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 .
Detailed Action
In amendments dated 10/9/25 Applicant amended claims 1, 9, and 14, canceled claims 3, 10, and 16, and added no new claims. Claims 1-2, 4-9, 11-15, and 17-20 are presented for examination.
Obviousness Type 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 1-2, 4, 6-9, 11, 13-15, and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-6, 9, 11, 14, and 16-18 of U.S. Patent No. 12,182,134. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite similar subject matter by BRI using different claim language. See the chart below.
Instant application claim
‘134 patent claim
1
1
2
2
4
5
6
2
7
6
8
5
9
1, 9
11
14
13
11
14
1, 9, 16
15
17, 18
19
6
20
14
Rejections under 35 U.S.C. 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, 4-9, 11-15, and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to mental processes without significantly more. Independent claims 1, 9, and 14 each recites tracking interactions of search result attributes of prior search results having search result attributes to identify search result attribute interactions; determining a natural distribution from a proportional representation of the search result attribute interactions, wherein the proportional representation comprises a proportional amount of the interactions received by a search result attribute relative to other search result attributes; and redistributing a ranked set of search results for a search query executed at a search engine according to the natural distribution. Tracking interactions of search result attributes and determining a natural distribution from a proportional representation of search results are recited broadly and are mental processes accomplishable in the human mind or on paper, and redistributing search results is redistributing data and also a mental process accomplishable in the human mind or on paper. Each claim recites an additional element of providing for display the redistributed ranked set of search results for the search query, which is an output step and insignificant extra-solution activity. Claim 9 recites one or more computer storage media and claim 14 recites at least one processor and computer storage media which are each generic components of a computer. Examiner notes specification paragraphs 0015-0016 discuss the difficulty of identifying more relevant search results over less relevant results and paragraph 0017 describes the need to provide the best search results “in a manner that where they can be identified among other search results in a query.” Paragraph 0020 describes how conventional search engines rank search results with a ranking algorithm that is susceptible to presentation bias. Paragraphs 0021-0027 describe the invention addressing these problems by redistributing search results based on a natural distribution to eliminate presentation bias and rank more relevant results higher. The claims recite this process but only with conclusive statements, and the steps do not recite a particular improvement in any technology or function of a computer per MPEP 2106.04(d) and do not recite any unconventional steps in the invention per MPEP 2106.05(a). Therefore, the recited mental processes are not integrated into a practical application. Taking the claims as a whole, the output step is recited broadly and amounts to sending data across a network per specification figure 1 network 104 and paragraphs 0030-0031, which is routine and conventional activity per the list of such activities in MPEP 2106.05(d) part II. The one or more computer storage media and at least one processor are each still generic components of a computer. Thus the claims do not include additional elements that are sufficient to amount to significantly more than the recited mental processes.
Claim 2 recites wherein a highest ranked portion of the ranked set of search results is redistributed, and redistributing data is a mental process accomplishable in the human mind or on paper. Claims 4, 11, and 17 each recites wherein the natural distribution is determined from a global index comprising tracking information for a population, and determining a natural distribution is recited broadly and is a mental process accomplishable in the human mind or on paper. Claims 5, 12, and 18 each recites wherein the natural distribution is determined from a specific index comprising tracking information for a single source, and determining a natural distribution is recited broadly and is a mental process accomplishable in the human mind or on paper. Claims 6 and 13 each recites wherein the ranked set of search results is redistributed based on an impression distribution, and redistributing search results is redistributing data and a mental process accomplishable in the human mind or on paper.
Claims 7 and 19 each recites wherein the redistributed ranked set of search results is based on a gap measured between the ranked set of search results and the natural distribution, and redistributing search results is redistributing data and a mental process accomplishable in the human mind or on paper. Claims 8 and 20 each recites wherein the natural distribution for the search query is determined from a relationship mapping of the search result attribute interactions with the prior search results, and determining a natural distribution is recited broadly and a mental process accomplishable in the human mind or on paper. Claim 15 recites redistributing a highest ranked set of search results, wherein a portion of the highest ranked set of search results is provided as the set of search results redistributed according to the natural distribution, and redistributing search results is redistributing data and a mental process accomplishable in the human mind or on paper.
Responses to Applicant’s Remarks
Regarding rejections of claims 1-2, 4, 6-9, 11, 13-15, and 19-20 for nonstatutory double patenting over claims 1-2, 5-6, 9, 11, 14, and 16-18 of U.S. Patent No. 12,182,134, on page 8 of his Remarks Applicant asserted a Terminal Disclaimer was filed to overcome these rejections. Examiner does not see a Terminal Disclaimer in the application file and thus maintains these rejections. Regarding rejections of claims 1-2, 5-6, 9, 11, 14, and 16-18 under 35 U.S.C. 112(b) for reciting a proportional representation of search result attribute interactions without reciting what said search result interactions are proportional to, in view of amendments reciting “wherein the proportional representation comprises a proportional amount of the interactions received by a search result attribute relative to other search result attributes” from claims 3, 10, and 17, these rejections are withdrawn. Regarding rejections of claims 1-2, 4-9, 11-15, and 17-20 under 35 U.S.C. 101 for reciting mental processes without significantly more, Applicant’s arguments have been considered but are not persuasive. On pages 9-10 of his Remarks Applicant quotes from Ex Parte Dumais, Ex Parte Johnson et al, and Ex Parte Bostick and asserts that, like the opinions quoted in the aforementioned cases, the present claims improve internet searching and search engines. Applicant quotes from paragraphs 0020-0022 and also from the claims (“determining a natural distribution from a proportional representation of the search result attribute interactions, wherein the proportional representation comprises a proportional amount of the interactions received by a search result attribute relative to other search result attributes; and redistributing a ranked set of search results for a search query executed at a search engine according to the natural distribution;”). Examiner disagrees as these limitations are recited broadly and lack details of the invention that might show an improvement in retrieving and identifying relevant search results. For example, the “determining a natural distribution” limitation does not recite how the invention determines the natural distribution. Furthermore, the “redistributing a ranked set of search results” limitation does not recite how the invention redistributes the search results or how the search results are ranked, and the limitation does not specifically recite which search results (presumably search results having attributes for which interactions are tracked in the first limitation).
On page 10 of his Remarks Applicant asserts the claims are eligible under Step 2B under the DDR case because “the claims provide a solution to the internet-centric problem of ranking intended search results for a search query, and presenting the ranked results in a manner that lets the user readily identify them from among the vast number of search results returned for a search query.” Examiner disagrees as the claims merely recite that some set of search results are ranked and recite no details on what is ranked other than a set of search results and no details from the invention that might show an improvement in how search results are ranked. With regards to Step 2B (per MPEP 2106.05(I), “evaluating additional elements to determine whether they amount to an inventive concept”), the only additional element recited (“providing for display the redistributed ranked set of search results for the search query”) is also broad and conventional activity as shown in the rejection above and does not amount to an inventive concept.
Relevant Prior Art
During his search for prior art, Examiner found the following reference to be relevant to Applicant's claimed invention. Said reference is listed on the Notice of References form included in this office action:
Barve et al (US 12,124,404) teaches techniques for discovering content items on a local device along with associated metacontent of said local content, uses usage patterns (interactions with items) and personal user preferences in relation to said metacontent to weight and order the local content items, does not teach determining a distribution from a proportional representation among content attributes or redistributing search results of said local content items (column 3 lines 40-57, columns 5-6 lines 61-9, columns 6-7 lines 26-45 figure 1).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRUCE M MOSER whose telephone number is (571)270-1718. The examiner can normally be reached M-F 9a-5p.
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/BRUCE M MOSER/Primary Examiner, Art Unit 2154 1/13/26