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 .
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
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.
The Manual of Patent Examining Procedure (MPEP) provides detailed rules for determining subject matter eligibility for claims in §2106. Those rules provide a basis for the analysis and finding of ineligibility that follows. MPEP §2106(III) states that examiners should determine whether a claim satisfies the criteria for subject matter eligibility by evaluating the claim in accordance with the flowchart in this section.
Claims 1-6 and 12-17 and 20 are rejected under 35 U.S.C. §101. The claimed invention is directed to unpatentable subject matter because the claimed invention recites a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The examiner analyzes the instant claims according to a flowchart for subject matter eligibility test for products and processes (MPEP 2106).
Eligibility Step 1 (MPEP 2106.03, Statutory category):
Claims 1-6 are directed to a method, claims 12-17 are directed to a device and claim 20 is directed to a non-transitory computer readable storage medium. The claims 1-6 and 12-17 and 20 fall into one of the four statutory categories of invention (YES branch of step 1).
Eligibility Step 2A, Prong One (does a claim recites a judicial exception?) (MPEP 2106.04(a) – (c)):
Step 2A is a two-prong inquiry, in which examiners determine in Prong One whether a claim recites a judicial exception, and if so, then determine in Prong Two if the recited judicial exception is integrated into a practical application of that exception. Together, these prongs represent the first part of the Alice/Mayo test, which determines whether a claim is directed to a judicial exception (See a flowchart in MPEP 2106.04(II)(A)). In the prone one of the two prong inquiry, the above limitations recited in claims are directed to at least one of groups of abstract ideas (MPEP 2106.04(a), “Mathematical concepts”, “Certain methods of organizing human activity”, “Mental Processes”). It should be noted that these groupings are not mutually exclusive, i.e., some claims recite limitations that fall within more than one grouping or sub-grouping (MPEP 2106.04(a)(2)).
Although claims 1-6 and 12-17 and 20fall into one of the four statutory categories the patent eligible subject matter, independent claims 1, 12 and 20 recite a number of steps of (“determining …”, “inputting …”, “obtaining…” and “displaying…”). These limitations fall into a judicial exception (MPEP 2106.04 (II), “laws of nature”, “natural phenomena” and “abstract idea”). The Supreme Court has explained that the judicial exceptions reflect the Court’s view that abstract ideas, laws of nature, and natural phenomena are "the basic tools of scientific and technological work", and are thus excluded from patentability because "monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it." Alice Corp., 573 U.S. at 216, 110 USPQ2d at 1980. It should be noted that there are no bright lines between the types of exceptions, and that many of the concepts identified by the courts as exceptions can fall under several exceptions (MPEP 2106.04 (I) and (II)).
In light of the disclosure (Spec. pages 1-2, Fig. 1), the claimed invention is related to providing recommendations using a large model based on user’s interests and popular searches. The recited limitations just include a high-level concept of inputting various information to a large model to obtain “at least one recommendation card”. Since a claimed “a large model” could be interpreted as a human brain / mind. The claimed invention could be interpreted as a child asking a librarian for recommending a good book. For example, claim 1 could be interpreted as:
determining description information of interested content corresponding to a target user (A child, i.e., a target user, asks a librarian to give a recommendation for a good book, the librarian thinks about what the child likes to read);
inputting a content to be recommended, the description information of interested content and current popular search sentences into a large model to generate at least one recommendation card corresponding to the content to be recommended, wherein the recommendation card contains a recommendation word associated with the content to be recommended (The librarian recommends the child reading fantasy books based on popular search for “Harry Potter” as well as the child’s interests; Note a claimed “a large model” can be interpreted as librarian’s mind that has a lot of knowledge);
obtaining a current behavior characteristic of the target user (obtaining child’s preference, who said he likes fantasy book); and
in response to the current behavior characteristic satisfying a display condition of the recommendation card, displaying the recommendation card corresponding to at least one content to be recommended (In response to the child saying, the librarian shows the child some fantasy books, e.g., “Harry Potter”).
If claim 1 were patented, a librarian would infringe the patent if the librarian is doing his /her routine work by recommending a book to a child according to child’s interests. Claim 12 and claim 20, although including generic computer elements, have similar features as method claim 1. The generic computer elements (a processor, a memory, non-transitory computer storage medium) recited in claim 12 or 20 are related to using a generic computer as a tool.
Claims 2 and 13 recite limitations related to previous user’s interests (claimed “during a first preset time period”. These limitations are also directed to a mental process.
Claims 3-4 and 14-15 recite limitations related to showing a book based on if if a user like / dislike the book (claimed “a type of the display condition”). These limitations are also directed to a mental process.
Claims 5-6 and 16-17 recite limitations related to determining if the recommended content is similar / not similar to a book that user’s is current reading. This feature is also a mental process.
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., 654F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir.2011).
If a claim recites a limitation that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper, the limitation falls within the mental processes grouping, and the claim recites an abstract idea. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75,674. If the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept.
As explained above, independent claims recite limitations related to recommending something (e.g., a book) based on current popular search / user’s interests. The claim limitation could be performed in human mind or with a pen / a piece of paper. The dependent claims further recite steps related to determining if a user is interested in / or not interested in the recommendations.
In these situations, the claim is considered to recite a mental process. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures “can be carried out in existing computers long in use, no new machinery being necessary.” The claims therefore recited an abstract idea, despite the fact that the claimed steps were performed on a computer. 887 F.3d at 1385, 126 USPQ2d at 1504.
Eligibility Step 2A, Prong two (integrated into a practical application? MPEP 2106.04(d)).
Since the claimed invention falls into a judicial exception according above analysis (YES branch of PRONG ONE in the step 2A), a claim that is directed to a judicial exception must be evaluated to determine whether the claim recite additional elements that integrate the judicial exception into a practical application (MPEP 2106.04(II)(A)(2)). Prong Two asks whether the claim recite additional elements that integrate the judicial exception into a practical application. In Prong Two, examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception. Court in Gottschalk v. Benson ‘‘held that simply implementing a mathematical principle on a physical machine, namely a computer was not a patentable application of that principle. Accordingly, after determining that a claim recites a judicial exception in Step 2A Prong One examiners should evaluate whether the claim as a whole integrates the recited judicial exception into a practical application of the exception in Step 2A Prong Two. For a claim reciting a judicial exception to be eligible, the additional elements (if any) in the claim must "transform the nature of the claim" into a patent-eligible application of the judicial exception, Alice Corp., 573 U.S. at 217, 110 USPQ2d at 1981, either at Prong Two or in Step 2B. If there are no additional elements in the claim, then it cannot be eligible.
Eligibility Step 2B (Inventive concept / significantly more consideration; MPEP 2106.05).
MPEP §2106.05 describes step 2B test to determine whether a claim amounts to significantly more. The second part of the Alice/Mayo test is often referred to as a search for an inventive concept. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217, 110 USPQ2d 1976, 1981 (2014). The Supreme Court has identified a number of considerations as relevant to the evaluation of whether the claimed additional elements amount to an inventive concept (See MPEP §2106.05(I)(A)). It is notable that mere physicality or tangibility of an additional element or elements is not a relevant consideration in Step 2B. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception is not in itself an inventive concept and does not guarantee eligibility.
The Supreme Court has identified a number of considerations as relevant to the evaluation of whether the claimed additional elements amount to an inventive concept. By considering limitations recited in the instant claims, the claims do not improve the functions of a computer, or any other technology or technical field. The claims also do not apply the judicial exception with, or by use of, a particular machine. The claims also do not have effecting a transformation or reduction of a particular article to a different state or thing. The claims fail to include a specific limitation other than what is well-understood, routine, conventional activity in the field, or adding unconventional steps that confine the claim to a particular useful application. The recited “processor” / “memory” are well-understood, routine and conventional in the field. Therefore, that recited element does not amount to significantly more than an abstract idea.
Please notes simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984. The court also found “adding insignificant extra-solution activity to the judicial exception” or “generally linking the use of the judicial exception to a particular technological environment or field of use” is not enough to be qualify as “significantly more” considerations.
By reviewing limitations recited in the claims, none of the limitations meet the significantly more considerations. Therefore, claims are directed to unpatentable subject matter and are rejected under 35 U.S.C. 101 (MPEP §2106, flowchart, Step 2B, NO branch).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2 and 12-13 and 20 are rejected under 35 U.S.C. §102 (a)(2) as being anticipated by Wang et al. (US PG Pub. 2025/0156926, referred to as Wang).
Wang discloses an online shopping/chatbot system that answers user questions and also promotes featured products in the response. A user sends a query, such as a recipe request or product-related question, through a client device. The system turns that query into a prompt for a machine-learned generative language model. The prompt asks the model to answer the user and to include one or more featured products in a relevant way. The model generates a response that may weave the featured items into the answer or list them separately. The online system then formats that response for display on the client device. In some versions, the featured products are selected because they match consumer packaged goods or other relevant items mentioned by the model. The system may also use relevance scores, bid values, and auctions to choose which featured products to show. The displayed response can include links, product pages, or add-to-cart actions. User interactions with the response are collected. Those interaction signals are then used to improve future ranking, click-through prediction, or fine-tuning of the language model.
Regarding claims 1, 12 and 20, Wang discloses a large model-based recommendation method, a device and a non-transitory computer readable storage medium (Wang, [0054], [0069-0071], Fig. 1A, Fig. 8, a computer implemented large language model, LLM, that provides answers to user’s question with additional recommendations), comprising:
determining description information of interested content corresponding to a target user (Wang, [0086-0088], Fig. 5A);
inputting a content to be recommended, the description information of interested content and current popular search sentences into a large model to generate at least one recommendation card corresponding to the content to be recommended, wherein the recommendation card contains a recommendation word associated with the content to be recommended (Wang, [0051-0052], [0057], [0087-0091], Fig. 5A / 5B, Fig. 8);
obtaining a current behavior characteristic of the target user (Wang, [0062], [0154], analyzing user tone or sentiment based on shopping history, [0086-0088], [0105], user click and add it to shopping list; Fig. 8); and
in response to the current behavior characteristic satisfying a display condition of the recommendation card, displaying the recommendation card corresponding to at least one content to be recommended (Wang, [0034-0035], [0076], Fig. 8, displaying answers to user’s query and also with recommendations).
Regarding claims 2 and 13, Wang further discloses:
obtaining first interactive information of each candidate content in a candidate content library during a first preset time period (Wang, [0062], [0154], [0159], obtaining information such as user’s rating to an item, user’s previous shopping history); and
determining a current content to be recommended from the candidate content library according to the first interactive information of each candidate content (Wang, [0114], [0116], [0135-136], determining relevant products based on collected click trough rate, CTR).
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 of this title, 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 3-6 and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of Maynard et al. (US PG Pub. 2018/0033051, referred to as Maynard).
Wang discloses a large language model (LLM) based recommendation system that displaying featured / recommended products when providing a response to a user’s query (Wang, [0092-0094], Fig. 8). Wang further discloses the displayed featured products were based on user’s shopping history and preferences (Wang, [0062]). Although Wang implies “determining a type of the display condition satisfied currently” and “determining a target recommendation content based on the type of the display condition satisfied”, Wang does not explicitly describe features in these dependent claims 3-6 and 14-17.
Maynard discloses an advertising recommendation system that lets a web user directly tell the system what kinds of ads they want to see. In a graphical user interface, the user can pick topics such as sports, health, politics, or technology. The system records those selections and uses them later when showing ads on the same or other publisher sites. The system can also combine the user’s stated interests with other data such as browsing history, clicks, referrers, or demographic signals.
Regarding claims 3 and 14, Maynard discloses a recommendation system that displays recommendations bases on user’s specified topics (Maynard, [0006], [0022], [0032-0033]). Maynard discloses:
in response to the current behavior characteristic satisfying the display condition of the recommendation card, determining a type of the display condition satisfied currently (Maynard, [0022], [0030], [0032], user inputs and selects interest types and topics);
determining a target recommendation content based on the type of the display condition satisfied (Maynard, [0032-0033], displaying recommendation based on user’s selected topics); and
displaying a recommendation card corresponding to the target recommendation content (Maynard, [0020], [0024], displaying contents related to user interested topics).
Both Wang and Maynard are related to a recommendation system for showing contents. It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to modify Wang’s teaching with Maynard’s teaching to a allow a user to specific what type of contents a user is interested in. One having ordinary skill in the art would have been motivated to make such a modification to so that the recommended contents are relevant and are user’s interest topics (Maynard, [0003-0004], [0030]).
Regarding claims 4 and 15, Wang in view of Maynard further discloses:
in response to the type of the display condition being a first type, determining the target recommendation content based on a content currently consumed by the target user (Maynard, [0022], tailor advertisement based on user’s interested topics); OR, in response to the type of the display condition being a second type, determining the target recommendation content based on a content currently displayed on a display interface (Examiner note, the reference only need to teach ONE alternative using “OR”).
Regarding claims 5 and 16, Wang in view of Maynard further discloses determining the target recommendation content based on the content currently consumed by the target user, comprises:
determining a content to be recommended belonging to the same type as the content currently consumed as the target recommendation content (Maynard, [0022], tailor advertisement based on user’s interested topics; [0032], filtering out not relevant topics); OR,
determining a content to be recommended whose similarity with the content currently consumed is greater than a first threshold as the target recommendation content (Examiner note, the reference only need to teach ONE alternative using “OR”).
Regarding claims 7 and 17, Wang in view of Maynard determining the target recommendation content based on the content currently displayed on the display interface, comprises:
determining a content to be recommended whose similarity with the content currently displayed is less than a second threshold as the target recommendation content (Examiner note, the reference only need to teach ONE alternative using “OR”); OR,
determining a content to be recommended that does not belong to the same type as the content currently displayed as the target recommendation content (Maynard. [0032], eliminate topics that are not related to user’s interests).
Allowable Subject Matter
Claims 7-11 and 18-19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 7 and 18 recite specific limitations by defining contents of training sample data. Although Wang in view of Maynard discloses fine-tuning a machine learning model using various training data (Wang, [0141], [0152], [0157]). The prior art references of the record do not meet specific content of training sample as defined by the limitations recited in claims 7 and 18 (a claimed: “wherein the first sample data comprises…”). Claims 8-11 further limit claim 7. Claim 19 further limit claim 18. When considering all limitations (including limitations of their corresponding base claims 1 and 12, respectively), prior art references of the record fail to anticipate or render obvious the claimed invention defined by these dependent claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The examiner discovered several relevant prior art references that are related to one or more concepts disclosed by the instant application. These references are included in the attached PTO-892 form for completeness of the record.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jialong He, whose telephone number is (571) 270-5359. The examiner can normally be reached on Monday – Friday, 8:00AM – 4:30PM, EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Pierre Desir can be reached on (571) 272-7799. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIALONG HE/Primary Examiner, Art Unit 2659
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