DETAILED ACTION
This Office action is in reply to application no. 18/885,656, filed 15 September 2024 with a preliminary amendment filed 18 November 2024. Claims 1-8 are pending and are considered below.
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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Election/Restrictions
Applicant’s election of inventive group I, claims 1, 2 and 8, in the reply filed on 1 December 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 3-7 are withdrawn from consideration by the Examiner as being directed to a non-elected invention.
Claim Interpretation
The Examiner interprets the following claim terms, applying the broadest reasonable interpretation consistent with the specification (see ¶ 54) as follows:
To “unmetal” is to reveal a person’s actual identity.
To “melt” is to initiate a conversation.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 8 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 8 includes using an “artificial intelligence recommendation algorithm that suggests user profiles to other users” for various purposes based on various criteria.
There is nothing in the originally filed application that gives any disclosure as to how an AI algorithm is supposed to suggest user profiles based on the various listed criteria. See MPEP § 2161.01(I), explaining that “original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed”. [emphasis in the original]
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 1, 2 and 8 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 1, from which the others depend, uses “virtual representations of metals, gems, or similar objects”. The word “similar” is a relative term neither defined nor explained in the application, and reasonable people could reasonably disagree as to what objects are similar to gems and/or metals and what objects are not. To overcome this rejection, the Examiner suggests replacing “metals, gems, or similar objects” with “metals or gems”.
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, 2 and 8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims lie within a statutory category of invention, as each is directed to a method, i.e. process. The claim(s) recite(s) initiating and building connections between people by initiating a conversation and using virtual representations of various sorts of objects.
First, this recites managing personal behavior or relationships or interactions between people, one of the “certain methods of human activity” deemed abstract. See MPEP § 2106.04(a)(2)(II). Second, in the absence of computers, these are steps which can be performed mentally, verbally or with a pen and paper.
A human matchmaker can ask two people to speak to each other and can have them draw pictures of objects to indicate a level of interest, for example. None of this presents any practical difficulty and none requires any technology beyond pens and paper.
This judicial exception is not integrated into a practical application because aside from the bare inclusion of a generic computer, discussed below, nothing is done beyond what was set forth above, which does not go beyond using a generic computer as a tool to implement the abstract idea. See MPEP § 2106.05(f).
The claims do not improve the “functioning of a computer or any other technology or technical field”, MPEP § 2106.05(a), as they only manipulate data pertaining to a conversation between persons and indicia of interest. They do not apply the abstract idea “with, or by use of a particular machine”, MPEP § 2106.05(b), as the below-cited Guidance is clear that a generic computer is not the particular machine envisioned.
They do not effect a “transformation or reduction of a particular article to a different state or thing”, MPEP § 2106.05(c). First, such data, being intangible, are not a particular article at all. Second, the claimed manipulation is neither transformative nor reductive; as the courts have pointed out, in the end, data are still data.
They do not apply the abstract idea “in some other meaningful way beyond generally linking [it] to a particular technological environment”, MPEP § 2106.05(e), as the lack of technical and algorithmic detail in the claims is so as not to go beyond such a general linkage.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional claim limitations, considered individually and as an ordered combination, are insufficient to elevate an otherwise-ineligible claim.
The claim includes that the process takes place “in a mobile application” and the specification indicates, ¶ 64, that the application may be deployed on “iOS” and “Android” platforms. This element is recited at a high degree of generality and, even taking the language from the specification into consideration momentarily, requires nothing more than a generic mobile computer running one of the two most common operating systems for such devices. The specification does not otherwise meaningfully limit the type of device to be used, such that a generic mobile computer will suffice.
It only performs generic computer functions of nondescriptly manipulating data and sharing data with persons and/or other devices. Generic computers performing generic computer functions, without an inventive concept, do not amount to significantly more than the abstract idea.
The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. The claim elements when considered in ordered combination – a generic mobile computer performing a short sequence of abstract steps – do nothing more than when they are analyzed individually.
The dependent claims further do not amount to significantly more than the abstract idea: claim 2 simply describes an additional abstract step, allowing users to speak without giving their names for a period and sharing their names thereafter. Claim 8 simply makes nondescript use of AI for a simple, abstract reason: suggesting other users with whom a user might like to speak and allowing the user to either choose or to let the process choose.
The claims are not patent eligible. For further guidance please see MPEP § 2106.03 – 2106.07(c) (formerly referred to as the “2019 Revised Patent Subject Matter Eligibility Guidance”, 84 Fed. Reg. 50, 55 (7 January 2019)).
Claim Rejections - 35 USC § 103
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.
Claim(s) 1 is rejected under 35 U.S.C. 103 as being unpatentable over Mahajan et al. (U.S. Patent No. 11,423,175) in view of Salik. (U.S. Publication No. 2022/0358418).
In-line citations are to Mahajan. Claims are examined as best understood.
With regard to Claim 1:
Mahajan teaches: A method for facilitating private connections in a mobile application, [Col. 18, line 59, a “wide range of mobile computing devices” may be used] comprising: initiating and building one-on-one connections through a process of 'melting' or bonding… [Col. 11, lines 12-14; a “user may potentially adopt an anonymous persona in order to engage in online dating”; online dating reads on initiating and building one-on-one connections]
Mahajan does not explicitly teach using virtual representations of metals, gems, or similar objects, but in addition to being of no patentable significance as explained below, it is known in the art. Salik teaches an event organization system [title] that may be useable with online “social networking” or “dating services”. [0002] It uses “virtual currency” including “virtual items” such as “coins” or “gems”. [0065] Salik and Mahajan are analogous art as each is directed to electronic means for facilitating social interactions.
It would have been obvious to one of ordinary skill in the art just prior to the filing of the claimed invention to combine the teaching of Salik with that of Mahajan in order to incentivize real-world interactions and transactions, as taught by Salik; [0001] further, it is simply a substitution of one known part for another with predictable results, simply displaying the information of Salik in place of, or in addition to, that of Mahajan; the substitution produces no new and unexpected result.
The content of information which is merely displayed or transmitted and then not further processed, such as “virtual representations of metals, gems, or similar objects”, consists entirely of nonfunctional printed matter which bears no functional relation to the substrate and so is considered but given no patentable weight. “Using” such representations requires nothing more than that they are displayed. The reference is provided for the purpose of compact prosecution.
Claim(s) 2 is rejected under 35 U.S.C. 103 as being unpatentable over Mahajan et al. in view of Salik further in view of Jadeja et al. (U.S. Publication No. 2014/0058844).
With regard to Claim 2:
The method of claim 1, further comprising maintaining anonymity in conversations by enabling users to engage in anonymous conversations for a set period, with an option to 'unmetal' or disclose real identities after the set period or remain anonymous.
Mahajan and Salik do not explicitly teach anonymizing for a set period of time and disclosing real identities after a set period of time, though Mahajan does explicitly teach anonymity as cited above and disclosing real identities, [Col. 10, lines 50-51] but it is known in the art. Jadeja teaches a demographics website [title] which interacts with “social networks”. [0071] A user may choose to make his or her ”true or real” identifier, such as an “email address”, either “anonymous forever or for a period of time or one time”. [0125] Jadeja and Mahajan are analogous art as each is directed to electronic means for facilitating on-line social interactions.
It would have been obvious to one of ordinary skill in the art just prior to the filing of the claimed invention to combine the teaching of Jadeja with that of Mahajan and Salik in order to govern access by third parties to user interaction, as taught by Jadeja; [0005] further, it is simply a substitution of one known part for another with predictable results, simply allowing a user to choose to remain anonymous for a particular interval or indefinitely as taught by Jadeja rather than the system making the determination as in Mahajan; the substitution produces no new and unexpected result.
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Mahajan et al. in view of Salik further in view of Vieyra (U.S. Publication No. 2022/0366459).
With regard to Claim 8:
The method of claim 1, further comprising an artificial intelligence recommendation algorithm that suggests user profiles to other users for connections for dating, mentorship, or companionship based on commonalities and themes on thoughts shared, values, passion and prior connections giving users option to match with a user themselves or option for the AI recommendation.
Mahajan and Salik teach the method of claim 1 including suggesting participants whose criteria match that of a user, [e.g. Salik, 0038] and giving users options, [Col. 11, lines 10-12] but do not explicitly teach using AI for this, but it is known in the art. Vieyra teaches professional services marketplace [title] that uses “artificial intelligence”. [0071] A recommendation may be provided for a person to provide assistance such as a “nutritionist and a therapist”. [0228] The matching may be “preference base[d]”. [0100] Vieyra and Mahajan are analogous art as each is directed to electronic means for connecting individuals.
It would have been obvious to one of ordinary skill in the art just prior to the filing of the claimed invention to combine the teaching of Vieyra with that of Mahajan and Salik in order to reduce the length and expense of reaching people, as taught by Vieyra; [0002] further, it is simply a substitution of known parts for others with predictable results, simply using the criteria and AI of Vieyra in place of the criteria and traditional programming of Mahajan; the substitution produces no new and unexpected result.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT C ANDERSON whose telephone number is (571)270-7442. The examiner can normally be reached M-F 9:00 to 5:30.
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/SCOTT C ANDERSON/Primary Examiner, Art Unit 3694