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 Claims
Claims 1-24 are pending and examined herein per Applicant’s 10/15/2025 filing with the Office. Claims 1-3, 5, 8-10, 12, 15-17, and 19 are amended. Claim 22-24 are newly added. No claims are canceled or withdrawn.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/17/2025 was is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
Applicant’s amendments do NOT overcome the 35 USC 101 rejection of the previous Office action. The rejections are maintained as updated below.
Applicant’s amendments overcome the art rejection of the previous Office action.
Response to Arguments
Applicant's arguments filed in response to the previous Office action have been fully considered but they are not persuasive.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7, 14, and 21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 7 depends from claim 1. Claim 7 recites the claimed limitation of “the member profile through trained machine learning model”. Claim 1 includes the limitations of “trained task machine learning model” and “likelihood machine learning model”, since both machine learning models of claim 1 are inherently trained it is unclear which machine learning model of claim 1 is referenced in claim 7.
Claims 14 and 21 recite similar limitations that are rejected for the same reasoning given above.
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 1-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (i.e. mathematical concepts, certain methods of organizing human activity, and mental processes) without practical application or significantly more when the elements are considered individually and as an ordered combination.
Step 1: Is the claimed invention to a process, machine, manufacture or composition of matter?
Yes, the claims fall within at least one of the four categories of patent eligible subject. Claims 1-7 and 22 are to a process (method), claims 8-14, 23, and 24 are to a system (machine), and claims 15-21 are to a medium (manufacture).
Step 2A, prong 1: Does the claim recite an abstract idea, law or nature, or natural phenomenon?
Yes, the claims are found to recite an abstract idea. Specifically, the abstract idea of mathematical concepts, certain methods of organizing human activity and mental processes.
Where mathematical concepts are mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I).
Where certain methods of organizing human activity include fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2), subsection II).
Where mental processes relates to concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).
Claim 1 (as a representative claim) recites the following, where the limitations found to contain elements of the abstract idea are in bold italics:
1. A computer-implemented method, comprising:
processing a set of messages in real-time at a computing device to automatically identify a goal associated with a member and a category wherein processing occurs as the set of messages are being exchanged with a member device associated with the member, and wherein the set of messages are processed according to a member profile associated with the member;
transmitting the identified goal, wherein when the goal is received by the member device, the member device dynamically invokes a graphical user interface (GUI) that displays the goal;
clustering a set of other member profiles corresponding to other members, wherein clustering identifies vectors of similarity between member profiles, and wherein clustering generates one or more clusters of member profiles;
processing member profiles corresponding to a cluster through a trained task machine learning model to identify a task grouping, wherein the task grouping includes a set of task to be performed for achieving the goal;
generating a proposal option associated with the task grouping and an alternate proposal option associated with an alternate task grouping;
processing the proposal option, the alternate proposal option, and the member profile through a likelihood machine learning model to determine likelihoods of the member selecting the proposal option and the alternate proposal option;
transmitting a proposal including the proposal option and an alternate proposal option, wherein when the proposal is received by the member device, and wherein the GUI is dynamically updated to display the proposal option and the alternate proposal option according to a likelihood of member selection;
receiving input corresponding to a selection of the proposal option, wherein the selection indicates that the task grouping is to be performed to achieve the goal; and
automatically updating the task machine learning model using additional messages as the additional messages are exchanged and feedback associated with selection of the proposal option, wherein automatically updating includes dynamically updating the GUI to identify improved task recommendations for subsequent goals.
The claims are found to be directed toward the recommendation of a task to a user based on the context of a message clustering. Where the Office finds that this falls in to the abstract bucket of certain methods of organizing human activity. More specifically the managing personal behavior, including following rules or instructions. The claims determine which recommendations to make based on what other members have done. Where clustering is found to be a form of math that uses data sets to classify characteristics (find similarities) to identify task that others have used to achieve goals similar to the member’s, see for example instant specification [159-160].
The claims are found to be direct to subject matter that can be carried out in the mind of a human using the human mind’s ability to observe, evaluate, and make a judgment. But for the nominal recitation of computer the claim can reasonable be carried out in the mind of the human.
Further it is not clear how or what in the machine learning model is updated, it would be reasonable for one of ordinary skill in the art to assume that the human user based on observation made could manually update the machine learning model. It is further noted that a model that has already been trained and used to make a decision, is simply an abstract exercise of “apply it” and not statutory. The improvement in the retraining comes from the automated modification of the existing parameters to give healthier and up-to-date future outputs – i.e. system is made smarter – allowing it to perform action it could not previously perform.
In the instant claims, Applicant show what “automatically updating the machine learning model using additional messages as the additional messages are exchanged and feedback associated with selection of the proposal option, wherein automatically updating identifies improved recommendations for subsequent goals associated with subsequent member devices, wherein automatically updating the machine learning model improves an algorithm for generating correlations based on the feedback”; but not how. The MPEP 2106.05(f)(1) provides, “court thus held the claims ineligible, because the additional limitations provided only a result-oriented solution and lacked details as to how the computer performed the modifications, which was equivalent to the words "apply it". 850 F.3d at 1341-42; 121 USPQ2d at 1947-48 (citing Electric Power Group., 830 F.3d at 1356, 1356, USPQ2d at 1743-44 (cautioning against claims "so result focused, so functional, as to effectively cover any solution to an identified problem")).”
Step 2A, prong 2: Does the claim recite additional elements that integrate the judicial exception into a practical application?
No, the claimed invention does not recite additional elements that integrate the abstract idea into a practical application. Where a practical application is described as integrating the abstract idea by applying it, relying on it, or using the abstract idea in a manner that imposes a meaningful limit on it such that the claim is more than a drafting effort designed to monopolize it, see October 2019: Subject Matter Eligibility at p. 11.
The identified judicial exception is not integrated into a practical application. In particular, the claims recites the additional limitations see non-bold-italicized elements above. The “receiving” and “transmitting” elements are determined to be steps of data gather and outputting respectively – insignificant extra-solution activity.
Where 2106.05(g) MPEP states, “term "extra-solution activity" can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Extra-solution activity includes both pre-solution and post-solution activity. An example of pre-solution activity is a step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered information by a series of steps in order to detect whether the transactions were fraudulent. An example of post-solution activity is an element that is not integrated into the claim as a whole, e.g., a printer that is used to output a report of fraudulent transactions, which is recited in a claim to a computer programmed to analyze and manipulate information about credit card transactions in order to detect whether the transactions were fraudulent.”
The Office finds that merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea; adding insignificant extra solution activity to the judicial exception; or only generally linking the use of the abstract idea to a particular technological environment or field is not sufficient to integrate the judicial exception into a practical application.
Step 2B: Does the claim recite additional elements that amount to significantly more than the abstract idea?
No, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception, when considered individually and as part of the ordered combination.
Where 2106.05(d)(I)(2) of the MPEP states, “A factual determination is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity. Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed. Cir. 2018). However, this does not mean that a prior art search is necessary to resolve this inquiry. Instead, examiners should rely on what the courts have recognized, or those in the art would recognize, as elements that are well-understood, routine, conventional activity in the relevant field when making the required determination. For example, in many instances, the specification of the application may indicate that additional elements are well-known or conventional. See, e.g., Intellectual Ventures v. Symantec, 838 F.3d at 1317; 120 USPQ2d at 1359 ("The written description is particularly useful in determining what is well-known or conventional"); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015) (relying on specification’s description of additional elements as "well-known", "common" and "conventional"); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 614, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (Specification described additional elements as "either performing basic computer functions such as sending and receiving data, or performing functions ‘known’ in the art.").”
These limitations do NOT offer an improvement to another technology or technical field; improvements to the functioning of the computer itself; apply the judicial exception with, or by use of, a particular machine; effect a transformation or reduction of a particular article to a different state or thing; add a specific limitation other than what is well-understood, routine and conventional in the field, or add unconventional steps that confine the claim to a particular useful application; or other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. Therefore, these additional limitations when considered individually or in combination do not provide an inventive concept that can transform the abstract idea into patent eligible subject matter.
The other independent claims recite similar limitations and are rejected for the same reasoning given above.
The dependent claims do not further limit the claimed invention in such a way as to direct the claimed invention to statutory subject matter.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Matsuoka et al (US 2022/0405687 A1) teaches system processes messages in real-time as these messages are exchanged to identify a goal and a timeframe from achieving the goal. Based on the goal and the corresponding timeframe, the system identifies task groupings corresponding to different methods for achieving the goal. The task groupings are ordered according to the likelihood of the member selecting a task grouping.
Pu et al (US 2023/0259884 A1) teaches once the clustering has been done for the member profiles and the job postings, links or connections between individual clusters (e.g., one group of member profiles and one group of job postings) are formed based on an analysis that determines the number of member profiles within a cluster that are associated with job postings in another cluster. If, for example, the number of member profiles from a member profile cluster linked with job postings in a job cluster exceeds some threshold, this may indicate that members who possess the member profile attributes of the member profile cluster are strong candidates for job postings having job attributes associated with the job profile cluster.
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.
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/FOLASHADE ANDERSON/Primary Examiner, Art Unit 3623