DETAILED ACTION
Status of Claims
Claims 1-20 are currently pending and have been examined in this application. This communication is the first action on the merits.
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 .
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,045,779. Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 is generic to all that is recited in Claim 1 of U.S. Patent No. 12,045,779. That is, Claim 1 of U.S. Patent No. 12,045,779 falls entirely within the scope of Claim 1 or, in other words, Claim 1 is anticipated by Claim 1 of U.S. Patent No. 12,045,779.
Claim 1 of the instant application and Claim 1 of the Patent are exemplary. The subject matter of Claims 2-20 of the instant application is similarly disclosed by Claims 2-18 of the Patent.
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.
Step 1
Claims 1-10 are directed to a process. Claims 11-19 are directed to a machine. Claim 20 is directed to an article of manufacture. As such, each claim is directed to a statutory category of invention.
Step 2A Prong 1
The examiner has identified independent Claim 11 as the claim that represents the claimed invention for analysis and is similar to independent Claims 1 and 20.
Independent Claim 11 recites the following abstract ideas: “excluding irrelevant data from talent profiles, and generating and presenting updated talent profiles, to: obtain a first talent profile, wherein the first talent profile comprises an identifier of a person, and a plurality of key-value pairs characterizing aspects of the person; determine whether one or more keys in the second plurality of key-value pairs are relevant to a job role; generate a second talent profile by: for each of the one or more keys that is determined irrelevant to the job role, excluding the corresponding key-value pair from the first talent profile; for each of the one or more keys that is determined relevant to the job role, determining an abstracted value that is relevant to the job role and encompasses the value, and replacing the value in the corresponding key-value pair with an abstracted value in the first talent profile; and present the second talent profile to the profile reviewer.”
The limitations, as drafted, are a process that, under its broadest reasonable interpretation, relates to managing personal behavior or relationships or interactions between people including social activities, teaching, and following rules or instructions (i.e., excluding irrelevant data from talent profiles, and generating and presenting updated talent profiles, to: obtain a first talent profile, wherein the first talent profile comprises an identifier of a person, and a plurality of key-value pairs characterizing aspects of the person; determine whether one or more keys in the second plurality of key-value pairs are relevant to a job role; generate a second talent profile by: for each of the one or more keys that is determined irrelevant to the job role, excluding the corresponding key-value pair from the first talent profile; for each of the one or more keys that is determined relevant to the job role, determining an abstracted value that is relevant to the job role and encompasses the value, and replacing the value in the corresponding key-value pair with an abstracted value in the first talent profile; and present the second talent profile to the profile reviewer), but for the recitation of generic computer components (i.e., a computer system comprising a memory and one or more processors). If a claim limitation, under its broadest reasonable interpretation, relates to managing personal behavior or relationships or interactions between people including social activities, teaching, and following rules or instructions, but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas.
Additionally, the limitations, as drafted, are a process that, under its broadest reasonable interpretation, covers performance of the limitations in the human mind, or via pen and paper (i.e., excluding irrelevant data from talent profiles, and generating and presenting updated talent profiles, to: obtain a first talent profile, wherein the first talent profile comprises an identifier of a person, and a plurality of key-value pairs characterizing aspects of the person; determine whether one or more keys in the second plurality of key-value pairs are relevant to a job role; generate a second talent profile by: for each of the one or more keys that is determined irrelevant to the job role, excluding the corresponding key-value pair from the first talent profile; for each of the one or more keys that is determined relevant to the job role, determining an abstracted value that is relevant to the job role and encompasses the value, and replacing the value in the corresponding key-value pair with an abstracted value in the first talent profile; and present the second talent profile to the profile reviewer), but for the recitation of generic computer components (i.e., a computer system comprising a memory and one or more processors). If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas.
Accordingly, the claim recites an abstract idea.
Step 2A Prong 2
This judicial exception is not integrated into a practical application. Limitations that are not indicative of integration into a practical application include: (1) Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (MPEP 2106.05(f)), (2) Adding insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g)), (3) Generally linking the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)). In particular, the claim recites the additional elements of a computer system comprising a memory and one or more processors (in addition to the non-transitory CRM of Claim 20). The computer hardware is recited at a high level of generality (i.e., generic computers receiving, processing, determining, and transmitting information) such that it amounts to no more than mere instructions to apply the exception using generic computer components. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application, since they do not involve improvements to the functioning of a computer or to any other technology or technical field (MPEP 2106.05(a)), they do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), they do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and they do not apply or use the abstract idea in some other meaningful way beyond generally linking its use to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e)). Therefore, the claim is directed to an abstract idea without a practical application.
Step 2B
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. The additional elements of using computer hardware (a computer system comprising a memory and one or more processors (in addition to the non-transitory CRM of Claim 20)) amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. Therefore, the claim is not patent-eligible.
Dependent claims 3-5 and 13-15 recite a “neural network module.” This additional element is recited in a generic manner, as a tool used to implement the abstract idea, and it does not integrate the abstract idea into a practical application, nor is it sufficient to amount to significantly more than the abstract idea when considered both individually and as an ordered combination.
Dependent claims 2, 6-10, 12, and 16-19 do not include any additional elements beyond those identified above. They further define the abstract idea that is present in their respective independent claims and hence are abstract for at least the reasons presented above. As such, they do not integrate the abstract idea into a practical application, nor are they sufficient to amount to significantly more than the abstract idea when considered both individually and as an ordered combination.
Therefore, dependent claims 2-10 and 12-19 are directed to an abstract idea, and do not include additional elements that integrate the abstract idea into a practical application, or that are sufficient to amount to significantly more than the abstract idea. Thus, the aforementioned claims are not patent-eligible.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 101 set forth in this Office action, and if the double patenting rejection set forth in this Office action is overcome.
Benedict et al. (US-10776758) teaches obtaining a first talent profile, wherein the first talent profile comprises an identifier of a person, and a plurality of values characterizing aspects of the person, and generating a second talent profile by excluding values determined irrelevant to the job role from the first talent profile. Shen (US-10467339) teaches presenting the second talent profile to a profile reviewer. However, none of the prior art teaches that the first talent profile comprises a plurality of key-value pairs characterizing aspects of the person; determining whether one or more keys in the plurality of key-value pairs are relevant to a job role; generating a second talent profile by: for each of the one or more keys that is determined irrelevant to the job role, excluding the corresponding key-value pair from the first talent profile; for each of the one or more keys that is determined relevant to the job role, determining an abstracted value that is relevant to the job role and encompasses the value, and replacing the value in the corresponding key-value pair with the abstracted value in the first talent profile.
The closest NPL, Sarah Dobson “Feds Try to Blank Out Bias,” teaches obtaining a first talent profile, wherein the first talent profile comprises an identifier of a person, and a plurality of values characterizing aspects of the person, generating a second talent profile by excluding values determined irrelevant to the job role from the first talent profile, and presenting the second talent profile to a profile reviewer. However, it does not teach that the first talent profile comprises a plurality of key-value pairs characterizing aspects of the person; determining whether one or more keys in the plurality of key-value pairs are relevant to a job role; generating a second talent profile by: for each of the one or more keys that is determined irrelevant to the job role, excluding the corresponding key-value pair from the first talent profile; for each of the one or more keys that is determined relevant to the job role, determining an abstracted value that is relevant to the job role and encompasses the value, and replacing the value in the corresponding key-value pair with the abstracted value in the first talent profile.
Conclusion
The prior art made of record and not relied upon, considered pertinent to applicant’s disclosure or directed to the state of art, is listed on the enclosed PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARMA EL-CHANTI whose telephone number is (571)272-3404. The examiner can normally be reached T-Sa 10am-6pm ET.
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/KARMA A EL-CHANTI/Examiner, Art Unit 3629 /SARAH M MONFELDT/Supervisory Patent Examiner, Art Unit 3629