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
Examiner is using the version of claims dated 5/4/26.
In view of the Appeal Brief filed on 6/18/26 PROSECUTION IS HEREBY REOPENED. A new ground of rejection is set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/BORIS GORNEY/ Supervisory Patent Examiner, Art Unit 2154
Rejections under 35 U.S.C. 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, 2, 4-9, 11-15, and 17-20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Independent claims 1, 9, and 14 each recite “tracking interactions of search result attributes of prior search results having search result attributes to identify search result attribute interactions” and “redistributing a ranked set of search results for a search query executed at a search engine according to the natural distribution,” and the natural distribution is determined 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.” These claims do not recite any relations between the prior search results from which the natural distribution is determined and redistributed search results. BRI of the claims include embodiment where there is no correlation between attributes of the prior search results and attributes of the redistributed search results. Therefore, it is not clear how the search results are redistributed based on the totally unrelated attributes of the prior search results.
Claims 2, 4-8, 11-14, and 17-20 are also rejected because they depend directly or indirectly on independent claims 1, 9, and 14 but do not recite subject matter that remedies this deficiency in the independent claims.
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.
Rejections under 35 U.S.C. 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 1-2, 5-9, 12-15, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Das et al (US 9,298,828), hereafter Das, in view of Setty et al (US 20160125498), hereafter Setty.
With respect to claims 1, 9, and 14, Das teaches:
tracking interactions of prior search results to identify search result interactions (column 1 lines 34-54 identifying/tracking user interactions using historical query results);
determining a natural distribution from a proportional representation of the search result interactions, wherein the proportional representation comprises a proportional amount of the interactions received by a search result relative to other search results (column 1 lines 34-54 determining the frequency that a search result among search results was selected (a natural distribution) based on historical search query data);
redistributing a ranked set of search results for a search query executed at a search engine according to the natural distribution (column 1 lines 34-54 inserting search result into set of ranked results based on said frequency (rearranging/redistributing the ranked set)); and
providing for display the redistributed ranked set of search results for the search query (column 1 lines 34-54 returning the ranked set of results for display to the user).
Das does not teach:
tracking interactions of search result attributes of prior search results having search result attributes to identify search result attribute interactions; and
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.
Setty teaches things:
tracking interactions of search result attributes of prior search results having search result attributes to identify search result attribute interactions (paragraphs 0111-0101 tracking search result attributes from past user browsing sessions (searches)); and
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 (paragraphs 0100-0101 example of using the percentage of certain attributes among the attributes (proportional representation of search result interactions, relative to other attributes), based on tracked past user browsing sessions).
It would have been obvious to have combined the use of past search result attributes in Setty and a proportional representation of search result attributes in Setty with the tracking of past search queries and natural distribution/redistributing functions in Das to provide a more accurate assessment of user past activity regarding a past search in enhancing present search results.
With respect to claim 9, Das teaches one or more computer storage media (columns 6-7 lines 65-20 figure 5, memory 510 as a non-transitory computer readable medium).
With respect to claim 14, Das teaches at least one processor and computer storage media storing computer-readable instructions (columns 6-7 lines 64-22 figure 5, CPU(s) 502, memory 510 as a non-transitory computer readable medium storing programs).
With respect to claims 2 and 15, all the limitations in claims 1 and 14 are addressed by Das and Setty above. Das also teaches wherein a highest ranked portion of the ranked set of search results is redistributed (column 1 lines 55-67 inserting a highest ranked search result by frequency that each past search result is selected (redistributing), also column 11 lines 41-49).
With respect to claims 5, 12, and 18, all the limitations in claim 1 are addressed by Das and Setty above. Setty also teaches wherein the natural distribution is determined from a specific index comprising tracking information for a single source (paragraphs 0100-0101 tracking information for a specific user (source)).
With respect to claims 6 and 13, all the limitations in claim 1 are addressed by Das and Setty above. Setty also teaches wherein the ranked set of search results is redistributed based on an impression distribution (paragraph 0081 results are per page so redistributing affects that impression amount of results).
With respect to claims 7 and 19, all the limitations in claim 1 are addressed by Das and Setty above. Setty also teaches 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 (paragraphs 0104-0105 use statistical methods to determine user preferences for example a MAP estimation).
With respect to claims 8 and 20, all the limitations in claim 1 are addressed by Das and Setty above. Setty also teaches 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 (paragraph 0101 relationship mapping of search results to attributes).
Claims 4, 11, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Das in view of Setty and further in view of Byrne et al (US 20090171813), hereafter Byrne.
With respect to claims 4, 11, and 17, all the limitations in claim 1 are addressed by Das and Setty above. The combination of Das and Setty does not teach wherein the natural distribution is determined from a global index comprising tracking information for a population. Byrne teaches this determining website traffic refinements for a customer’s product search from a frequency of selection of previous search results by categories of customer users (paragraphs 0018, 0023). It would have been obvious to have combined the techniques for proportional representation of search results and tracking interactions functions in Das and Setty with the function of tracking interactions for categories of users (populations) in Byrne to provide a better measurement of popularity or importance for particular products being searched.
Responses to Applicant’s Remarks
Regarding rejections to 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. Applicant’s arguments were made as an appeal brief, thus Examiner refers to Applicant here as Appellant.
Appellant’s argument: on pages 10-13 Appellant asserts “consistent with Ex parte Bostick, Appellant's claim 1 reciting "tracking interactions," "determining a natural distribution from a proportional representation of the search result attribute interactions," "redistributing a ranked set of results," and providing "the redistributed search results" may not be practically performed in the human mind.” Examiner notes claims 9 and 14 recite similar functonality and are also concerned in this appeal.
Examiner’s response: Appellant discussed Ex Parte Bostick on pages 10-11 with regard to the PTAB’s characterization of the Examiner’s analysis of certain claim limitations as reciting abstract ideas as a broad-brush approach.” The PTAB was specifically referring to the Examiner’s approach to determining that certain claim limitations recited abstract ideas (per the Examiner’s Final Action pages 13-14, “[i]f claim limitations, under its broadest reasonable interpretation, covers performance of the limitations in the mind but for the recitation of generic computer components, then they fall within the ‘Mental Processes’ grouping of abstract ideas. Accordingly, the claim recites an abstract idea.”). The PTAB disagreed with this approach and stated the Examiner’s approach “is overly inclusive and runs counter to the Revised Guidance, as incorporated in the MPEP,” and the PTAB agreed with the Appellant and stated “we find many, if not most of the limitations of claim 1 cannot practically be performed in the human mind.”
As for the present claims, Examiner first notes the limitation “providing the redistributed search results for display” was identified as an additional element not a mental process, which Appellant also notes in his arguments on page 13 (“A human mind cannot practically provide for display a ranked set of search results …”). Regarding the other limitations "tracking interactions," "determining a natural distribution from a proportional representation of the search result attribute interactions," "redistributing a ranked set of results," Examiner did explain why Examiner believes they recite mental processes in his 1/16/26 Final Action page 8: “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).”
Appellant discusses tracking interactions of prior search results on page 11 and notes “the claimed ‘interactions’ require computer-mediated events,” such as mouse clicks. Examiner notes that “tracking interactions” limitation is likewise recited broadly, and a BRI of tracking interactions is just that, tracking the interactions, not the interactions themselves. The interactions may be computer-aided such as mouse clicks, but the claim recites no details on how the tracking is done so the BRI includes use of a physical aid, such as keeping track of the interactions on a piece of paper. Appellant discusses determining a natural distribution from a proportional representation of the search results on page 12. Specification paragraphs 0005 and 0043 describe a natural distribution as a mapping determined from an index comprising search query terms of prior search queries and a proportional representation of interactions with search result attributes. Paragraph 0050 discussing figure 2 (shown in Appeal Brief page 19) gives an example of a natural distribution using an example query “iPHONE” and describes a natural distribution as being an entry in the index including a particular search result attribute (for example the condition of the iPhone) and percentages of the interactions with each value of the attribute (for example 60% of users interacted with a new iPhone, 25% of users interacted with a refurbished iPhone, and 15% of users interacted with a used iPhone). The claim limitation is broad and recites no details on how the natural distribution is determined. A BRI of determining a natural distribution includes making a calculation using the described interaction data on a piece of paper. MPEP 2106.04(a)(2)(III) states "The courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation.". Thus Examiner believes this falls within the mental process grouping.
Appellant discusses the “redistributing a ranked set of search results” limitation on pages 13-14. Specification paragraphs 0025, 0051, 0055, 0058 and figure 3 describes redistributing search results and paragraph 0055 mentions different mathematical methods to accomplish the redistributing function. The claim limitation is broad and recites no particular method for redistributing a ranked set of search results, and a BRI of redistributing a ranked set of search results includes redistributing results “for a search query executed at a search engine” and “according to the natural distribution,” which does not preclude human intervention and includes writing the results from the search query in a different order on a piece of paper. Thus Examiner believes it falls within the mental process grouping, also per MPEP 2106.04(a)(2)(III).
Appellant’s argument: on pages 14-22 Appellant asserts the claims are directed to a practical application that improves upon internet searching and search engines by addressing irrelevant search results and mitigating presentation bias.
Examiner’s response: Appellant states on page 15 “the present claims improve upon internet searching and search engines by addressing irrelevant search results and increasing user interaction while mitigating presentation bias inherent in conventional methods,” and cites the specification at paragraphs 0020 and 0022. Examiner disagrees as the claims recite tracking interactions of prior search results having search result attributes, presumably from prior search queries, but do not recite anything that relates any such prior search queries to the present “a search query” in the “redistributing” limitation. Therefore, the prior search results and the prior search result attributes may be completely unrelated to the “ranked set of search results” returned from the present query, and the “determined natural distribution from the search result interactions and “redistributing a ranked set of search results” steps are unhelpful in addressing irrelevant search results and mitigating presentation bias. This is an example of the claim limitations being broadly recited and lacking details about the invention and thus not being directed to a practical application. Examiner also notes this is also makes the claims indefinite as shown in the rejections above under 35 U.S.C. 112(b) because a person or ordinary skill in the art would not know how to create a search query that is related to prior search queries such that said person would find the invention useful.
Appellant states on page 17 that “the Examiner's repeated assertion that the claims "do not recite how" is both factually incorrect and legally unsupported,” referring to Examiner’s Final Action page 8 discussing how the “determining a natural distribution” limitation does not recite details of how the invention determines the natural distribution and the “redistributing a ranked set of search results” limitation does not recite details of how the invention redistributes the search results or how the search results are ranked. Examiner disagrees as these are correct statements and MPEP 2106.04(d)(1) states “if the specification sets forth an improvement in technology, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. That is, the claim includes the components or steps of the invention that provide the improvement described in the specification.” As Examiner showed above, the BRI of “determining a natural distribution” and “redistributing a ranked set of search results” include actions that also do not address problems of irrelevant search results or mitigate presentation bias. Examiner found support for determining a natural distribution in specification paragraphs 0005, 0043, 0050 and figure 2 and support for redistributing search results in paragraphs 0025, 0051, 0055, 0058 and figure 3 as discussed above and Appellant also discusses these paragraphs and reprints figures 2 and 3 on pages 18-21 of Appellant’s Brief. It is these details that may recite a practical application but are not claimed.
Appellant states on page 17 that “the proper inquiry is whether the claim recites ‘details of how a solution to a problem is accomplished,’” quoting from MPEP 2106.05(f)(I). This section of the MPEP discusses points to consider “when determining whether a claim simply recites a judicial exception with the words ‘apply it’ (or an equivalent), such as mere instructions to implement an abstract idea on a computer.” Examiner notes point (I) also states “The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words ‘apply it.’” As Examiner showed above, the claim limitations “tracking interactions,” “determining a natural distribution,” and “redistributing a ranked set of search results” are broad and cover every solution involving those activities that may or may not address the identified problem and do not recite accomplishing a specific result, and thus do not integrate the judicial exception into a practical application.
Appellant’s argument: on pages 22-36 Appellant discusses the Weisner v. Google (51F.4th 1073, 1087-88 (Fed. Cir. 2022) and DDR Holdings LLC V. Hotels.com L.P. 773 F.3d 1245, 113 USPQ2d 1097 (Fed. Cir. 2014), cases and asserts the claims recite unconventional steps and provide a technical improvement.
Examiner’s response: Examiner disagrees. MPEP 2106.05 part I states “Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself.” The claim recites the additional element of “providing for display the redistributed ranked set of search results for the search query,” which Examiner explains in his Final Action page 6 is an output step and is routine and conventional activity (“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 “tracking interactions,” “determining a natural distribution,” and “redistributing” steps are each recited broadly and fall short of providing relevant search results or mitigating presentation bias as shown in Examiner’s response above regarding a practical application. Providing such results for display is also recited broadly and neither contributes to improving the function of a computer or any technology nor adds a specific or meaningful limitation that further limits the previous three steps to the technology of web search or any other technology (per the list of relevant considerations in MPEP 2106.05 part A for evaluating whether additional elements amount to an inventive concept). Examiner also noted in his Final Action page 6 that the one or more computer storage media and at least one processor recited in claims 9 and 14 are each generic components of a computer. Furthermore, MPEP 2106.05(d) discusses the DDR case as “an example of additional elements that favored eligibility because they were more than well-understood, routine conventional activities in the field,” which is not the case here. Thus Examiner believes the additional element does not amount to an inventive concept per Step 2B of the eligibility analysis.
Appellant states on page 25 that “Like the clams in Weisner, the present invention addresses the problem of returning voluminous and generic search results,” and “the redistribution step of claim 1 “serves to eliminate the presentation bias” present in conventional systems” in reciting the four claim limitations. Examiner notes the Court in Weisner found only two of the four patents to be eligible at Step Two of Alice because they were limited to a specific implementation of the abstract idea to the Internet (“Turning to step two of Alice, we conclude that Mr. Weisner has plausibly alleged that the ’905 and ’911 patent claims recite a specific implementation of the abstract idea that purports to solve a problem unique to the Internet and that, accordingly, these claims should not have been held ineligible under step two at this stage.”). The present claims recite tracking interactions of prior search results and redistributing a ranked set of search results for a search query that is not related to prior queries that produced the prior search results from which interactions were tracked, and thus these claims are not specifically limited to improving a particular web search. Furthermore, on pages 22-23 Appellant mentions the DDR case on pages 22-23 with the Federal Court “holding patent claims eligible when they provide a specific resolution to an Internet-centric problem.” Examiner notes the claims here recite tracking interactions of prior search results, determining a natural distribution from a proportional representation of said search result interactions for a search result attribute relative to other attributes, redistributing a ranked set of search results for a search query, and providing for display the redistributed ranked set of search results. Examiner noted above the vagueness of the search query and its relationship to any prior search queries, but Examiner also notes the claimed attributes (such as model, color, condition, and price from the example in figure 2 shown on page 19 of the Brief) are each different and no particular relationship is recited between them in the claim (“wherein the proportional representation comprises a proportional amount of the interactions received by a search result attribute relative to other search result attributes). Furthermore, the claims merely recite tracking interactions of prior search result attributes and redistributing present search results, which are conventional steps recited without details showing how the invention tracks said interactions and redistributes said search results to address the problems of returning voluminous and generic search results and presentation bias. Examiner believes the additional element does not amount to an inventive concept per Step 2B of the eligibility analysis for these reasons as well.
Inquiry
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/BRUCE M MOSER/Primary Examiner, Art Unit 2154 7/30/26
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