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, see Remarks, filed 07/07/2026, with respect to the rejection(s) of claims 7-14 under 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, examiner has determined a 101 rejection is required for claims 7-14. This new grounds of rejection necessitates this second non-final rejection.
Claim Status
Claims 7-14 are pending.
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 7-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The following is Examiner's analysis of the claimed invention under the 2019 Revised Patent Subject Matter Eligibility Guidance (PEG)
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. Claim 7 recites a process (method).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. Claim 7 recites “the two classes being: a win-dedicated class indicative of a predicted benefit of the training web content element being ranked at the given ranking position, and a loss-dedicated class indicative of a predicted detriment of the training web content element being ranked at the given ranking position” which falls within the mathematical concepts grouping of abstract ideas. The meaning provided in the specification for win/loss-dedicated class is “a probability of a user engagement with the training web content element at the given ranking position”(Para 00032). Since probability is a mathematical relationship, the claim recites an abstract idea.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. Claim 7 recites “A method of training a model for ranking objects on a Search Engine Results Page (SERP), the SERP to be provided to an electronic device associated with a user of a search engine hosted by a server, the server being communicatively coupled with the electronic device, the method executable by the server and comprising” which amounts to merely including instructions to implement an abstract idea on a computer.
Claim 7 recites “acquiring query data associated with a training query, the training query being a previously submitted query to the search engine for which a training web content element has been provided as a search result at a given ranking position; acquiring context data associated with the training web content element, the context data including the query data; acquiring user-interaction data associated with the training web content element, the user-interaction data being indicative of (i) a benefit of the training web content element having been ranked at the given ranking position in response to the training query and (ii) a detriment of the training web content element having been ranked at the given ranking position in response to the training query” which is mere necessary data gathering because all uses of the recited judicial exception require such data gathering or data output.
Claims 7 recite “generating two training sets for a training query-web content element pair, the training query-web content element pair including the training query and the training web content element, the two training sets including: a positive training set having an input and a first label, the input having the context data, the first label being indicative of a ground-truth benefit of the training web content element having been ranked at the given ranking position in response to the training query; a negative training set having the input and a second label, the second label being indicative of a ground-truth detriment of the training web content element having been ranked at the given ranking position in response to the training query; training the model using the positive training set and the negative training set, the model being a multiclassification model for a plurality of classes, the plurality of classes including two classes dedicated to the given ranking position” which is merely indicating a field of use in which to apply a judicial exception (machine learning algorithms).
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The courts have determined merely including instructions to implement the abstract idea on a computer does not qualify as “significantly more” when recited in a claim with a judicial exception (See Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984).
The courts have determined mere data gathering to not be enough to qualify as “significantly more” when recited in a claim with a judicial exception (See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011)).
The courts have determined merely indicating a field of use in which to apply a judicial exception does not amount to significantly more than the judicial exception (see Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981)).
For the reasons above, claims 7 is rejected as being directed to nonpatentable subject matter under §101. This rejection applies equally to the dependent claims. The additional limitations of the dependent claims are addressed briefly below:
Regarding claim 8
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a process (method).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. Claim 8 recites “wherein the model is configured to output probabilities for each ranking position of a set of ranking positions for each of the win- dedicated class and the loss-dedicated class” which falls within the mathematical concepts grouping of abstract ideas. The step of outputting probabilities is a mathematical calculation; therefore, the claim recites an abstract idea.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. There is no indication that the elements of the claim
integrate the judicial exception into a practical application.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 9
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a process (method).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “wherein the training web content element is a widget to be inserted in web documents included in relevant search results for the training query” which amounts to merely including instructions to implement an abstract idea on a computer.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The courts have determined merely including instructions to implement the abstract idea on a computer does not qualify as “significantly more” when recited in a claim with a judicial exception (See Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984).
Regarding claim 10
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a process (method).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim recites “wherein the win-dedicated class corresponds to a probability of a user engagement with the training web content element at the given ranking position” which falls within the mathematical concepts grouping of abstract ideas.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. There is no indication that the elements of the claim
integrate the judicial exception into a practical application.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 11
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a process (method).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim recites “wherein the loss-dedicated class corresponds to a probability of a user engagement with another web content element below the given ranking position” which falls within the mathematical concepts grouping of abstract ideas.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. There is no indication that the elements of the claim
integrate the judicial exception into a practical application.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 12
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a process (method).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim recites “wherein the model is configured to output probabilities for each ranking position of a set of ranking positions for each of the win- dedicated class and the loss-dedicated class, and wherein the training includes adjusting the model to minimize a difference between the output probabilities and probabilities indicated by the positive training set and the negative training set” which falls within the mathematical concepts grouping of abstract ideas.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. There is no indication that the elements of the claim
integrate the judicial exception into a practical application.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 13
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a process (method).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “wherein the training includes random data collection by which the given ranking position is randomly selected” which is mere necessary data gathering.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The courts have determined mere data gathering to not be enough to qualify as “significantly more” when recited in a claim with a judicial exception (See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011)).
Regarding claim 14
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a process (method).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim recites “wherein the positive training set represents an example when a user interacted with the training web content element at the given position in the given context; and the negative training set represents an example when a user interacted with the training web content element at a ranking position beneath the given position, and wherein the training adjusts the model to predict probabilities of both the win-dedicated class and the loss-dedicated class” which falls within the mathematical concepts grouping of abstract ideas.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. There is no indication that the elements of the claim
integrate the judicial exception into a practical application.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Taken alone, the additional elements of the dependent claims do not amount to significantly
more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an
ordered combination adds nothing that is not already present when looking at the elements taken
individually. There is no indication that the combination of elements improves the functioning of a
computer or improves any other technology. Their collective functions merely provide conventional
computer implementation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brooks Hale whose telephone number is 571-272-0160. The examiner can normally be reached 9am to 5pm est.
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/B.T.H./Examiner, Art Unit 2166
/SANJIV SHAH/Supervisory Patent Examiner, Art Unit 2166
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