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 .
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 1-16, and 19 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 recites the limitations “the selected destination” in lines 19-20. There is insufficient antecedent basis for these limitations in the claim.
Although it is likely that “the selected destination” refers to a destination candidate “elect[ed]” by the processor in the previous limitation, the claim would benefit from the clarity of a previously introduced “selecting” step (matching claim 17 and claim 2).
Dependent claims 2-16 are rejected based at least on their dependence from a rejected claim.
Claim 3 recites the limitations “the destination selected by the first user” and “the destination selected by the second user" in lines 5-6. There is insufficient antecedent basis for these limitations in the claim.
It appears than claims 1 and 2 are reciting approximately steps S10-S22 of the method (see Fig. 5A). Claim 3 then skips to steps S24a-S24 (receiving selected destinations from both users), without first reciting S23 (users selecting from the list of suggested destinations). Thus, “the destination selected by the [first/second] user” in claim 3 refers to new information not previously mentioned in the claim (i.e. does not refer to destination candidates “elected” or “selected” by the processor, as recited in claims 1 and 2), and lacks antecedent basis.
Claim 19 similarly recites the limitations “the destination selected by the first user” and “the destination selected by the second user" in lines 5-6. There is insufficient antecedent basis for these limitations in the claim.
Dependent claims 6, 9, and 12 are rejected based at least on their dependence from rejected claims.
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 an abstract idea without significantly more.
In January, 2019 (updated October 2019), the USPTO released new examination guidelines setting forth a two-step inquiry for determining whether a claim is directed to non-statutory subject matter. According to the guidelines, a claim is directed to non-statutory subject matter if:
STEP 1: the claim does not fall within one of the four statutory categories of invention (process, machine, manufacture or composition of matter), or
STEP 2: the claim recites a judicial exception, e.g. an abstract idea, without reciting additional elements that amount to significantly more than the judicial exception, as determined using the following analysis:
STEP 2A (PRONG 1): Does the claim recite an abstract idea, law of nature, or natural phenomenon?
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application?
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
Using the two-step inquiry, it is clear that claim 1 is directed toward non-statutory subject matter, as shown below:
STEP 1: Does claim 1 fall within one of the statutory categories? Yes. The claim is directed toward a process which falls within one of the statutory categories.
STEP 2A (PRONG 1): Is the claim directed to a law of nature, a natural phenomenon or an abstract idea? Yes, the claim is directed to an abstract idea.
With regard to STEP 2A (PRONG 1), the guidelines provide three groupings of subject matter that are considered abstract ideas:
Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations;
Certain methods of organizing human activity – 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); and
Mental processes – concepts that are practicably performed in the human mind (including an observation, evaluation, judgment, opinion).
Claim 1 recites:
A behavior suggestion device comprising:
a processor; and
a memory having instructions that, when executed by the processor, cause the processor to perform operations comprising:
acquiring, in communication with a first information terminal used by a first user via a network, user information of the first user received by the first information terminal, the user information including living area information indicating a living area of the first user;
causing the memory to store destination candidate information including one or more destination candidates;
electing, from the destination candidate information, one or more destinations different from at least a geographical range indicated by the living area information, based on profiling information obtained by analyzing the user information of the first user; and
outputting, to the first information terminal, suggestion information for suggesting the selected destination to the first user by the first information terminal.
The highlighted portion of claim 1 above is a mental process that can be practicably performed in the human mind and, therefore, an abstract idea. It merely consists of acquiring via a first terminal a user’s living area information, storing in memory destination candidates, selecting a destination candidate based on profiling the user, and outputting the suggestion information. This is equivalent to a human obtaining information from a phone about some else’s living area, remembering potential destinations relative to that living area, selecting a destination based on profiling the person, and orally sharing the suggested location over the phone. The Examiner notes that under MPEP 2106.04(a)(2)(III), the courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 ("‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same). As such, a person observing another’s residence and habits could suggest a destination. The mere nominal recitation that being executed by a processor does not take the limitation out of the mental process grouping. Thus, the claim recites a mental process.
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application? No, the claim does not recite additional elements that integrate the judicial exception into a practical application.
With regard to STEP 2A (prong 2), whether the claim recites additional elements that integrate the judicial exception into a practical application, the guidelines provide the following exemplary considerations that are indicative that an additional element (or combination of elements) may have integrated the judicial exception into a practical application:
an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses 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.
While the guidelines further state that the exemplary considerations are not an exhaustive list and that there may be other examples of integrating the exception into a practical application, the guidelines also list examples in which a judicial exception has not been integrated into a practical application:
an additional element merely recites the words “apply it” (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea;
an additional element adds insignificant extra-solution activity to the judicial exception; and
an additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use.
Claim 1 recites:
A behavior suggestion device comprising:
a processor; and
a memory having instructions that, when executed by the processor, cause the processor to perform operations comprising:
acquiring, in communication with a first information terminal used by a first user via a network, user information of the first user received by the first information terminal, the user information including living area information indicating a living area of the first user;
causing the memory to store destination candidate information including one or more destination candidates;
electing, from the destination candidate information, one or more destinations different from at least a geographical range indicated by the living area information, based on profiling information obtained by analyzing the user information of the first user; and
outputting, to the first information terminal, suggestion information for suggesting the selected destination to the first user by the first information terminal.
The highlighted portion of claim 1 above does not recite any of the exemplary considerations that are indicative of an abstract idea having been integrated into a practical application. As noted above, merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea is indicative that the judicial exception has not been integrated into a practical application. In the instant case, the steps are performed by a “processor”, i.e. a computer. Thus, it is clear that the abstract idea is merely implemented on a computer, which is indicative of the abstract idea having not been integrated into a practical application.
The one or more data networks, one or more processors, one or more memories storing computer readable instructions, and the computer readable storage medium comprising computer-readable instructions merely describes how to generally “apply” the otherwise mental judgments in a generic or general-purpose computing environment. The one or more data networks, one or more processors, one or more memories storing computer readable instructions, and the computer readable storage medium comprising computer-readable instructions are recited at a high level of generality and merely automate the generating steps.
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No, the claim does not recite additional elements that amount to significantly more than the judicial exception.
With regard to STEP 2B, whether the claims recite additional elements that provide significantly more than the recited judicial exception, the guidelines specify that the pre-guideline procedure is still in effect. Specifically, that examiners should continue to consider whether an additional element or combination of elements:
adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
Claim 1 does not recite any specific limitation or combination of limitations that are not well-understood, routine, conventional (WURC) activity in the field. Applicant’s specification does not provide any indication that the selecting steps and the transmitting steps are performing using anything other than a conventional computer. MPEP 2106.05(d)(II), and the cases cited therein, including Intellectual Ventures I, LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016), TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610 (Fed. Cir. 2016), and OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015), indicate that mere performance of an action is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). Further, the Federal Circuit in Trading Techs. Int’l v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019), and Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017), for example, indicated that the mere displaying of data (such as outputting a list to a display) is a well understood, routine, and conventional function.
CONCLUSION
Thus, since claim 1 is: (a) directed toward an abstract idea, (b) does not recite additional elements that integrate the judicial exception into a practical application, and (c) does not recite additional elements that amount to significantly more than the judicial exception, it is clear that claim 1 is directed towards non-statutory subject matter.
Claims 17 and 20 have similar limitations to claim 1 above, and are likewise ineligible under a similar rationale.
Dependent claims 2-16 and 18-19 are likewise ineligible. The claims generally add to the mental process by adding further steps or determinations to be made.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over US20140012909 by Sankar et al. (hereinafter “Sankar”), further in view of US20130345961 by Leader et al. (hereinafter “Leader”).
Regarding claim 1, Sankar teaches A behavior suggestion device comprising: a processor; and a memory having instructions that, when executed by the processor, cause the processor to perform operations comprising: See for example paragraphs [0043]-[0045] describing processors and memory to perform the operations.
acquiring, in communication with a first information terminal used by a first user via a network, user information of the first user received by the first information terminal, the user information including See for example paragraph [0014] describing edge devices including smartphones. See also paragraphs [0019], [0025], and [0034] describing a hometown associated with a user’s profile, reading on a living area of the first user. Finally, see for example Figure 1, where the client devices communicate via network with the system.
causing the memory to store destination candidate information including one or more destination candidates; see for example paragraphs [0027]-[0028] where the system retrieves candidate locations for subsequent ranking.
electing, from the destination candidate information, one or more destinations different from at least a geographical range indicated by the see for example paragraphs [0028], [0034]-[0037], and [0038]-[0040], where the system ranks the candidate destinations based on the user’s profile and distance from a position associated with the user (405), which can include the user’s hometown (see, e.g., [0038]-[0039]). The destinations can be limited based on distance from the position associated, i.e. greater than a certain radius (see [0039] “a second group 425 includes candidate locations having a distance from the location associated with the user 405 greater than the first radius 410 but not exceeding a second radius 420”; see also [0037]), reading on one or more destinations different from at least a geographical range indicated by the living area information.
and outputting, to the first information terminal, suggestion information for suggesting the selected destination to the first user by the first information terminal. See for example paragraph [0037], where a list of possible locations is presented to the user.
Sankar does not explicitly teach a living area. Although Sankar teaches a hometown, Sankar does not explicitly teach a home or residence.
However, Leader teaches a system that stores a living area, such as a home or residence address. See for example paragraphs [0004], [0028]-[0029], where the system stores a user’s home address for navigation and suggestion purposes.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the destination determination system of Sankar with the home address system of Leader with a reasonable expectation of success. Doing so allows the system to make suggestions based on the user’s home address, suggesting destinations in relation to the home address and generally improving the user experience.
Claims 17 and 20 have similar limitations to claim 1 above, and are therefore rejected using a similar rationale.
Regarding claim 2, Sankar teaches wherein the operations include: acquiring, in communication with a second information terminal used by a second user via the network, user information of the second user received by the second information terminal; and selecting, from the destination candidate information, one or more destinations as the suggested destination different from a destination based on the profiling information of the first user, further based on profiling information obtained by analyzing the user information of the second user. See paragraphs [0019] and [0026], where the system generally associates locations visited by a user with the user profile. Then see paragraphs [0028] and [0035], where suggestions to the first user can be based on locations associated with “users connected to the user”, including based on “a frequency of interaction with a location by users of the social networking system 130 (e.g., users connected to the user from which the location query was received or any users of the social networking system 130)” [0028]. That is, the system suggests locations to the first user based on the location data and frequency of visiting data (i.e. user profiles) of other users.
Claim 18 has similar limitations to claim 2 above, and is therefore rejected using a similar rationale.
Regarding claim 3, Sankar teaches wherein the operations include outputting, to the first information terminal, the suggestion information for suggesting the destination selected by the first user and the destination selected by the second user to the first user to be comparable with each other. See again paragraphs [0028] and [0034]-[0040], where destinations are selected by profiling the first and second users, and subsequently are presented in paragraph [0037] to the user, reading on destination selected by the first user and the destination selected by the second user. Alternatively, locations are suggested to the user based on the user’s past locations visited, and by locations visited by previous users, i.e. locations previously selected by a first and second user can be suggested, reading on destination selected by the first user and the destination selected by the second user.
Claim 19 has similar limitations to claim 3 above, and is therefore rejected using a similar rationale.
Regarding claim 4, Sankar teaches wherein the operations further include: further acquiring positional information indicating a position of the first information terminal in a route guidance to a destination based on suggestion information output to the first information terminal; and determining whether the suggestion information is successful data for making a behavior modification of the first user, based on the positional information and the living area information. See for example paragraphs [0019], [0025]-[0026], [0030], and [0036], where the system uses past locations visited by user as positive input into the ranking used for determining what positions to recommend to the user.
Claims 5 and 6 have similar limitations to claim 4 above (with a different dependency chain), and are therefore rejected based on a similar rationale.
Regarding claim 7, Sankar does not explicitly teach, but Leader teaches wherein the operations include determining that the suggestion information is the successful data when the route guidance to the destination based on the suggestion information starts in the first information terminal. See for example paragraph [0072] where the system monitors the user after providing a suggested route, and incorporates the user’s behavior and travel to determine if the user found the information helpful.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the destination determination system of Sankar with the home address system of Leader with a reasonable expectation of success. Doing so allows the system to make suggestions based on the user’s home address, suggesting destinations in relation to the home address and generally improving the user experience.
Claims 8 and 9 have similar limitations to claim 7 above (with a different dependency chain), and are therefore rejected based on a similar rationale.
Regarding claim 10, Sankar teaches wherein the operations include inputting the profiling information obtained by analyzing the user information to a learning information model in which a parameter is learned so that a destination corresponding to the input profiling information is output among one or more destinations included in the destination candidate information, and acquiring a destination output from the learning information model according to the input of the profiling information as a destination to be selected. See for example paragraphs [0018]-[0019], [0027], and [0034], where the system learns and infers a user’s profile information for use in ranking the destination choices.
Claims 11 and 12 have similar limitations to claim 10 above (with a different dependency chain), and are therefore rejected based on a similar rationale.
Regarding claim 13, Sankar teaches wherein the operations further include learning the parameter of the learning information model by using the destination based on the suggestion information determined to be the successful data and the profiling information corresponding to the destination. See for example paragraphs [0019], [0025]-[0026], [0030], and [0036], where the system uses past locations visited by user as positive input into the ranking used for determining what positions to recommend to the user.
Regarding claim 14, Sankar teaches wherein the operations further include calculating a satisfaction level of the first user with respect to the destination based on the suggestion information determined to be the successful data, and outputting the calculated satisfaction level to the first information terminal. See for example paragraphs [0019], [0025]-[0026], [0030], and [0036], where the system uses past locations visited by user as positive input into the ranking used for determining what positions to recommend to the user. That is, the system determines the user was satisfied and the location was successful based on visiting the location.
Claims 15 and 16 have similar limitations to claim 14 above (with a different dependency chain), and are therefore rejected based on a similar rationale.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US8938358 by Shynar et al. teaching a system for suggesting alternative travel destinations.
US20240110806 by Bahnsen et al. teaching a system for recommending new experiences.
US9253615 by Ickman et al. teaching a social gathering coordination system.
US20140129371 by Wilson et al. teaching social gathering coordination based on neural network learning of users and venues.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anne Antonucci can be reached at (313) 446-6519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JORDAN T SMITH/Examiner, Art Unit 3666
/ANNE MARIE ANTONUCCI/Supervisory Patent Examiner, Art Unit 3666
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