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 .
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 1-20 are rejected under 35 U.S.C. § 101 because the instant application is directed to non-patentable subject matter. Specifically, the claims are directed toward at least one judicial exception without reciting additional elements that amount to significantly more than the judicial exception. The rationale for this determination is in accordance with the guidelines of the USPTO, applies to all statutory categories, and is explained in detail below.
When considering subject matter eligibility under 35 U.S.C. §101, (1) it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, (2a) it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), which is a two prong inquiry. In prong 1, it must be determined whether the claim recites an abstract idea, a law of nature, or a natural phenomenon, and if so, in prong 2, it must be determined whether the claim recites additional elements that integrate the judicial exception into a practical application. If the claim is determined to be directed to an abstract idea in step 2a, it must additionally be determined in step 2b whether the claim amounts to significantly more than the abstract idea. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. MPEP §2106.04.
STEP 1. Per Step 1 of the two-step analysis, the claims are determined to include a method of recommending items, as in independent claim 1 and in the claims that depend therefrom. Such methods fall under the statutory category of “process”. Therefore, the claims are directed to a statutory eligibility category.
Step 2A, prong 1. The invention is directed to a method of recommending items, which is a sales method and, hence, a Certain Method of Organizing Human Activities. MPEP § 2106.04(a). As such, the claims include an abstract idea. When considering the limitations individually and as a whole the limitations directed to the abstract idea are:
“A method implemented at a …, comprising”:
“receiving behavior prediction information of a target user from a …”;
“generating, by a second item … in the …, recommendation information about a group of items based on feature information of the group of items”;
“determining, based on the behavior prediction information of the target user and the recommendation information about the group of items, a target item recommended for the target user from the group of items”; and
“sending information about the target item to the …”.
This judicial exception is not integrated into a practical application. The elements are recited at a high level of generality, i.e. a generic computing system performing generic functions including generic processing of data. Accordingly, the additional elements do not integrate the abstract into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, the claims are directed to an abstract idea. MPEP §2106.04. Thus, under Step 2A, prong 2 of the Mayo framework, the examiner holds that the claims are directed to concepts identified as abstract.
STEP 2B. Because the claims include one or more abstract ideas, the examiner now proceeds to Step 2B of the analysis, in which the examiner considers if the claims include individually or as an ordered combination limitations that are "significantly more" than the abstract idea itself. This includes analysis as to whether there is an improvement to either the "computer itself," "another technology," the "technical field," or significantly more than what is "well-understood, routine, or conventional" in the related arts.
The instant application includes in claim 1 additional limitations to those deemed to be abstract ideas. When taken individually, these limitations are
“server”;
“client”; and
“embedding engine”.
In the instant case, claim 1 is directed to above mentioned abstract idea. Technical functions such as sending, receiving, displaying and processing data are common and basic functions in computer technology. The individual limitations are recited at a high level and do not provide any specific technology or techniques to perform the functions claimed.
Looking to MPEP §2106.05(d), based on court decisions well understood, routine and conventional computer functions or mere instruction and/or insignificant activity have been identified to include: Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321,120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TU Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); O/P Techs., /no., v. Amazon.com, Inc., 788 F,3d 1359, 1363, 115 USPQ2d 1090,1093 (Fed. Cir, 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPG2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result-a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink," (emphasis added)}; Insignificant intermediate or post solution activity -See Bilski v. Kappos, 581 U.S. 593, 611 -12, 95 USPQ2d 1001,1010 (2010) (well-known random analysis techniques to establish the inputs of an equation were token extra-solution activity); In Bilski referring to Flook, where Flook determined that an insignificant post-solution activity does not makes an otherwise patent ineligible claim patent eligible. In Bilski, the court added to Flook that pre-solution (such as data gathering) and insignificant step in the middle of a process (such as receiving user input) to be equally ineffective. The specification and Claim does not provide any specific process with respect to the display output that would transform the function beyond what is well understood. Like as found in Electric Power Group, Bilski, the technical process to implement the input and display functions are conventional and well understood.
In addition, when the claims are taken as a whole, as an ordered combination, the combination of steps does not add "significantly more" by virtue of considering the steps as a whole, as an ordered combination. The instant application, therefore, still appears only to implement the abstract idea to the particular technological environments using what is well-understood, routine, and conventional in the related arts. The steps are still a combination made to the abstract idea. The additional steps only add to those abstract ideas using well-understood and conventional functions, and the claims do not show improved ways of, for example, an unconventional non-routine functions for authorizing the timing of a payment and to activate a display screen based on a trigger or camera functions that could then be pointed to as being "significantly more" than the abstract ideas themselves. Moreover, examiner was not able to identify any "unconventional" steps, which, when considered in the ordered combination with the other steps, could have transformed the nature of the abstract idea previously identified. The instant application, therefore, still appears to only implement the abstract ideas to the particular technological environments using what is well-understood, routine, and conventional in the related arts.
Further, note that the limitations, in the instant claims, are done by the generically recited computing devices. The limitations are merely instructions to implement the abstract idea on a computing device and require no more than a generic computing devices to perform generic functions.
CONCLUSION. It is therefore determined that the instant application not only represents an abstract idea identified as such based on criteria defined by the Courts and on USPTO examination guidelines, but also lacks the capability to bring about "Improvements to another technology or technical field" (Alice), bring about "Improvements to the functioning of the computer itself" (Alice), "Apply the judicial exception with, or by use of, a particular machine" (Bilski), "Effect a transformation or reduction of a particular article to a different state or thing" (Diehr), "Add a specific limitation other than what is well-understood, routine and conventional in the field" (Mayo), "Add unconventional steps that confine the claim to a particular useful application" (Mayo), or contain "Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment" (Alice), transformed a traditionally subjective process performed by humans into a mathematically automated process executed on computers (McRO), or limitations directed to improvements in computer related technology, including claims directed to software (Enfish).
Dependent claims 2-9, which impose additional limitations, also fail to claim patent-eligible subject matter because the limitations cannot be considered statutory. Claim 2 recites a “deep semantic similarity engine”. This is a generic element. In reference to claims 2-9, these dependent claims have also been reviewed with the same analysis as independent claim 1. The dependent claims have been examined individually and in combination with the preceding claims, however they do not cure the deficiencies of claim 1; where all claims are directed to the same abstract idea, "addressing each claim of the asserted patents [is] unnecessary." Content Extraction &. Transmission LLC v, Wells Fargo Bank, Natl Ass'n, 776 F.3d 1343, 1348 (Fed. Cir. 2014). If applicant believes the dependent claims are directed towards patent eligible subject matter, applicant is invited to point out the specific limitations in the claim that are directed towards patent eligible subject matter. Claim 10 recites a “device”, a “processor”, and a “memory”. Claim 19 recites a “computer-readable medium”. These are generic elements. Claims 10 and 19 are otherwise similar to claim 1 and are rejected for the same reasons. Claims 11-18 and 20 depend from claims 10 and 19 respectively, are similar to claims 2-9, and are rejected for the same reasons.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 1, 7-10, and 16-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Number 10,354,184 B1 (hereinafter “Vitaladevuni”).
With respect to claim 1, Vitaladevuni discloses
“A method implemented at a server, comprising”: Vitaladevuni, abstract;
“receiving behavior prediction information of a target user from a client”; Vitaladevuni 7:33-55 (behavior of is predicted based on statistical data);
“generating, by a second item embedding engine in the server, recommendation information about a group of items based on feature information of the group of items”; Vitaladevuni 7:33-55 (recommendation information is based on similar users’ past behavior);
“determining, based on the behavior prediction information of the target user and the recommendation information about the group of items, a target item recommended for the target user from the group of items”; Vitaladevuni 7:33-55 (target item is recommended); and
“sending information about the target item to the client”. Vitaladevuni 7:33-55 (information is sent to user).
With respect to claims 7 and 16, Vitaladevuni discloses
“wherein the determining comprises the second item embedding engine mapping the feature information of the group of items to the recommendation information about the group of items”. Vitaladevuni 3:12-46 (feature information relating to other users is mapped to recommendations).
With respect to claims 8 and 17, Vitaladevuni discloses
“wherein the determining further comprises matching the behavior prediction information of the target user to the recommendation information about the group of items”. Vitaladevuni 3:12-46 (correlations between target user and behavior prediction information are determined).
With respect to claims 9 and 18, Vitaladevuni discloses
“wherein the feature information of the group of items comprises at least one of one or more categories of the group of items, one or more standard levels of the group of items, and one or more comments of the group of items”. Vitaladevuni 3:12-46 (kinds of products are categories and reviews are comments).
With respect to claim 10, Vitaladevuni discloses
“A device implemented at a server, comprising: a processor; and a memory having computer-executable instructions stored therein, wherein the computer-executable instructions, when executed by the processor, cause the device to execute actions comprising”: Vitaladevuni 15:59-16:41.
Claim 10 is otherwise rejected on the same basis as claim 1.
With respect to claim 19, Vitaladevuni discloses
“A computer program product tangibly stored in a non-transitory computer-readable medium and comprising machine-executable instructions, wherein the machine-executable instructions, when executed, cause a machine to perform the steps of”: Vitaladevuni 15:59-16:41.
Claim 19 is otherwise rejected on the same basis as claim 1.
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 2-6, 11-15, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Vitaladevuni in view of Xu, Z. et al "Tag-Aware Personalized Recommendation Using a Deep-Semantic Similarity Model with Negative Sampling", Proceedings of the 25th ACM International Conference on Information and Knowledge Management, October 2016 (listed in applicant's information disclosure statement filed January 15, 2025) (hereinafter "Xu").
With respect to claims 2, 11, and 20, Vitaladevuni discloses
“wherein the server comprises a second user behavior embedding engine, the second user behavior embedding engine and the second item embedding engine are implemented by a … [model], and the method further comprises:
receiving a first group of parameters of the … [model] from the client; and
updating the … [model] by using the first group of parameters”. Vitaladevuni 3:12-46, 4:28-37 (model is trained and updated).
Vitaladevuni does not explicitly disclose a deep semantic similarity model. Xu discloses
“… engine are implemented by a deep semantic similarity model (DSSM), and the method further comprises:
receiving a first group of parameters of the DSSM from the client; and
updating the DSSM by using the first group of parameters”. Xu, page 2 (parameters are sent to server and used in iterative process to rank products; model is updated by multiple sets of parameters).
Both Vitaladevuni and Xu relate to predicting user behavior. Vitaladevuni, abstract; Xu, abstract. It would have been obvious to one of ordinary skill in the art at the time of filing to include the deep semantic similarity model as taught by Xu in the method of Vitaladevuni with the motivation of permitting comparison of additional parameters. Xu, page 1.
With respect to claims 3 and 12, Xu discloses
“further comprising: sending an updated second group of parameters of the DSSM to the client”. Xu, page 2 (parameters are sent to server and used in iterative process to rank products; model is updated by multiple sets of parameters).
With respect to claims 4 and 13, Vitaladevuni discloses
“wherein the method further comprising receiving behavior prediction information of one or more other users from one or more other clients”. Vitaladevuni 7:33-55 (behavior information can be received from any number of clients).
With respect to claims 5 and 14, Vitaladevuni discloses
“wherein the method further comprising receiving one or more other groups of parameters of respective DSSMs from the one or more other clients”. Vitaladevuni 7:33-55 (received parameters can be used by any model).
With respect to claims 6 and 15, Vitaladevuni discloses
“wherein the updated second group of parameters of the DSSM is generated at the server by aggregating the first group of parameters of the DSSM with one or more other groups of parameters from the one or more other clients”. Vitaladevuni 3:12-46, 7:33-55 (received parameters are aggregated and correlated).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ETHAN D CIVAN whose telephone number is (571)270-3402. The examiner can normally be reached Monday-Thursday 8-6:30.
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, Jeffrey A Smith can be reached at (571) 272-6763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ETHAN D. CIVAN
Primary Examiner
Art Unit 3688
/ETHAN D CIVAN/Primary Examiner, Art Unit 3688
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