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 .
This office action is in response to communication filed on 11/8/2024.
Claims 2-21 are presented for examination.
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 an abstract idea without significantly more.
Step 1: Determining that a claim falls within one of the four enumerated categories of patentable subject matter recited in 35 U.S.C. 101 (i.e., process, machine, manufacture, or composition of matter). (MPEP 2106.03)
Claims 1-11 recite a series of steps, thus falling within one of the four statutory classes; i.e., a process. Claims 12-21 describe tangible system components, thus falling within one of the four statutory classes; i.e., machine or manufacture.
Step 2A, Prong One: Evaluating whether the claim(s) recite(s) a judicial exception, i.e. whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim. (MPEP 2106.04).
Representative claim 2 recites:
updating, a user profile of a first participant of a plurality of participants of a conversation by:
identifying, a first interest term in a first portion of the conversation received from the first participant;
accessing in the user profile of the first participant, and inferring, a topic of the first interest term in the user profile;
identifying, a second interest term in a second portion of the conversation by determining that the second interest term is different from the first interest term, wherein the second portion of the conversation is provided by a second participant of the plurality of participants;
determining, that the second interest term is in the same identified topic in the user profile as the first interest term;
determining, that the second interest term is associated with a negative sentiment;
based at least in part on: (a) the determining that the second interest term is different from the first interest term and (b) the determining that the second interest term is in the same topic as the first interest term and (c) the determining that the second interest term is associated with the negative sentiment, storing, in the user profile of the first participant, the second interest term as a negative sentiment interest term of the first participant,
wherein the user profile of the first participant is updated such that the negative sentiment interest term is categorized in a hierarchy of the topic and a subtopic according to the topic of the first interest term;
identifying a content item matching the topic of the first interest term of the updated user profile of the first participant, wherein the identifying is based at least in part on the negative sentiment interest term; and
generating for presentation, at user equipment associated with the first participant, the identified content item.
under its broadest reasonable interpretation, covers performance of the limitations in the mind but for the recitation of generic computer components. That is, other than reciting “using natural language processing by the control circuitry” , “database” nothing in the claim elements precludes the steps from practically being performed in the mind. For example, but for the “database, control circuitry and natural language processing “updating”, “identifying”, “accessing”, “determining”, “generating” in the context of this claim encompasses actions that a human could perform; e.g., a human can look at and add interest terms to user profiles based on interest terms identified in past conversations. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
In addition, the limitations mentioned above (i.e. “updating”, “identifying”, “accessing”, “determining”, “generating” in the context of this claim) as drafted, are processes that, under their broadest reasonable interpretations, exemplify commercial interactions (including advertising, marketing or sales activities or behaviors; business relations); or relationships or interactions between people (including social activities, teaching, and following rules or instructions), but for the recitation of generic computer components.
That is, other than reciting “database”, “control circuitry and natural language processing” nothing in the claim elements disqualifies the steps from being commercial interactions including advertising. For example, but for the “database”, ”control circuitry and natural language processing” ,the steps of updating”, “identifying”, “accessing”, “determining”, “generating” in the context of this claim encompasses steps of adding interest terms to user profiles based on interest terms identified in past conversations, in order to present advertisements.
If a claim limitation, under its broadest reasonable interpretation, covers commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions), then it falls within the “Certain methods of organizing human activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Independent claim 12 recites the same abstract idea as identified above and dependent claims 3-11 and 13-21 further narrow it.
Step 2A, Prong Two: Identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and then evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. Prong Two distinguishes claims that are "directed to" the recited judicial exception from claims that are not "directed to" the recited judicial exception. (MPEP 2106.04).
This judicial exception is not integrated into a practical application. In particular, the claims recite the following additional elements:
• a database (claims 2 and 12);
• control circuitry (claims 2 and 12);
• natural language processing (claims 2 and 12);
• a memory (claim 12);
The database, control circuitry, natural language processing and memory are recited at a high-level of generality (i.e., as generic processors) such that they amount no more than mere instructions to apply the exception using generic computer components. They are no more than a tool to perform the updating”, “identifying”, “accessing”, “determining”, and “generating” steps.
The additional elements of database, control circuitry, natural language processing and memory are considered as “apply it” as the claim invokes the computer as a tool to perform the abstract idea. See MPEP 2106.05(f)(2) (similar to Apple, Inc. v Ameranth and Intellectual Ventures I LLC v Capital One Bank (USA).
Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. (MPEP 2106.05(f) Mere Instructions To Apply An Exception).
Regarding the limitations database, control circuitry, natural language processing and memory, as seen above, this limitation has been interpreted as “apply it”. However, this limitation can be additionally interpreted as insignificant extra-solution activity. As such, this limitation alone and in combination, does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. (MPEP 2106.05(g) Insignificant Extra-Solution Activity).
Therefore, under Step 2A, Prong Two, the claims are directed to an abstract idea.
Step 2B: Identifying whether there are any additional elements (features/limitations/steps) recited in the claim beyond the judicial exception(s), and then evaluating those additional elements individually and in combination to determine whether they contribute an inventive concept (i.e., amount to significantly more than the judicial exception(s)). (MPEP 2106.05).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of database, control circuitry, natural language processing and memory, alone and in combination amount to no more than mere instructions to apply the exception using generic computer components.
Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Regarding the limitations database, control circuitry, natural language processing and memory; it is noted that sending information over a network has been recognized in the courts as being Well Understood Routine and Conventional (see MPEP 2106.05(d)(II) - i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network).
Therefore, this additional element does not amount to significantly more than a judicial exception and cannot provide an inventive concept. (MPEP 2106.05(d) Well-Understood, Routine, Conventional Activity).
Therefore, claims 2-21 are not patent eligible.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-32 of U.S. Patent No.12,159,297. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims further recite the second term being associated with a negative sentiment. It is old and well known to use sentiments, such as negative sentiments in a conversation in order to determine the use/shopper feelings and emotions and present content accordingly. It would have been obvious to a person of ordinary skill in the art at the time of Applicant’s invention to have included for the second term to be associated with negative sentiments in order to personalize the content using emotions.
Allowable Subject Matter
Claims 2-21 are allowable over the prior art of record.
The invention pertains to: updating a hierarchical user profile database for a first participant of a conversation based on interest terms received from a second participant of the conversation and determined to correspond to a topic and/or subtopic. Interest terms are added to the user profile based on interest terms identified in past conversations, the content recommendation application may retrieve a user profile 118 of the first participant 110 from the user profile database 120. The user profile 118 may indicate various terms associated with interests of the first participant 110. The interest terms may be determined based on past conversations of the first participant 110 and various interests of the first participant 110.
The closest prior art of record U.S. Publication No. 2011/0320273 to Miranda-Steiner ("Miranda-Steiner").
Miranda-Steiner teaches in Fig. 1, in response to identifying key term "dinner" 128 submitted by conversation participant Joe, the system displays ad "Seattle Grill" 130, and in response to identifying key term "Greek food" submitted by second conversation participant Mary, the system displays ad "Gyro Emporium" 132. Miranda-Steiner's system appears to make no attempt to filter out key terms received from Mary that are irrelevant to the category of the key term received from Joe. Thus, the system of Miranda-Steiner may sweep up all kinds of terms provided by the second user, Mary, or other additional users and attempt to provide content based on them, which may be irrelevant to the interest category of Joe. Miranda-Steiner does not disclose or render obvious inferring, the second interest term is associated with a negative sentiment and determining that the second topic is in the same topic as the first term and therefore does not disclose or render obvious determining that the second interest term is associated with the negative sentiment, storing in the user profile of the first , as recited by claim 1. An advantage or effect* provided according to an aspect of Applicant's invention as claimed in claim 1 is filtering key terms, provided by a second participant in a conversation, according to the interest category that is inferred. That is, key terms provided by the second user may be considered relevant if an interest category of the key term in the profile is inferred to be the same as the interest category of a key term provided by a first participant of the conversation.
WO Publication No. 2017/054708 to Ng ("Ng") teaches on paragraph 0039 “the user’s interest information is obtained and stored in the user database”.
Ip.com article titled “You Recommend, I buy: How and why people engage in instant messaging based Social Commerce” teaches an emerging business phenomenon especially in China, instant messaging (IM) based social commerce is growing increasingly popular, attracting hundreds of millions of users and is becoming one important way where people make everyday purchases.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAQUEL ALVAREZ whose telephone number is (571)272-6715. The examiner can normally be reached Mondays thru Thursdays 8:30-6:30.
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/RAQUEL ALVAREZ/Primary Examiner, Art Unit 3622
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