DETAILED ACTION
This action is in response to the application filed 7 October 2024, claiming benefit back to 13 July 2018.
Claims 1 – 20 are pending and have been examined.
This action is Non-Final.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 24 December 2024 has been considered by the examiner.
Continuation
This application is a continuation application of U.S. application no. 18/209,406 filed on 13 June 2023 now U.S. Patent 12,136,067 (“Parent Application”). See MPEP §201.07. In accordance with MPEP §609.02 A. 2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the Parent Application need not be resubmitted in this application unless Applicants desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, Applicants are reminded that the prosecution history of the Parent Application is relevant in this application. See e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
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 3, 11, 16, and 20 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 pre-AIA the applicant regards as the invention.
Claim 3 recites the limitations of wherein the processing circuit is further configured to: receive, via the network interface, an indication of a selection of a second user of the one or more other users; monitor and analyze communications between a second device associated with the second user and the user device…, however this limitation is indefinite for the following reasons: There is no prior selection of a first user of the one or more users by the user. Further, it is unclear who, exactly, is selecting the second user? Is it the user using the user device associated with the user of the plurality of users? Is it a selection by some other entity altogether? Clarification and / or correction is requested.
Claim 16 recites substantially similar limitations as found in claim 3, and as the same deficiencies, as is rejected using the same rationale.
Claim 11 recites the limitations of wherein the instructions, when executed, further cause the at least one processor to: receive, via the display, a selection of a second user from the one or more other users; and in response to receiving the selection of the second user, provide, via the display, a second graphical user interface comprising additional profile information relating to the second user… however this limitation is indefinite for the following reasons: There is no prior selection of a first user of the one or more users by the user. Further, it is unclear who, exactly, is selecting the second user? Is it the user using the user device associated with the user of the plurality of users? Is it a selection by some other entity altogether? Clarification and / or correction is requested.
Claim 20 recites substantially similar limitations as found in claim 11, and as the same deficiencies, as is rejected using the same rationale.
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 non-statutory subject matter. The claimed invention, when the claims are taken as a whole, is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 2A – 1: The claims recite a Judicial Exception. Exemplary independent claim 1 recites the limitations of: a network interface coupled to a network;
a profile database coupled to the network interface and configured to store profile information relating to a plurality of users; and
a processing circuit coupled to the profile database and the network interface, the processing circuit configured to:
provide, via a display of a user device, a graphical user interface having a searchable data field that allows a user to enter search criteria;
receive, via the network interface, search criteria from the user device associated with the user of the plurality of users;
identify historical data comprising at least one of (a) historical search selections associated with the user or (b) data patterns associated with existing or previous successful relationships; and
cause profile information relating to one or more other users based on the search criteria and the historical data to be transmitted to the user device via the network interface.
These limitations (bolded and italicized), as drafted, is / are a process that, under its broadest reasonable interpretation, covers managing relationships or transactions between people, which is a certain method of organizing human activity. See MPEP 2106.04(a)(2) II.
Further, the limitation as drafted, is a process that, under its broadest reasonable interpretation, encompasses mental processes practically performed in the human mind by observation, evaluation, judgment, and opinion. See MPEP 2106.04(a)(2), III.
For example, the claim encompasses the user identifying and comparing historical data and search criteria to find a matching profile1.
Step 2A – 2: This judicial exception is not integrated into a practical application, and the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Exemplary independent claim 1 recites the additional elements of: a network interface coupled to a network, a profile database coupled to the network interface, a processing circuit, a display of a user device, and a graphical user interface having a searchable data field, however these are recited as a high level of generality, and are merely used to perform an abstract idea, see MPEP 2106.05(f); provide… a searchable data field that allows a user to enter search criteria; and receive…search criteria from the user device associated with the user of the plurality of users, however these are merely data gathering and output recited at a high level of generality, and thus are insignificant extra-solution activity, see MPEP 2106.05(g). Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application.
Further, the claims do not provide for or recite any improvements to the functioning of a computer, or to any other technology or technical field; applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; applying the judicial exception with, or by use of, a particular machine; effecting a transformation or reduction of a particular article to a different state or thing; or 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.
The claim is directed to the abstract idea.
The dependent claims have the same deficiencies as their parent claims as being directed towards an abstract idea, as the dependent claims merely narrow the scope of their parent claims, and it has been held that “[i]n defining the excluded categories, the Court has ruled that the exclusion applies if a claim involves a natural law or phenomenon or abstract idea, even if the particular natural law or phenomenon or abstract idea at issue is narrow.” (buySAFE, Inc. v. Google, Inc., 765 F.3d 1350. )
Turning to the dependent claims, none of the claimed features of the dependent claims further limit the claimed invention in such a way to direct the claimed invention to statutory subject matter (e.g. change the scope of the claimed invention as to no longer be directed towards an abstract idea, or include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements or combination of elements in the claims other than the abstract idea per se), nor do they add limitations that, when taken as a combination, result in the claim as a whole amounting to significantly more than the judicial exception. In respect to exemplary dependent claims 2 – 9:
Claims 2, 4, 5, 6, 7, 8, and 9 merely further describe the identified data;
Claim 3 merely recites additional data collection and transmission, and recites an additional data analysis step, which is a further judicial exception;
Step 2B: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, explained with respect to Step 2A, Prong Two, the additional elements or combination of elements in the claims other than the abstract idea per se amount to no more than mere instructions to implement the idea on a computer, or the recitation of generic computer structure that serves to perform generic computer functions previously known to the industry2 [e.g. performing repetitive calculations; receiving, processing, and storing data; electronically scanning or extracting data from a physical document; electronic recordkeeping; automating mental tasks; receiving or transmitting data over a network, e.g., using the Internet to gather data] .
Applicant’s specification, at, e.g., paragraphs [0022]-[0043], [0102]-[0107], provides evidence of generic computer hardware performing generic, well-known, computer functions.
Viewed as a whole, these additional claim elements, both individually and in combination, do not provide meaningful limitations to transform the above identified abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more (e.g. improvements to another technology or technical fields, improvements to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment) than the abstract idea itself. 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 a computer or improves any other technology. Their collective functions merely provide conventional computer implementation3.
Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank International, 573 U.S. No. 13–298.
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 10, 18, and 19 are rejected under 35 U.S.C. 102(a)(1) as being disclosed by Anthony-Hoppe et al. (U.S. 2010/0268669, hereinafter Anthony-Hoppe).
In respect to claim 1, Anthony-Hoppe discloses a system comprising:
a network interface coupled to a network; a profile database coupled to the network interface and configured to store profile information relating to a plurality of users; and a processing circuit coupled to the profile database and the network interface (FIG. 1), the processing circuit configured to:
provide, via a display of a user device, a graphical user interface having a searchable data field that allows a user to enter search criteria ([0032] FIG. 3 shows a Web browser displaying an exemplary second Web page 300 in accordance with some embodiments and is known as the "Services" page 310. In some embodiments, the second Web page 300 uses the "Exit Finder" link 230 and the "Next" link 240 which allows the user to enter the next web page in the advisor tool. In addition, the second Web page 300 also has a "Back" hyperlink 235 that can allow the user to return to the previous Web page, i.e., the first Web page 200. [0033] At the second Web page 300, the user creates a first search criteria 320 that can be used to query at least one database 181 that is coupled to the Web server 109 (shown in FIG. 1). The first search criteria 320 can be comprised of any one or more items such as the type of service required, advisor location, advisor experience, advisor qualification rating preference, fee structures, etc. …);
receive, via the network interface, search criteria from the user device associated with the user of the plurality of users ([0033] At the second Web page 300, the user creates a first search criteria 320 that can be used to query at least one database 181 that is coupled to the Web server 109 (shown in FIG. 1). The first search criteria 320 can be comprised of any one or more items such as the type of service required, advisor location, advisor experience, advisor qualification rating preference, fee structures, etc. In the embodiment illustrated in FIG. 3, the first search criteria 320 is comprised of the service required and a qualification rating preference, labeled "Professional Service Desired" 330 and a "DALBAR Rating" 340 respectively. The first search criteria 320 could of course be comprised of other items and labels.);
identify historical data comprising at least one of (a) historical search selections associated with the user ([0045] Furthermore, in another embodiment, the weighted values assigned to the questions 445 answered by the user could be modified, either greater or lesser values, depending upon past responses to questions by the same or different users. Thus, the system would essentially learn what questions are more or less important to users and adjust the question 445 weights accordingly or (b) data patterns associated with existing or previous successful relationships ([0054] The "Best Fit Advisors" 615 list is a listing of professional advisors with a calculated percent match 625 that is equal to or greater than a predetermined minimum percent match 975 (shown in FIG. 9). In the embodiment of FIG. 6, the minimum percent match 975 for an advisor to appear on the lists is 50% for DALBAR rated advisor (if the user selected a DALBAR qualification rating in the first search criteria 320), and 75% for non-DALBAR rated advisor (if the user did not selected a DALBAR qualification rating in the first search criteria 320). Thus in the embodiment of FIG. 6, the minimum percent match 975 threshold to be listed on the "Best Fit Advisors" list 615 is lower for DALBAR Rated advisors (50%) than for non-DALBAR Rated advisors (7 5% ). Those skilled in the art will readily recognize that the minimum percent match 975 of the advisor can be higher or lower depending on the desired content of the "Best Fit Advisors" lists 615); and
cause profile information relating to one or more other users based on the search criteria and the historical data to be transmitted to the user device via the network interface ([0075] Once each advisor in the RecordSet 1033 has been tested, the Advisor Table 1054 is sorted. As discussed already in one embodiment, the Advisor Table 1065 is sorted such that the top five matching advisors are selected, and more than five advisors if there is a tie for the last spot on the list. In step 1070, the sortedAdvisorTable 1054 matches are displayed to the user. As already discussed, the user can then contact or be contacted by the advisor of his choice).
Claims 10, 18, and 19 recite a user device and method performing the same limitations as found in claim 1, and are rejected using the same rationale.
Allowable Subject Matter
Claims 2 – 9, 11 – 17, and 20 would be allowable if the independent claims were rewritten to overcome the rejection under 35 U.S.C. 101, set forth in this Office action, and if the applicable claims (3, 11, 16, and 20) were rewritten to overcome the rejection under 35 U.S.C. 112(b), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon considered pertinent to Applicant’s disclosure.
Jones; Rosemary et al. US 20060129534 A1 System and methods for ranking the relative value of terms in a multi-term search query using deletion prediction
Henderson; Shane A. et al. US 20090089124 A1 Job Placement System With Profile Matching
Crow, Daniel Nicholas et al. US 20050080657 A1 Matching job candidate information
Kohl; Waldemar Roy et al. US 20140229404 A1 Succession Planning for Registered Investment Advisors
Woodings, Lewis E. et al. US 20040267595 A1 Worker and document management system
Schoenberg; Roy US 20090138317 A1 Connecting Providers of Financial Services
Adamy; James Joseph et al. US 20170109448 A1 System And Method For Enhanced User Matching Based On Multiple Data Sources
Koenig, Richard US 20050182743 A1 Internet-based matching service for expert consultants and customers with matching of qualifications and times of availability
Frazier; Scott White et al. US 20150039525 A1 Selective Communication Of Job Openings To Potential Referrers
Kenthapadi; Krishnaram et al. US 20170148106 A1 Prioritizing Search Terms Representing Companies
McGovern; Robert J. et al. US 20070162507 A1 Match-Based Employment System And Method
Sutcliffe; Andrew B. et al. US 6052122 A Method and apparatus for matching registered profiles
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN S MILLER whose telephone number is (571)270-5288. The examiner can normally be reached on M-F 10am-6pm. Examiner’s fax phone number is (571) 270-6288.
Examiner interviews are available via telephone 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, Beth Boswell can be reached at (571) 272-6737. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALAN S MILLER/Primary Examiner, Art Unit 3625
1 Further note Electric Power Group v Alstom S.A. No. 2015-1778 (Fed. Cir. 1 August 2016), in which the court stated that “Information as such is an intangible…Accordingly, we have treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas… In a similar vein, we have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category…And we have recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis” (internal citations omitted).
2 “It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. Rather, the components must involve more than performance of “‘well understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294)”. Id, pages 10-11. “Likewise, the server fails to add an inventive concept because it is simply a generic computer that “administer[ s]” digital images using a known “arbitrary data bank system.” Id. at col. 5 ll. 45–46. But “[f]or the role of a computer in a computer-implemented invention to be deemed meaningful in the context of this analysis, it must involve more than performance of ‘well-understood, routine, [and] conventional activities previously known to the industry.’” Content Extraction, 776 F.3d at 1347–48 (quoting Alice, 134 S. Ct at 2359). “These steps fall squarely within our precedent finding generic computer components insufficient to add an inventive concept to an otherwise abstract idea. Alice, 134 S. Ct. at 2360 (“Nearly every computer will include a ‘communications controller’ and a ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”); Content Extraction, 776 F.3d at 1345, 1348 (“storing information” into memory, and using a computer to “translate the shapes on a physical page into typeface characters,” insufficient confer patent eligibility); Mortg. Grader, 811 F.3d at 1324–25 (generic computer components such as an “interface,” “network,” and “database,” fail to satisfy the inventive concept requirement); Intellectual Ventures I, 792 F.3d at 1368 (a “database” and “a communication medium” “are all generic computer elements”); BuySAFE v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive.”)”. TLI Communications LLC v. AV Automotive L.L.C., (No. 15-1372, (Fed. Cir. May 17, 2016)), at *12-13.
See additionally MPEP 2106.05(d).
3 “Nor, in addressing the second step of Alice, does claiming the improved speed or efficiency inherent with applying the abstract idea on a computer provide a sufficient inventive concept. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”); CLS Bank, Int’l v. Alice Corp., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en banc) aff’d, 134 S. Ct. 2347 (2014) (“[S]imply appending generic computer functionality to lend speed or efficiency to the performance of an otherwise abstract concept does not meaningfully limit claim scope for purposes of patent eligibility.” (citations omitted))”. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 115 U.S.P.Q.2d 1636 (Fed. Cir. 2015).