ‘intervention’ used in the ‘417 patent effectively covers the scope of Claims 8/17 of the instant Application). . Although the claims of the ‘417 patent do not discuss normalizing the various consumption data, normalization of data is a well-known and routine statistical process to allow comparison of different data sets.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite the concept of recommending content, which constitutes a Method of Organizing Human Activity which incorporates steps that further constitute Mental Processes that could be performed in a Human Mind. Following the 2019 Patent Eligibility Guidelines, we analyze the claims:
STEP 1: IS THE CLAIM TO A PROCESS, MACHINE, MANUFACTURE, OR COMPOSITION OF MATTER?
YES. Claims 1- 9 are directed toward a Process; Claims 10-18 are directed toward a machine. Claims 19-20 are directed toward an article of manufacture.
STEP 2A, PRONG ONE: DOES THE CLAIM RECITE AN ABSTRACT IDEA, LAW OF NATURE, OR NATURAL PHENOMENON?
YES. Claim 1 (and similarly Claims 10 and 19) recites “determining…that a first subset of the plurality of users has unsubscribed…and that a second subset of the plurality of users has not unsubscribed…”, “identifying a first consumption characteristic typical for the first subset…and atypical for the second subset…”, “determining that a user is consuming, or has consumed at least a portion of, a first content item…”, and “based on determining….generating for display a recommendation for a second content item…” which amount to steps of observation, evaluation, judgment, and opinion that may be performed in the human mind that are collectively directed toward the human activity of providing recommendations (NOTE: the language of ‘for display’ is merely intended use, and as such the limitation merely requires generation of the recommendation). Claim 1 (and similarly Claims 10 and 19) further recite: “normalizing content item consumption data of the first subset…and content item consumption data of the second subset…” which amount to performing mathematical calculations.
Claims 4 and 13 recite: “based on determining that the first user is still subscribed…generating for display the recommendation…” which similarly amount to steps of evaluation and judgments that may be performed in the human mind.
Claims 5 and 14 recite: “based on determining that the first user is no longer subscribed…generating for display a recommendation of a third content item…” which similarly amount to steps of evaluation and judgments that may be performed in the human mind.
Claims 6 and 15 recite: “maintaining a recommendation selection algorithm”, “generating recommendations for users…”, ‘iteratively adjusting the recommendation selection algorithm”, and ‘generating for display the recommendation of the third content item…” which similarly amounts to steps of observation, evaluation, judgment, and opinion that may be performed in the human mind or in the human mind with the aid of pen and paper. (It is noted that the ‘selection algorithm’ as recited may amount to any algorithm, including very straight forward linear equations, or other mathematical algorithms that may be reasonably performed in the human mind).
Claims 7 and 16 recite: “generating for display the recommendation of the second content for a first group of users...”, “declining to generate for display the recommendation of the second content item for a second group of users...” which are human activities of recommending (and similarly not recommending) content to others. Claims 7 and 16 further recite: “determining a first number of user of the first group…”, “determining a second number of users of the second group…”, and “based on determining that the difference between the first number of users and second number of users…” which amount to steps of steps of observation, evaluation, judgment, and opinion that may be performed in the human mind or in the human mind with the aid of pen and paper.
Claims 9 and 18 recite: “maintaining a subscription prediction machine learning model…”, “iteratively adjusting the subscription prediction model…”, and “wherein the identifying the first consumption characteristic comprises identifying the first consumption characteristic using the adjusted subscription prediction model” which similarly amounts to steps of observation, evaluation, judgment, and opinion that may be performed in the human mind or in the human mind with the aid of pen and paper. (It is noted that the ‘prediction model’ as recited may amount to any algorithm, including straight forward linear equations, or other mathematical algorithms that may be reasonably performed in the human mind – such as the PLS regression models as disclosed in the Specification).
STEP 2A, PRONG TWO: DOES THE CLAIM RECITE ADDITIONAL ELEMENTS THAT INTEGRATE THE JUDICIAL EXCEPTION INTO A PRACTICAL APPLICATION?
NO. Claims 1, 10, and 19 recite receiving a request to access a media service, and accessing content item consumption data for a plurality of users previously or currently subscribed to a media service. However, such limitations amount to the extra-solution activity of data collection/retrieval. Claims 1, 10, and 19 further recite the first ‘determining’ step is performed ‘by querying a database’, however, such a limitation amounts to generic use of a computer (at best) to perform a mental process. Claim 10 further recites input/output circuitry which is recited at such a high level of generality to amount to adding the words ‘apply it’ with the judicial exception. Claim 19 recites non-transitory computer-readable medium having instructed encoded thereon that, when executed by a processor, performs the various steps. However, this amounts to recitations of generic computing elements at such a high level of generality to amount to adding the words ‘apply it’ with the judicial exception.
Claims 2-3, 11-12, and 20 further specify the determined information. However, as they merely define the type of information that is determined in Claims 1 and 10, respectively, they do not appreciably integrate the judicial exception into a practical application.
Claims 8 and 17 recite that the recommendation of the second content is generated “in order to minimize a likelihood of the user unsubscribing from the media service” which merely amounts to the intended purpose/result of the recommendation and does not materially integrate the judicial exception into a practical application. Even if such intended use/result language provided limitations that materially limited the structure/steps of the claims, any such resultant benefits would be business-oriented in nature and not something that would affect any improvements in the functioning of a computer, other technology, or technical field. Nor would such a limitation define application of the judicial exception by use of a particular machine.
STEP 2B: DOES THE CLAIM RECITE ADDITIONAL ELEMENTS THAT AMOUNT TO SIGNIFICANTLY MORE THAN THE JUDICIAL EXCEPTION?
No. The additionally elements fail to amount to significantly more than the judicial exception as they largely amount to adding the words ‘apply it’, and fail to improve the functioning of a computer, improve another technology or technical field, apply the judicial exception with or by use of a particular machine, or effect a transformation of a particular article to a different state or thing beyond defining well-understood, routine, and conventional activities. See MPEP 2106.05(II)(i)-(iv).
As such Claims 1-20 are directed toward a judicial exception (abstract idea) without significantly more.
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 WILLIAM J KIM whose telephone number is (571)272-2767. The examiner can normally be reached 9:30am - 5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hadi Armouche can be reached at (571) 270-3618. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM J KIM/Primary Examiner, Art Unit 2409