DETAILED ACTION
Status of Claims
• The following is an office action in response to the communication filed 08/10/2026.
• Claims 1, 8, and 15 have been amended.
• Claims 2, 4, 6-7, 9, 11, 13-14, 16, 18, and 20 have been canceled.
• Claims 1, 3, 5, 8, 10, 12, 15, 17, and 19 are currently pending and have been examined.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of Application No. IN202421003421, filed on 01/17/2024 has been received.
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 .
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, 3, 5, 8, 10, 12, 15, 17, and 19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claims recite an abstract idea. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
First, it is determined whether the claims are directed to a statutory category of invention. See MPEP 2106.03(II). In the instant case, claims 1, 3, and 5 are directed to a process, claims 8, 10, and 12 are directed to a machine and claims 15, 17, and 19 are directed to a manufacture. Therefore, claims 1-20 are directed to statutory subject matter under Step 1 of the Alice/Mayo test (Step 1: YES).
The claims are then analyzed to determine if the claims are directed to a judicial exception. See MPEP 2106.04. In determining whether the claims are directed to a judicial exception, the claims are analyzed to evaluate whether the claims recite a judicial exception (Prong 1 of Step 2A), as well as analyzed to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of the judicial exception (Prong 2 of Step 2A). See MPEP 2106.04.
Taking claim 1 as representative, claim 1 recites at least the following limitations that are believed to recite an abstract idea:
receiving information comprising a first set of items pertaining to a first entity, and a second set of items pertaining to a second entity;
pre-processing the information comprising the first set of items pertaining to the first entity and the second set of items pertaining to the second entity to obtain a pre-processed dataset;
obtaining a taxonomy code to at least a subset of items amongst the pre-processed dataset to obtain a set of code tagged items, wherein each code tagged item amongst the set of code tagged items is associated with one or more attributes;
tagging, a taxonomy code to an initial set of items based on at least one of an associated item category and an associated item sub-category levels from L1 to L7 based on the category, sub-categories and pre-defined attributes to all categories at taxonomy code level by a domain team;
converting the one or more attributes comprised in the set of code tagged items into a feature vector, wherein the feature vector is associated with the first set of items and the second set of items;
building a first model and a second model using the set of code tagged items and the feature vector, wherein the first model is by using the set of code tagged items, wherein the second model is using the feature vector;
predicting, by using the first model and the second model, (i) a first taxonomy level-based value, and (ii) the taxonomy code for each remaining item amongst the pre-processed dataset, respectively to obtain a third set of items;
extracting one or more features from the subset of items, and the third set of items;
processing the taxonomy code, an associated taxonomy level, and a value associated with the one or more features to obtain a first set of recommended items, wherein the step of processing by comprises:
filtering the second set of items for each item comprised in the first set of items based on the taxonomy code;
creating a feature summary for the first set of items and the second set of items based on the value of the one or more features;
converting the feature summary into the feature vector of the first set of items and the second set of items;
computing a cosine similarity score for the first set of items and the second set of items based on the feature vector of the first set of items and the second set of items; and
obtaining the first set of recommended items based on the cosine similarity score,
wherein the step of processing comprises:
for each taxonomy code:
traversing through the associated taxonomy level for determining a match between an item of the first set of items and an item of the second set of items to obtain a set of level-based items;
concatenating one or more attributes of the set of level-based items to obtain a set of concatenated attributes;
converting the set of concatenated attributes into the feature vector of the first set of items and the second set of items;
computing a cosine distance score between the first set of items and the second set of items based on the feature vector of the first set of items and the second set of items;
computing a taxonomy based matching score based on the cosine distance score; and
obtaining the first set of recommended items based on the taxonomy based matching score,
wherein the step of processing comprises:
creating an index of the second set of items;
identifying a semantic match for a query item associated with the first set of items in the index of the second set of items;
computing a semantic matching score based on the semantic match; and
obtaining the first set of recommended items based on the semantic matching score; and
wherein the step of processing comprises:
performing a comparison of a name associated with each item amongst the first of items with each item amongst the second of items;
computing a string matching score based on the comparison; and
obtaining the first set of recommended items based on the string matching score;
applying one or more rules on the first set of recommended items to obtain a fourth set of items, wherein each rule is associated;
grouping one or more items from the fourth set of items into one or more categories;
recommending at least a subset of items amongst the fourth set of items to obtain a second set of recommended items, wherein the second set of recommended items is based on a weightage associated, wherein the weightage associated is determined based on a match of an item comprised in the fourth set of items with an associated item amongst the second set of items;
updating the weightage based on a comparison of (i) one or more items amongst the second set of recommended items, and (ii) a fifth set of items; and
sorting the second set of recommended items based on the updated weightage.
The above limitations recite the concept of recommending an item based on a taxonomy. These limitations, under their broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they recite commercial or legal interactions such as advertising, marketing, or sales activities or behaviors. Specifically, the recommending items is sales activity because it pertains to commerce and a transaction list (Specification [0003]). Further, these limitations, under their broadest reasonable interpretation, fall within the “Mental Processes” grouping of abstract ideas, enumerated in the MPEP, in that they recite concepts performed in the human mind, including observations, evaluations, judgments, and opinions. Specifically, the analysis and determination are observations, evaluations, and judgements. Independent claims 8 and 15 recite similar limitations as claim 1 and as such, claims 8 and 15 fall within the same identified grouping of abstract ideas. Accordingly, under Prong One of Step 2A of the Alice/Mayo test, claims 1, 8, and 15 recite an abstract idea (Step 2A, Prong One: YES).
Under Prong Two of Step 2A of the MPEP, claims 1, 8, and 15 recite additional elements, such as a processor; one or more hardware processors; a sentence encoder; a plurality of natural language processing (NLP) engines; L1classifier model; a taxonomy classifier model; a first NLP engine amongst the plurality of NLP engines; a second NLP engine amongst the plurality of NLP engines; a third NLP engine amongst the plurality of NLP engines; a fourth NLP engine amongst the plurality of NLP engines; at least one NLP engine amongst the plurality of NLP engines; each of the plurality of NLP engines; a system, comprising: a memory storing instructions; one or more communication interfaces; and one or more hardware processors coupled to the memory via the one or more communication interfaces, wherein the one or more hardware processors are configured by the instructions; and one or more non-transitory machine-readable information storage mediums comprising one or more instructions which when executed by one or more hardware processors cause. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. As such, these computer-related limitations are not found to be sufficient to integrate the abstract idea into a practical application. Although these additional computer-related elements are recited, claims 1, 8, and 15 merely invoke such additional elements as a tool to perform the abstract idea. Implementing an abstract idea on a generic computer is not indicative of integration into a practical application. Similar to the limitations of Alice, claims 1, 8, and 15 merely recite a commonplace business method (i.e., recommending items based on a taxonomy) being applied on a general purpose computer. See MPEP 2106.05(f). Furthermore, claims 1, 8, and 15 generally link the use of the abstract idea to a particular technological environment or field of use. The courts have identified various examples of limitations as merely indicating a field of use/technological environment in which to apply the abstract idea, such as specifying that the abstract idea of monitoring audit log data relates to transactions or activities that are executed in a computer environment, because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer (see FairWarning v. Iatric Sys.). Likewise, claims 1, 8, and 15 specifying that the abstract idea of recommending items based on a taxonomy is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer. As such, under Prong Two of Step 2A of the MPEP, when considered both individually and as a whole, the limitations of claims 1, 8, and 15 are not indicative of integration into a practical application (Step 2A, Prong Two: NO).
Since claims 1, 8, and 15 recite an abstract idea and fail to integrate the abstract idea into a practical application, claims 1, 8, and 15 are “directed to” an abstract idea (Step 2A: YES).
Next, under Step 2B, the claims are analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract idea. See MPEP 2106.05. The instant claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for at least the following reasons.
Returning to independent claims 1, 8, and 15, these claims recite additional elements, such as a processor; one or more hardware processors; a sentence encoder; a plurality of natural language processing (NLP) engines; L1classifier model; a taxonomy classifier model; a first NLP engine amongst the plurality of NLP engines; a second NLP engine amongst the plurality of NLP engines; a third NLP engine amongst the plurality of NLP engines; a fourth NLP engine amongst the plurality of NLP engines; at least one NLP engine amongst the plurality of NLP engines; each of the plurality of NLP engines; a system, comprising: a memory storing instructions; one or more communication interfaces; and one or more hardware processors coupled to the memory via the one or more communication interfaces, wherein the one or more hardware processors are configured by the instructions; and one or more non-transitory machine-readable information storage mediums comprising one or more instructions which when executed by one or more hardware processors cause. As discussed above with respect to Prong Two of Step 2A, although additional computer-related elements are recited, the claims merely invoke such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). Moreover, the limitations of claims 1, 8, and 15 are manual processes, e.g., receiving information, analyzing information, etc. The courts have indicated that mere automation of manual processes is not sufficient to show an improvement in computer-functionality (see MPEP 2106.05(a)(I)). Furthermore, as discussed above with respect to Prong Two of Step 2A, claims 1, 8, and 15 merely recite the additional elements in order to further define the field of use of the abstract idea, therein attempting to generally link the use of the abstract idea to a particular technological environment, such as the Internet or computing networks (see Ultramercial, Inc. v. Hulu, LLC. (Fed. Cir. 2014); Bilski v. Kappos (2010); MPEP 2106.05(h)). Similar to FairWarning v. Iatric Sys., claims specifying that the abstract idea of recommending items based on a taxonomy is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claim to the computer field, i.e., to execution on a generic computer.
Even when considered as an ordered combination, the additional elements do not add anything that is not already present when they are considered individually. In Alice Corp., the Court considered the additional elements “as an ordered combination,” and determined that “the computer components…‘[a]dd nothing…that is not already present when the steps are considered separately’ and simply recite intermediated settlement as performed by a generic computer.” Id. (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Similarly, viewed as a whole, claims 1, 8, and 15 simply convey the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B of the Alice/Mayo test, there are no meaningful limitations in claims 1, 8, and 15 that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself (Step 2B: NO).
Dependent claims 3, 5, 10, 12, 17, and 19, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because they recite an abstract idea, are not integrated into a practical application, and do not add “significantly more” to the abstract idea. More specifically, dependent claims 3, 5, 10, 12, 17, and 19 further fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they further recite commercial or legal interactions such as advertising, marketing, or sales activities or behaviors and managing personal behavior or relationships or interactions between people. Further, these claims, under their broadest reasonable interpretation, fall within the “Mental Processes” grouping of abstract ideas, enumerated in the MPEP, in that they recite concepts performed in the human mind, including observations, evaluations, judgments, and opinions. Dependent claims 3, 5, 10, 12, 17, and 19 fail to identify additional elements and as such, are not indicative of integration into a practical application. Similar to discussion above the with respect to Prong Two of Step 2A, the claims merely invoke such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). As such, under Step 2A, dependent claims 3, 5, 10, 12, 17, and 19 are “directed to” an abstract idea. Similar to the discussion above with respect to claims 1, 8, and 15, dependent claims 3, 5, 10, 12, 17, and 19 analyzed individually and as an ordered combination, invoke such additional elements as a tool to perform the abstract idea and merely indicate a field of use in which to apply the abstract idea because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer, and therefore, do not amount to significantly more than the abstract idea itself. See MPEP 2106.05(f)(2). Accordingly, under the Alice/Mayo test, claims 1, 3, 5, 8, 10, 12, 15, 17, and 19 are ineligible.
Allowable Subject Matter
Claims 1, 3, 5, 8, 10, 12, 15, 17, and 19 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 101, set forth in this Office action.
Upon review of the evidence at hand, it is hereby concluded that the evidence obtained and made of record, alone or in combination, neither anticipates, reasonably teaches, nor renders obvious the below noted features of applicant’s invention as the noted features amount to more than a predictable use of elements in the prior art.
The most relevant prior art made of record includes previously cited Balakrishnan et al. (US 20220058227 A1), hereafter Balakrishnan, in view of Wang et al. (US 20210240742 A1), hereinafter Wang, newly cited Bharadwaj et al. (US 20240211482 A1), hereinafter Bharadwaj, newly cited Agrawal (US 20170124624 A1), hereinafter Agrawal, and previously cited NPL reference U, initially cited in the Office action dated 05/18/2026.
Although individually the references teach concepts such as a taxonomy, NLP engines, and recommending items, none of the references teach nor render obvious that recommendations are sorted using the specific method of tagging a taxonomy code and performing the specific analyses by each of the specific NLP engines.
Previously cited Balakrishnan discloses a method of generating product catalogs (Balakrishnan: [0008]). Information about product records may be provided to a machine learning model to predict attributes (Balakrishnan: [0092]). Product recommendations may be provided based on an analysis by NPL engines (Balakirhsnan: [0110]). Yet Balakrishnan does not explicitly disclose all of the limitations pertaining to the taxonomy tagging, each specific NPL engine, and the sentence encoder.
Previously cited Wang teaches a taxonomy method (Wang: [0053]). Wang further teaches that open-source sentence embedding algorithms can be used to generate vector representations (e.g., a transformer based universal sentence encoder, a deep averaging network based universal sentence encoder) (Wang: [0055]). However, Wang does not explicitly teach all of the limitations regarding the specific machine NLP engines and the corresponding recommendation.
Newly cited Bharadwaj teaches a recommendation method (Bharadwaj: [0078]). Knowledge base question and answering (KBQA) system can rely on multiple large language modules (LLMs) for the task of entity linking (e.g., an NPL module, etc.). The task of entity linking involves detecting topic entities mentioned in the user question and linking them to the correct knowledge base identifiers (Bharadwaj: [0141]). However, Bharadwaj does not teach the limitations regarding the specific analyses by each NLP engine.
Newly cited Agrawal teaches a method of product recommendations (Agrawal: [abstract]). Agrawal further teaches that an administrative portal can be configured to receive product feature taxonomies manually entered by an operator or automatically generated by a feature tag generation component. As such, one or more product feature taxonomies can be manually input or uploaded (e.g., in a text document) by an operator (Agrawal: [0034]). However, Agrawal does not explicitly teach the limitations regarding the specific analyses by each NLP engine.
Previously cited NPL reference U, initially cited in the Office action dated 05/18/2026, teaches a product taxonomy. Products are classified and organized into hierarchies or groups based on traits and characteristics. Classification codes are used. However, U does not explicitly teach all of the limitations regarding the specific analyses by each NLP engine.
While these references arguably teach the claimed limitations using a piecemeal analysis, these references would only be combined and deemed obvious based on knowledge gleaned from the applicant's disclosure. Such a reconstruction is improper (i.e., hindsight reasoning). See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Accordingly, claims 1, 8, and 15, taken as a whole, are indicated to be allowable over the cited prior art. The examiner emphasizes that it is the interrelationship of the limitations that renders these claims allowable over the prior art/additional art. Claims 3, 5, 10, 12, 17, and 19 depend from claims 1, 8, and 15, and therefore the dependent claims are also indicated as containing allowable subject matter.
The examiner further emphasizes the claims as a whole and hereby asserts that the totality of the evidence fails to set forth, either explicitly or implicitly, an appropriate rationale for further modification of the evidence at hand to arrive at the claimed invention. The combination of features as claimed would not have been obvious to one of ordinary skill in the art as combining various references from the totality of the evidence to reach the combination of features as claimed would require a substantial reconstruction of the Applicant's claimed invention relying on improper hindsight bias.
It is thereby asserted by the examiner that, in light of the above and in further deliberation over all the evidence at hand, that the claims are allowable as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in the art.
Response to Arguments
Applicant’s arguments, filed 08/10/2026, have been fully considered.
35 U.S.C. § 101
Applicant argues the claims do not recite an abstract idea because the claims “cannot be construed as abstract ideas, business method, and mental step”. Remarks page 18. The examiner disagrees. As shown in the rejection of claims under 35 U.S.C. 101 above, the limitations directed to the abstract idea are directly quoted and concepts within the identified as belonging to the Certain Methods of Organizing Human Activity and Mental Processes groupings of abstract ideas. With respect to the instant claims, a processor; one or more hardware processors; a sentence encoder; a plurality of natural language processing (NLP) engines; L1classifier model; a taxonomy classifier model; a first NLP engine amongst the plurality of NLP engines; a second NLP engine amongst the plurality of NLP engines; a third NLP engine amongst the plurality of NLP engines; a fourth NLP engine amongst the plurality of NLP engines; at least one NLP engine amongst the plurality of NLP engines; each of the plurality of NLP engines; a system, comprising: a memory storing instructions; one or more communication interfaces; and one or more hardware processors coupled to the memory via the one or more communication interfaces, wherein the one or more hardware processors are configured by the instructions; and one or more non-transitory machine-readable information storage mediums comprising one or more instructions which when executed by one or more hardware processors cause have been analyzed as additional elements and accordingly are not analyzed under Step 2A, Prong 1. The claims further recite recommending an item based on a taxonomy. These claims fall into the Methods of Organizing Human Activity grouping, which includes activity that falls within the enumerated sub-grouping of commercial or legal interactions, including subject matter relating to advertising, marketing or sales activities or behaviors. Specifically, the recommending items is sales activity because it pertains to commerce and a transaction list (Specification [0003]). These claims further fall within the Mental Processes grouping of abstract ideas. Specifically, obtaining information, performing an analysis, and providing recommendations are observations, judgements, and evaluations that can be performed in the human mind or by a human using pen and paper. Furthermore the limitations recite the Mental Process of collecting information, analyzing information, and displaying certain results of the collection and analysis. Accordingly, these claims recite an abstract idea.
Applicant argues that the claims are patent eligible because the claimed inventions is “in line with…Example 39” (Remarks page 18). The examiner disagrees. Initially, with respect to Example 39, the examiner notes that the Subject Matter Examples are to be interpreted based on the fact patterns within, as other fact patterns may have different eligibility outcomes. In Example 39, a technical problem of the inability to robustly detect human faces in images where there are shifts, distortions, and variations in scale and rotation of the face pattern in the images is provided with a technical solution in the invention, which addresses this issue by using a combination of features to more robustly detect human faces. By contrast, the claims at issue merely recite using NLP engines to perform different analyses, where the analyses are encompassed by the abstract idea. This does not provide a similar technical solution.
Applicant argues the claims do not recite an abstract idea and are integrated into a practical application because the claims provide “improvement in the functioning of a computer” (Remarks pages 18-29). The examiner disagrees. The MPEP provides guidance on how to evaluate whether claims recite an improvement in the functioning of a computer or an improvement to other technology or technical field. For example, the MPEP states “the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.” The MPEP further states that “[t]he specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art,” and that, “conversely, if the specification explicitly sets forth an improvement but in a conclusory manner…the examiner should not determine the claim improves technology” (see MPEP 2106.04). That is, the claim includes the components or steps of the invention that provide the improvement described in the specification. Looking to the specification is a standard that the courts have employed when analyzing claims as it relates to improvements in technology. For example, in Enfish, the specification provided teaching that the claimed invention achieves benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements. Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). Additionally, in Core Wireless the specification noted deficiencies in prior art interfaces relating to efficient functioning of the computer. Core Wireless Licensing v. LG Elecs. Inc., 880 F.3d 1356 (Fed Cir. 2018). With respect to McRO, the claimed improvement, as confirmed by the originally filed specification, was “…allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters…’” and 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”. McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, (Fed. Cir. 2016).
While the examiner acknowledges that improvements to the functioning of a computer or to any other technology or technical field may constitute integration into a practical application (see MPEP 2106.05(a)), the instant claims do not provide a technical improvement. Rather, the claims provide an improvement to the abstract idea of recommending an item based on a taxonomy. This is further illustrated in paragraph [090] of the Specification, describing the invention relates to improving recommendation accuracy. With respect to Applicant’s argument regarding improved recommendation accuracy, resolving conflicting recommendations, hierarchal taxonomy-driven processing to perform multi-level matching, weightage ranking, and use of feedback, the prediction of taxonomy codes, and the grouping into buckets, the examiner notes these are merely improvements to the abstract idea. Furthermore, the examiner notes the recitation of the NLP engines is merely at a high level and is insufficient to show any sort of structural improvement regarding integrating the engines. Additionally, Applicant’s argument is noted which states a technical solution is provided to deal with high computational time and inefficiency. However, this statement is not supported with any other information as to how the improvement is being made to existing technology, and therefore, it is considered to be a conclusory statement of improvement. Again it is noted that sorting based on updated weightage is merely an improvement to the abstract idea and not a technical improvement.
Although the claims include computer technology such as a processor; one or more hardware processors; a sentence encoder; a plurality of natural language processing (NLP) engines; L1classifier model; a taxonomy classifier model; a first NLP engine amongst the plurality of NLP engines; a second NLP engine amongst the plurality of NLP engines; a third NLP engine amongst the plurality of NLP engines; a fourth NLP engine amongst the plurality of NLP engines; at least one NLP engine amongst the plurality of NLP engines; each of the plurality of NLP engines; a system, comprising: a memory storing instructions; one or more communication interfaces; and one or more hardware processors coupled to the memory via the one or more communication interfaces, wherein the one or more hardware processors are configured by the instructions; and one or more non-transitory machine-readable information storage mediums comprising one or more instructions which when executed by one or more hardware processors cause, such elements are merely peripherally incorporated in order to implement the abstract idea. Put another way, these additional elements are merely used to apply the abstract idea of recommending an item based on a taxonomy in a technological environment without effectuating any improvement or change to the functioning of the additional elements or other technology. This is unlike the improvements recognized by the courts in cases such as Enfish, Core Wireless, and McRO. Unlike precedential cases, neither the specification nor the claims of the instant invention identify such a specific improvement to computer capabilities. The instant claims are not directed to technological improvements but are directed to improving the business method of recommending an item based on a taxonomy. The claimed process, while arguably resulting in a better process for recommendations, is not providing any improvement to another technology or technical field as the claimed process is not, for example, improving the server and/or computer components that operate the system. Rather, the claimed process is utilizing data sets related to products while still employing the same server and/or computer components used in conventional systems to improve recommending an item based on a taxonomy, e.g. a business method, and therefore is merely applying the abstract idea using generic computing components. As such, the claims do not recite a technical solution to a technical problem.
Applicant argues the claims are patent eligible because “the Examiner overgeneralized the claim and did not consider the claim as a whole.” (Remarks page 28). The examiner disagrees. As shown in the rejection of claims under 35 U.S.C. 101 above, the limitations directed to the abstract idea are directly quoted and concepts within the identified as belonging to the Certain Methods of Organizing Human Activity and Mental Processes groupings of abstract ideas. Furthermore, the claims being directed to an abstract idea of recommending an item based on a taxonomy is not a description of the claims at a high level of abstraction untethered from the language of the claim. The MPEP highlights that a claim recites a judicial exception (e.g., an abstract idea) when the judicial exception is “set forth” or “described” in the claim. Claims can “describe” an abstract concept without ever explicitly stating the abstract concept, e.g., the claims in Alice “described” the concept of intermediated settlement without ever explicitly using the words “intermediated” or “settlement.” see MPEP 2106.04(II). Additionally, as shown in the rejection of claims under 35 U.S.C. 101 above, the claim limitations were considered as an ordered combination, and found not to add anything that is not already present when they are considered individually. Thus, the Examiner did not overgeneralize and did consider the claims as a whole.
Applicant argues the claims provide significantly more because the claims “achieve[] significantly more in terms of recommending best quality matches” (Remarks pages 29-33). The examiner disagrees. The MPEP sets forth that if a claim has been determined to be directed to a judicial exception under revised Step 2A, examiners should then evaluate the additional elements individually and in combination under Step 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). In this case, Applicant's claims merely recite steps of a method with generic computer components being recited in a generic manner. While additional elements are included within the claims, they are claimed in a generic manner and merely perform generic functions. The additional elements are merely peripherally incorporated in order to implement the abstract idea. Put another way, these additional elements are merely used to apply the abstract idea of recommending items based on a taxonomy in a technological environment without effectuating any improvement or change to the functioning of the additional elements or other technology. Applicant’s disclosure does not articulate or suggest how these additional elements function, individually or in combination, in any manner other than using generic functionality nor does the disclosure articulate how the elements provide a technical improvement. Accordingly, the additional elements do not amount to significantly more because they merely amount to using the additional elements as a tool to perform the abstract idea. Accordingly, the claims do not provide significantly more.
Applicant argues the dependent claims are allowable for the same reasons as the independent claims (Remarks page 33). The examiner disagrees. The rejections to the independent claims have been maintained for the reasons discussed in the paragraphs above and the rejections to the dependent claims are maintained for the same reasons.
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 ANNA MAE MITROS whose telephone number is (571)272-3969. The examiner can normally be reached Monday-Friday from 9:30-6.
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/ANNA MAE MITROS/Examiner, Art Unit 3689
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