DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Arguments
Applicant's approved Terminal Disclaimer overcomes the double patenting rejection, and it is withdrawn.
Applicant's arguments filed with respect to the rejection made under § 103 have been fully considered and they are persuasive. The rejection is withdrawn.
Applicant's arguments filed with respect to the rejection made under § 101 have been fully considered but they are not persuasive.
Applicant argues that the “Office Action cites MPEP 2106 regarding "certain methods of organizing human activity" and "commercial interactions including advertising, marketing or sales activities." However, the claims do not recite advertising, marketing, or sales activities”.
Examiner notes that the Broadest Reasonable Interpretation of the claims in light of the specification is that the “selecting certain groups” are for commercial items/downloadable products. The Specification discloses:
“The publication system 102 comprises a network-based marketplace and provides a number of publishing, listing, and price-setting mechanisms whereby a seller (e.g., business or consumer) may list (or publish information concerning) goods or services for sale, a buyer can search for, express interest in, or indicate a desire to purchase such goods or services, and a price can be set for a transaction pertaining to the goods or services.”
This strengthens the argument that selecting downloadable products for presentation to the user are commercial in nature. Even if we were to say the claims didn’t fall under advertising, marketing, or sales activities/behaviors because the claims don’t explicitly recite the commercial nature of the recommendations, those activities aren’t the only types of methods of organizing human activities we can use. Presenting products to the user would fall under the sub-grouping "managing personal behavior or relationships or interactions between people". The MPEP notes that this sub-grouping “include social activities, teaching, and following rules or instructions.”
Applicant argues that the claims integrate any alleged abstract idea into a practical application and solving a concrete technical problem.
The problem highlighted in the Arguments is at the abstract layer of organizing human activities, not one borne out of technology. The problems noted in Specification do not highlight any failures of modern computers. These are business implementation problems and do not set forth any deficiencies that are particular to computer capabilities or any other technology. "In sum, 'software can make non-abstract improvements to computer technology just as hardware improvements can.' Enfish, 822 F.3d at 1335. But to be directed to a patent-eligible improvement to computer functionality, the claims must be directed to an improvement to the functionality of the computer or network platform itself." Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020) (emphasis added).
These elements are all abstract and when viewed in combination only amount to applying the abstract idea on generic computers. "Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application…" MPEP 2106.04(d) II. (emphasis added).
Accordingly, the rejection is maintained.
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 2-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (a judicial exception 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 2-21 each considered as a whole and as an ordered combination, are directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 2 recites a method. Claim 10 recites a system. Claim 16 recites a non-transitory computer-readable medium.
Step 2A, prong 1: Claim 2 recites the abstract idea of selecting products for display to a user. This idea is described by the following steps:
A method comprising:
accessing a plurality of downloadable products that are available for downloading, wherein the plurality of downloadable products are categorized into two or more categories;
determining a plurality of groups for grouping the plurality of downloadable products;
associating, based on the two or more categories, the plurality of downloadable products into respective groups of the plurality of groups; and
selecting a certain group of the plurality of groups to provide to a certain user.
Claims 10 and 16 recite equivalent limitations.
This idea falls into the certain methods of organizing human activity grouping of abstract ideas as it is directed towards commercial interactions including advertising, marketing or sales activities or behaviors (i.e., selecting downloadable products for displaying to a user).
Step 2A, prong 2: Claims 10 and 16 recite additional elements that fail to integrate the abstract idea into practical application.
Claims 10 and 16 recite a processor and non-transitory memory storing instructions that are executable by the one or more processors to cause the computing system to perform operations. However, these elements are generic computing components (see at least paragraphs 057-059) that are simply used to perform operations that would otherwise be abstract (see MPEP2106.05(f)).
Step 2B: Claims 2, 10 and 16 fail to recite additional elements that amount to an inventive concept.
For the reasons identified with respect to Step 2A, prong 2, claims 2, 10 and 16 fail to recite additional elements that amount to an inventive concept. For example, use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more (see MPEP 2106.05(g)).
Dependent Claims Step 2A:
The limitations of the dependent claims merely set forth further refinements of the abstract idea identified at step 2A—Prong One, without changing the analysis already presented. 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 identified at step 2A—Prong Two.
Dependent Claims Step 2B:
The dependent claims merely use the same general technological environment and instructions to implement the abstract idea. 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.
Thus, when considering the combination of elements and the claimed invention as a whole, the claims are not patent eligible.
Allowable Subject Matter
Claims 2-21 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action.
The prior art of record neither anticipates nor renders obvious the combination of:
accessing a plurality of downloadable products that are available for downloading from a server to one or more user devices, wherein the plurality of downloadable products are categorized into two or more categories; determining a plurality of groups for grouping the plurality of downloadable products, wherein one or more of the plurality of groups are for displaying on user interfaces (UIs) of the one or more user devices; associating, based on the two or more categories, the plurality of downloadable products into respective groups of the plurality of groups; and selecting a certain group of the plurality of groups to provide to a certain user device for displaying on a UI of the certain user device.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/MILA AIRAPETIAN/Primary Examiner, Art Unit 3688
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