DETAILED ACTION
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 .
Response to Arguments
Applicant's arguments filed 12/22/2025 have been fully considered but they are not persuasive.
Applicant further argues that the claims are similar to those in Enfish, LLC, Microsoft Corp., No. 2015-1244 (Fed. Cir. May 12, 2016). The Examiner disagrees. The claims in Enfish were determined to be focused on the specific improvement in computer capabilities. In the instant Application there is no improvement to a computer. Even if one looked at the idea of an improvement to the software arts, there is still no comparison, as Applicant’s invention does not provide an improvement to software technology so much as it adds a computer model to perform steps. Moreover, the focus of Applicant’s claims is not on an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.
Applicant argues that the claimed invention is similar to that of the claims in McRO, Inc. v. Bandai Namco Games America, No. 2015-1080 (Fed. Cir. Sept. 13, 2016). The Examiner disagrees. Contrary to the claims of the instant invention, the claims of of McRO were not deemed to be abstract. The claims instead were directed to "a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type." McRO, 2016 WL 4896481, at *8. The court explained that "the claimed improvement was allowing computers to produce 'accurate and realistic lip synchronization and facial expressions in animated characters' that previously could only be produced by human animators." Id. at *8 (quoting U.S. Patent No. 6,307,576 col. 2 ll. 49-50). The claimed rules in McRO transformed a traditionally subjective process performed by human artists into a mathematically automated process executed on computers. Id. at *8-9. Indeed, the inventors in McRO conceded that prior animating processes were "driven by subjective determinations rather than specific, limited mathematical rules," such as the mathematical rules articulated in McRO's claimed method. Id. at *8. Is it now Applicant's position that the claimed invention was previously done by humans and Applicant has now applied mathematical rules that are an improvement that is merely executed on a computer? Even if Applicant were to be asserting this, the claims of McRo were not deemed to be abstract so Applicant's supposed "rules" would still be merely a part of the abstract idea.
Further, the court in McRO explained that "it was the incorporation of the claimed rules, not the use of the computer that 'improved the existing technological process' by allowing the automation of further tasks." Id. (alteration in original) (quoting Alice, 134 S. Ct. at 2358). Applicant's claims are more like those of FairWarning IP, LLC v. Iatric Systems, Inc. (Fed. Cir. 2016). Although FairWarning's claims require the use of a computer, it is this incorporation of a computer, not the claimed rule, that purportedly "improves the existing technological process" by allowing the automation of further tasks. This is the same deficiency of the claims of the instant invention.
Applicant’s remaining arguments are related to claims that have been restricted and elected by original presentation. The Examiner does note that the restricted claims contain subect matter that is not described in the original specification as filed ie “embeddings”. Accordingly, Applicant’s arguments are not persuasive and the rejections are maintained.
Election/Restriction
Newly submitted claims 8-20 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claims 1-7 are patentably distinct from claims 8-20 are subcombinations useable together. Claims 8-20 would have separate utility as a system for enabling candidate embeddings.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 8-20 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
MPEP 2106 Step 2A-Prong 1
The claims recite:
acquires a use history of a user, the use history being related to buying and
selects another user to be recommended by inputting a first prompt the first prompt instructing selection of another user having a use history similar to the use history of the user; and
generates different answers to the same question based on data published on the Internet that differ depending on the time the question is asked
recommends that the user follow the other user selected; makes a real-time notification when a piece of merchandise is listed to be sold by the another user.
The claims falls into the abstract idea groupings of (b) 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)**
The limitations under their broadest reasonable interpretation, covers performance of marketing or sales activities or behaviors; business relations, but for the recitation of generic computer components. That is, other than recited, “varied units, profile screen, generative AI, non-transitory computer readable medium”, nothing in the claim element precludes the step from practically being certain methods of organizing human activity. Accordingly, the claims recite an abstract idea.
MPEP 2106 Step 2A-Prong 2
The recited limitations are not indicative of integration into a practical application. In particular, the claims only recite the following additional elements, “varied units, generative AI, profile screen, non-transitory computer readable medium.” These additional elements are recited at a high-level of generality such that in conjunction with the abstract limitations, they amount to no more than:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f);
- (varied units, generative AI, generative model, profile screen, non-transitory computer readable medium)
The claims do not include additional elements individually or in an ordered combination that are sufficient to amount to significantly more than the judicial exception. Integration into a practical application requires the additional element(s) to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. This is not the case in the instant application. Further, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than: mere instructions to apply the exception using a generic computer component; mere data gathering/post solution activity; generally linking the use of the judicial exception to a particular technological environment or field of use.
MPEP 2106 Step 2B
Eligibility requires that the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception. As discussed above, this is where the instant application falls short. The claims do not include additional elements individually or in an ordered combination that are sufficient to amount to significantly more than the judicial exception
Dependent Claims Step 2A:
The limitations of the dependent claims but for those addressed below merely set forth further refinements of the abstract idea without changing the analysis already
presented (that is, they further limit the organizing of human activities at step 2A —
Prong One without adding any new additional elements other than those already
analyzed above with respect to the independent claims at 2A — Prong Two; While claims 2-6 describe varied units; claims 4-6-profile screen, these additional elements do not remedy the deficiencies.
Dependent Claims Step 2B:
The dependent claims merely use the same general technological environment
and instructions to implement the abstract idea as the independent claims without
adding any new additional elements. Accordingly, they are not directed to significantly
more than the exception itself, and are not eligible subject matter under § 101.
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 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Pang U.S. Pre-Grant Publication No. 2010/0280902 A1 in view of Zhang U.S. Pre-Grant Publication No. 2025/0190449 A1 in further view of Socher U.S. Pre-Grant Publication No. 2024/0020538 A1 and Alderson U.S. Pre-Grant Publication No. 2011/0184780 A1
As per Claims 1 and 7, Pang teaches an acquisition unit that acquires a use history of a user, the use history being related to buying and selling of merchandise (see para. 18);
a selection unit that selects another user to be recommended by selection of another user having a use history similar to the use history of the user; (see para. 18 and 34) and
a recommendation unit that recommends that the user follow the other user selected by the selection unit (see para. 34, The Examiner is interpreting suggesting a buyer group link as following the user)
Pang does not explicitly teach inputting a first prompt to a generative AI, the first prompt regarding a selection. Zhang describes this functionality with respect to an agent orchestrator (see para. 52).
Pang does not explicitly teach the limitation taught by Socher wherein the generative Al comprises a text generative model that generates different answers to the same question based on data published on the Internet that differ depending on the time the question is asked (see para. 21 and 25). It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to modify the system of Pang to include the teachings of Zhang and Socher to ensure high availability and reliability, as taught by the cited portion of Zhang.
Pang does not explicitly teach the limitation taught by Alderson and a notification unit that automatically makes a real-time notification when a piece of merchandise is listed to be sold by the another user. (see para. 49). It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to modify the systems of Pang and Zhang to include the teachings of Alderson to allow a user to participate in flash sales as taught by the cited portion of Alderson.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Pang U.S. Pre-Grant Publication No. 2010/0280902 A1 in view of Zhang U.S. Pre-Grant Publication No. 2025/0190449 A1 in further view of Socher U.S. Pre-Grant Publication No. 2024/0020538 A1 and Alderson U.S. Pre-Grant Publication No. 2011/0184780 A1 and Karthikeyan U.S. Patent No. 10,565,638 B2
As per Claim 2, Pang in view of Zhang in further view of Socher and Alderson teach the system of claim 1 as described above. Pang does not explicitly teach the limitation taught by Karthikeyan wherein the acquisition unit acquires the use history including a history of reviews made by the user on information predefined in association with the merchandise on a service enabling buying and selling of the merchandise (see Col. 58-66). It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to modify the systems of the cited references to include the teachings of Karthikeyan to allow for targeted recommendations, as taught by the cited portion of Karthikeyan.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Pang U.S. Pre-Grant Publication No. 2010/0280902 A1 in view of Zhang U.S. Pre-Grant Publication No. 2025/0190449 A1 in further view of Socher U.S. Pre-Grant Publication No. 2024/0020538 A1 and Alderson U.S. Pre-Grant Publication No. 2011/0184780 A1
As per Claim 3, Pang in view of Zhang in further view of Socher and Alderson teach the system of claim 1 as described above. Pang does not explicitly teach the limitation taught by Alderson a notification unit that makes a notification when a piece of merchandise is listed to be sold by the other user recommended by the recommendation unit in a case where the user has followed the other user, the notification being related to listing of the piece of merchandise to be sold (see para. 49). It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to modify the systems of Pang and Zhang to include the teachings of Alderson to allow a user to participate in flash sales as taught by the cited portion of Alderson.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Pang U.S. Pre-Grant Publication No. 2010/0280902 A1 in view of Zhang U.S. Pre-Grant Publication No. 2025/0190449 A1 Pang in view of Zhang in further view of Socher U.S. Pre-Grant Publication No. 2024/0020538 A1 and Alderson U.S. Pre-Grant Publication No. 2011/0184780 A1 and Peterson U.S. Pre-Grant Publication No. 2010/0198917 A1
As per Claim 4, Pang in view of Zhang in further view of Socher and Alderson teach the system of claim 1 as described above. Pang does not explicitly teach the limitation taught by Peterson a generation unit that generates a profile screen of the user by inputting generation of a profile screen suited to the use history of the user (see para. 244 and fig. 32B). It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to modify the system of Pang and Zhang to include the teachings of Peterson to create corresponding aggregate profiles, as taught by Peterson. Zhang teaches a generative AI generating prompts.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Pang U.S. Pre-Grant Publication No. 2010/0280902 A1 in view of Zhang U.S. Pre-Grant Publication No. 2025/0190449 A1 in further view of Socher U.S. Pre-Grant Publication No. 2024/0020538 A1 and Alderson U.S. Pre-Grant Publication No. 2011/0184780 A1
and Peterson U.S. Pre-Grant Publication No. 2010/0198917 A1 and Girard et al. U.S. Pre-Grant Publication No. 2014/0310079 A1
As per Claim 5, Pang in view of Zhang in further view of Socher and Alderson teach the system of claim 4 as described above. Pang does not explicitly teach the limitation taught by Girard wherein the generation unit generates the profile screen of the user by inputting, generation of the profile screen from information on visitors who have browsed a profile screen of the user or merchandise content of merchandise listed to be sold by the user (see fig. 2B and para. 96). Zhang describes the generative AI issuing prompts. It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to modify the system of Pang, Zhang and Peterson to include the teachings of Girard to facilitate sales in a marketplace.
As per Claim 6, Pang in view of Zhang and Peterson teach the system of claim 4 as described above. Pang does not explicitly teach the limitation taught by wherein the generation unit generates the profile screen of the user by inputting, to the generative AI, the second prompt instructing generation of the profile screen by placing higher weight to information on a visitor with a higher degree of match with the user, the visitor being among the visitors. The cited portion of claim meets the limitation of this claim, as the limitations of claim 5 are presented in the alternative.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TONYA S JOSEPH whose telephone number is (571)270-1361. The examiner can normally be reached M-F 6:30-2:30, First Fridays Off.
Examiner interviews are available via telephone, in-person, 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, Shannon Campbell can be reached at (571) 272-5587. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TONYA JOSEPH/Primary Examiner, Art Unit 3628
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