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 .
Response to Amendment
In light of Applicant's submission filed December 30, 2025, the Examiner has maintained and updated the 35 USC § 101 and 103 rejections.
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 abstract idea without significantly more. The claim(s) recite(s) the following limitations that are considered to be abstract ideas:
Claims 1,11, 19
receiving, from a client, a query for a generative artificial intelligence (Al) tool;
accessing a database comprising query autosuggestion profiles to identify a set of query autosuggestion profiles matching the query, wherein the set of query autosuggestion profiles comprise (i) a first query autosuggestion profile generated based upon a first automatic query autosuggestion request to advertise in association with a first entity and (ii) a second query autosuggestion profile generated based upon a second automatic query autosuggestion request to advertise in association with a second entity;
generating, based upon the query and the set of query autosuggestion profiles, a set of query autosuggestions comprising a first query autosuggestion associated with the first entity and a second query autosuggestion associated with the second entity; generating, based upon the query and the set of query autosuggestion profiles, a set of query autosuggestions;
providing, on the client, an autosuggestion indicative of the set of query autosuggestions;
in response to receiving a selection of a first query autosuggestion of the set of query autosuggestions via the autosuggestion, using the generative Al tool to generate a first content item associated with the first entity based upon the first query autosuggestion; and
providing the first content item for presentation to the client.
. The limitations of independent claim 1, 8, and 16 as detailed above, as drafted, falls within the “Mental Processes” because the claims have concepts of concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or “Certain Method of Organizing Human Activity managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). The applicant’s claims are directed generating content based about the first query autosuggestion and providing content for presentation on a client device. Accordingly, the claims recite an abstract idea
This judicial exception is not integrated into a practical application. In particular the claims recite the additional elements of using an interface, client device, database, computing device, processor, memory, and non-transitory machine readable medium. The aforementioned additional generic computing elements perform the steps of the claims at a high level of generality (i.e. As a generic medium performing generic computer function of receiving, accessing generating, providing) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does 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 interface, client device, database, computing device, processor, memory, and non-transitory machine readable medium amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). 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 the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
Thus, taken individually and in combination, the additional elements do not amount to
significantly more than the above-identified judicial exception (the abstract idea).
The dependent claims 2-10,12-18, and 20 appear to merely further limit the abstract and as such, the analysis of dependent claims 2-10,12-18, and 20 results in the claims “reciting” an abstract idea The claims the claims do not recite additional elements that integrate the exception into a practical application the additional elements do not amount to an inventive concept (significantly more) other than the above-identified judicial exception (the abstract idea).
Thus, based on the detailed analysis above, claims 1 - 20 are not patent eligible.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-6, 10-16, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Williams et al. (US 2014/0280016) in view of Saxena (US 2024/0330579)
Claim 1, 11,19: Williams discloses a method, comprising:
accessing a database comprising query autosuggestion profiles to identify a set of query autosuggestion profiles matching the query, wherein the set of query autosuggestion profiles comprise (i) a first query autosuggestion profile generated based upon a first automatic query autosuggestion request to advertise in association with a first entity and (ii) a second query autosuggestion profile generated based upon a second automatic query autosuggestion request to advertise in association with a second entity;( [0046], Autocomplete advertising module 234 can be configured to receive the user-entered text 420 in the search field 420, and to perform an autocomplete function for the user-entered text 410. Autocomplete is a feature that automatically predicts remaining characters of a word or phrase based on what has been input or typed so far. Autocomplete advertising module 234 can perform autocomplete on the user-entered text 410 to determine one or more predicted queries 430 (e.g., "samsonite", "samsung", and "sam's club" in FIG. 4) based on the user-entered text 410. [0048], determination of the predicted queries 430 can be further based on any combination of one or more of a variety of different signals. These signals can be obtained from the database(s) 126 in FIG. 1. However, it is contemplated that other sources of the signals are also within the scope of the present disclosure. Also see [0052], The autocomplete advertising module 234 can be configured to determine one or more advertisements 450 based on the one or more predicted queries 430. Each advertisement 450 can be for an item being offered for sale. and [0053], if the user has a history of purchasing more Samsonite items than Samsung items, then the autocomplete advertising module 234 can cause an advertisement 450 for a Samsonite item to be displayed in a more prominent position (e.g., higher up on the search page 400) than an advertisement 450 for a Samsung item.))
generating, based upon the query and the set of query autosuggestion profiles, a set of query autosuggestions comprising a first query autosuggestion associated with the first entity and a second query autosuggestion associated with the second entity;([0013, 0046, 0063] Fig. 4, Search page 400 can comprise a search field 420 within which user-entered text 410 (e.g., "sam" in FIG. 4) can be received. Autocomplete advertising module 234 can be configured to receive the user-entered text 420 in the search field 420, and to perform an autocomplete function for the user-entered text 410. Autocomplete is a feature that automatically predicts remaining characters of a word or phrase based on what has been input or typed so far. Autocomplete advertising module 234 can perform autocomplete on the user-entered text 410 to determine one or more predicted queries 430 (e.g., "samsonite", "samsung", and "sam's club" in FIG. 4) based on the user-entered text 410. The predicted queries 430 can comprise at least a portion of the user-entered text 410, as well as predicted text 435. The predicted queries 430 shown in FIG. 4 each comprise the user-entered text 410 "sam", as well as predicted text 435, such as "sonite" for "samsonite", "sung" for "samsung", and "'s club" for "sam's club.")
in response to receiving a selection of the first query autosuggestion of the set of query autosuggestions via the autosuggestion interface, [0046, 0052, 0064]
providing, on the client device, an autosuggestion interface indicative of the set of query autosuggestions; ([0046 and 0047] Autocomplete advertising module 234 can be configured to determine and display the predicted queries 430 in an autocomplete user interface element 440 for the search field 420 prior to any user-instructed submission to the search engine, such as the user selecting (e.g., clicking or tapping) a selectable "Search" button 425 or providing input corresponding to an enter/return command. The user can provide an instruction for submitting the user-entered text 410 for search)
; and providing the first content item for presentation on the client device. ([0057], the autocomplete advertising module 234 is configured to cause the determined advertisement(s) 450 to be displayed to the user concurrently with the predicted queries 430 being displayed in the autocomplete user interface element 440 for the search field 420 prior to the user providing any instruction for submission of the user-entered text 410 or any of the predicted queries) but does not explicitly disclose receiving, from a client device, a query for a generative artificial intelligence (AI) tool; using the generative AI tool to generate a first content item associated with the first entity based upon the first query autosuggestion However Saxena discloses disclose receiving, from a client device, a query for a generative artificial intelligence (AI) tool; ([0021], using the website data or user input, generates a prompt 125 to a large language model (LLM) 130.) using the generative AI tool to generate a first content item associated with the first entity based upon the first query autosuggestion ([0034, 0035, and 0040], a parameter in the selected prompt template is a brand name of an entity associated with the webpage or a product or service offered by the entity. A user may have provided the brand name for another section on the website or when the user created an account to use the website development tool 205. Accordingly, the parameter analysis module 225 can query the website data or user account data to retrieve the brand name when required by a prompt template.[0040], The prompt generator 230 uses the prompt template and any parameters determined by the parameter analysis module 225 or received from a user to generate a prompt to the LLM Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention was made to modify, Williams to receiving, from a client device, a query for a generative artificial intelligence (AI) tool; using the generative AI tool to generate a first content item associated with the first entity based upon the first query autosuggestion, in order provide relevant information from the received communication.
Claim 2, 12, 20: Williams discloses the method of claim 1, wherein generating the first content item comprises:
generating an updated query based upon the first query autosuggestion and the query; [0016]
analyzing the second content item to identify a portion, of the second content item, relevant to a first entity associated with the first query autosuggestion; [0015 and 0016] and
modifying, based upon the portion of the second content item and a first query autosuggestion profile associated with the first query autosuggestion, the second content item to generate the first content item.[0046] But does not explicitly disclose submitting, to the generative Al tool, the updated query to generate a second content item; However Saxena discloses submitting, to the generative Al tool, the updated query to generate a second content item; [0034, 0035, and 0040] Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention was made to modify, Williams to include submitting, to the generative Al tool, the updated query to generate a second content item, in order provide relevant information from the received communication.
Claim 3,13: Williams discloses the method of claim 2, wherein modifying the second content item to generate the first content item comprises supplementing the second content item with a supplemental content item indicated by the first query autosuggestion profile to generate the first content item, the method comprising: [0046]receiving, from the client device, a selection of the supplemental content item; [0046]and in response to the selection of the supplemental content item, directing the client device to an internet resource associated with the first entity. [0052]
Claim 4, 14: Williams discloses the method of claim 2, wherein:
modifying the second content item to generate the first content item comprises supplementing the second content item with a supplemental content item indicated by the first query autosuggestion profile to generate the first content item; [0046] and
the supplemental content item comprises a link to an internet resource associated with the first entity. [0055]
Claim 5, 15: Williams discloses the method of claim 2, comprising:
prior to receiving the query, receiving an automatic query autosuggestion request from the first entity; [0046]and
storing the first query autosuggestion profile in the database in response to the automatic query autosuggestion request, wherein the first query autosuggestion profile is based upon the automatic query autosuggestion request. [0048 and 0052]
Claim 6, 16: Williams discloses the method of claim 1, comprising:
determining that a first query autosuggestion profile, of the set of query autosuggestion profiles, matches the query based upon the query comprising a set of text matching a query key of the first query autosuggestion profile. [0031]
Claim 10: Williams discloses the method of claim 2, comprising: supplementing the query with a set of text indicated by the first query autosuggestion profile to generate the updated query. [0046]
Claim(s) 7-9, 17, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Williams et al. (US 2014/0280016) in view of Saxena (US 2024/0330579) and in further view of Ruiz et al. (US 2015/0006280)
Claim 7, 17: Williams discloses the method of claim 1, wherein the set of query autosuggestion profiles comprises a first query autosuggestion profile associated with the first query autosuggestion of the set of query autosuggestions and a second query autosuggestion profile associated with a second query autosuggestion of the set of query autosuggestions, the method comprising:[0046]
displaying, via the autosuggestion interface, autosuggestion items corresponding to the set of query autosuggestions, wherein the autosuggestion items are arranged based upon the rankings. [0032] but does not explicitly disclose determining a first score associated with the first query autosuggestion profile based upon a first bid associated with the first query autosuggestion profile; determining a second score associated with a second query autosuggestion profile of the set of query autosuggestion profiles based upon a second bid associated with the second query autosuggestion profile; determining rankings of query autosuggestion profiles of the set of query autosuggestion profiles based upon scores comprising the first score and the second score; and However Ruiz discloses determining a first score associated with the first query autosuggestion profile based upon a first bid associated with the first query autosuggestion profile; [0051]
determining a second score associated with a second query autosuggestion profile of the set of query autosuggestion profiles based upon a second bid associated with the second query autosuggestion profile; [0095]
determining rankings of query autosuggestion profiles of the set of query autosuggestion profiles based upon scores comprising the first score and the second score;[0051, 0095] and
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention was made to modify, Williams and Saxena to include determining a first score associated with the first query autosuggestion profile based upon a first bid associated with the first query autosuggestion profile; determining a second score associated with a second query autosuggestion profile of the set of query autosuggestion profiles based upon a second bid associated with the second query autosuggestion profile; determining rankings of query autosuggestion profiles of the set of query autosuggestion profiles based upon scores comprising the first score and the second score, in order to provide competition for the attention of users. ([0008], Ruiz)
Claim 8, 18. Williams discloses the method of claim 1, wherein the set of query autosuggestion profiles comprises a first query autosuggestion profile associated with the first query autosuggestion of the set of query autosuggestions and a second query autosuggestion profile associated with a second query autosuggestion of the set of query autosuggestions, the method comprising: [0078, 0093]
displaying, via the autosuggestion interface, autosuggestion items corresponding to the set of query autosuggestions, wherein the autosuggestion items are arranged based upon the rankings, [0032] but does not explicitly disclose determining a first score associated with the first query autosuggestion profile based upon at least one of:
a first bid associated with the first query autosuggestion profile; a first matching score associated with a relevance of the first query autosuggestion profile to the query; a first predicted user experience impact associated with including the first query autosuggestion in the autosuggestion interface; or a first user response score associated with the first query autosuggestion; determining a second score associated with a second query autosuggestion profile of the set of query autosuggestion profiles based upon at least one of:
a second bid associated with the second query autosuggestion profile; a second matching score associated with a relevance of the second query autosuggestion profile to the query; a second predicted user experience impact associated with including the second query autosuggestion in the autosuggestion interface; or a second user response score associated with the second query autosuggestion; determining rankings of query autosuggestion profiles of the set of query autosuggestion profiles based upon scores comprising the first score and the second score;
However Ruiz discloses determining a first score associated with the first query autosuggestion profile based upon at least one of:
a first bid associated with the first query autosuggestion profile; [0042]
a first matching score associated with a relevance of the first query autosuggestion profile to the query;
a first predicted user experience impact associated with including the first query autosuggestion in the autosuggestion interface; or
a first user response score associated with the first query autosuggestion;
determining a second score associated with a second query autosuggestion profile of the set of query autosuggestion profiles based upon at least one of:
a second bid associated with the second query autosuggestion profile; [0095]
a second matching score associated with a relevance of the second query autosuggestion profile to the query;
a second predicted user experience impact associated with including the second query autosuggestion in the autosuggestion interface; or a second user response score associated with the second query autosuggestion;
determining rankings of query autosuggestion profiles of the set of query autosuggestion profiles based upon scores comprising the first score and the second score; [0051] and
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention was made to modify, Williams and Saxena to include disclose determining a first score associated with the first query autosuggestion profile based upon at least one of: first bid associated with the first query autosuggestion profile; a first matching score associated with a relevance of the first query autosuggestion profile to the query; a first predicted user experience impact associated with including the first query autosuggestion in the autosuggestion interface; or a first user response score associated with the first query autosuggestion; determining a second score associated with a second query autosuggestion profile of the set of query autosuggestion profiles based upon at least one of:
a second bid associated with the second query autosuggestion profile; a second matching score associated with a relevance of the second query autosuggestion profile to the query; a second predicted user experience impact associated with including the second query autosuggestion in the autosuggestion interface; or a second user response score associated with the second query autosuggestion; determining rankings of query autosuggestion profiles of the set of query autosuggestion profiles based upon scores comprising the first score and the second score, in order for content items to have an associate bid amount which is used for ranking or positioning the content items to be presented to a user device. ([0049], Ruiz)
Claim 9: Williams discloses the method of claim 8, comprising: but does not explicitly disclose determining at least one of the first predicted user experience impact or the first user response score based upon the first query autosuggestion profile and a user profile associated with the client device; and
determining at least one of the second predicted user experience impact or the second user response score based upon the second query autosuggestion profile and the user profile.
However Ruiz discloses disclose determining at least one of the first predicted user experience impact or the first user response score based upon the first query autosuggestion profile and a user profile associated with the client device; [0133] and
determining at least one of the second predicted user experience impact or the second user response score based upon the second query autosuggestion profile and the user profile. [0133]
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention was made to modify, Williams and Saxena to include determining at least one of the first predicted user experience impact or the first user response score based upon the first query autosuggestion profile and a user profile associated with the client device; and determining at least one of the second predicted user experience impact or the second user response score based upon the second query autosuggestion profile and the user profile, in order to determine a correlation between the content and the user. (Ruiz [0133])
Response to Arguments
Applicant's arguments filed December 30, 2025 have been fully considered but they are not persuasive. The applicant argues the 101 rejection by stating, The claims require (i) accessing stored query autosuggestion profiles, (ii) algorithmically generating a set of query autosuggestions based on those profiles, (iii) presenting an autosuggestion interface on a client device, and critically, (iv) invoking a generative artificial intelligence tool in response to selection of a specific autosuggestion to generate a content item that did not previously exist. This is not mere "generating content" in the abstract, but a concrete, event-driven interaction between a query
autosuggestion system and a generative AI system, triggered by a specific user selection and resulting in machine-generated output. Such coordinated processing across databases, interfaces, and generative models goes beyond observation, evaluation, or judgment performed in the human mind and instead reflects a technical data-processing pipeline executed by computing systems.” The Examiner respectfully disagrees it appears that the applicant believes that because the claims require computing systems to be perform coordinated processing across databases, interfaces, and generative models makes the claims not abstracts. However, the courts have repeatedly held that claims are still abstract even if they require the use of a computer to perform the steps. (see MPEP 2106.04(a)(2) - • a claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016); The claims recite receiving a query, matching against profiles, generating suggestions, selecting a suggestion and generating content based on said selection. This amounts to evaluating information and producing a result. Which is considered a mental process and/or commercial interaction. The recitation of database, interface, and generative AI tool are merely tools used to implement the abstract idea. - see MPEP 2106.05(f) The applicant further argues the 101 rejection by stating, “the claim is integrated into a practical application and recite significantly more than any alleged abstract idea. As an ordered combination, the claim defines a specific manner of operating a generative AI system by constraining and invoking generation based on a selected query autosuggestion produced from stored autosuggestion profiles. This architecture improves the operation of Al-driven content generation systems by structurally linking autosuggestion selection to downstream generative processing, thereby reducing irrelevant generation, improving contextual relevance, and controlling when and how generative resources are invoked. The Office's characterization of the recited components as merely "generic" overlooks this functional interrelationship and the claimed sequencing, which meaningfully limits the use of any alleged abstract idea and provides a concrete technological solution implemented through computing systems. Accordingly, when properly considered as a whole, the claim is patent-eligible.” The Examiner respectfully disagrees the argument is conclusory and does not appear to be supported by claim language. The claim does not recite how autosuggestions improve AI operation. The alleged benefit of “reducing irrelevant generation” and “improving contextual relevance” are not reflected in the claim limitations but merely represent the intended result. Furthermore, the applicant has not provided any citation to the applicant’s specification to support the asserted improvement. Per MPEP 2106.05(a) - If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art. For example, in McRO, the court relied on the specification’s explanation of how the particular rules recited in the claim enabled the automation of specific animation tasks that previously could only be performed subjectively by humans, when determining that the claims were directed to improvements in computer animation instead of an abstract idea. McRO, 837 F.3d at 1313-14, 120 USPQ2d at 1100-01. In contrast, the court in Affinity Labs of Tex. v. DirecTV, LLC relied on the specification’s failure to provide details regarding the manner in which the invention accomplished the alleged improvement when holding the claimed methods of delivering broadcast content to cellphones ineligible. 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016)
See, e.g., Ex Parte Desjardins, Appeal No. 2024-000567 (PTAB September 26, 2025, Appeals Review Panel Decision) (precedential), in which the specification identified the improvement to machine learning technology by explaining how the machine learning model is trained to learn new tasks while protecting knowledge about previous tasks to overcome the problem of “catastrophic forgetting,” and that the claims reflected the improvement identified in the specification. Indeed, enumerated improvements identified in the Desjardins specification included disclosures of the effective learning of new tasks in succession in connection with specifically protecting knowledge concerning previously accomplished tasks; allowing the system to reduce use of storage capacity; and the enablement of reduced complexity in the system. Such improvements were tantamount to how the machine learning model itself would function in operation and therefore not subsumed in the identified mathematical calculation.
Examples of claims that improve technology or a technical field and are not directed to a judicial exception include: Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339, 118 USPQ2d 1684, 1691-92 (Fed. Cir. 2016) (data structure claims to a self-referential table for a computer database were directed to an improvement in computer capabilities and not directed to an abstract idea); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315, 120 USPQ2d 1091, 1102-03 (Fed. Cir. 2016) (claims to automatic lip synchronization and facial expression animation were directed to an improvement in computer-related technology and not directed to an abstract idea); Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259-60, 123 USPQ2d 1712, 1717 (Fed. Cir. 2017) (claims to an enhanced computer memory system were directed to an improvement in computer capabilities and not an abstract idea); Finjan Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 125 USPQ2d 1282 (Fed. Cir. 2018) (claims to virus scanning were found to be an improvement in computer technology and not directed to an abstract idea); SRI Int’l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1303 (Fed. Cir. 2019) (claims to detecting suspicious activity by using network monitors and analyzing network packets were found to be an improvement in computer network technology and not directed to an abstract idea); Ex Parte Desjardins (claims to a method of training a machine learning model were directed to improvements in the machine learning technology itself and additionally included data structure elements reciting adjustments in values to plurality of performance parameters while preserving prior values). Additional examples are provided in MPEP § 2106.05(a). The applicant has not provided a citation to the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art. Thus, this argument is moot. Limitations that are indicative of integration into a practical application:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
The applicant’s claims do not appear to have any limitations that are indicative of integration into a practical application. Therefore the 35 U.S.C 101 rejection is maintained.
Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 DARNELL A POUNCIL whose telephone number is (571)270-3509. The examiner can normally be reached Monday - Friday 10:00 - 6:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached at (571) 270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/D.A.P/Examiner, Art Unit 3622
/ILANA L SPAR/Supervisory Patent Examiner, Art Unit 3622
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