AIA
DETAILED ACTION
Claims 9-16 21-32 examined. Applicant 9/15/26 elected 9-16 without traverse. Please affirm.
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Apriori, “the claims” means the pending claims.
Apriori, claims dependent from rejected claims are necessarily rejected.
NONSTATUTORY DOUBLE PATENTING
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
The claims are rejected on the ground of provisional nonstatutory double patenting as being unpatentable over the claims of US. Co-pending Patent application US Serial No. 17/366910. 17/158118.
Both: frequency cap.
CLAIM INTERPRETATION
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Generic placeholders, e.g., module (claim 29) invoke 112f.
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 claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The claim(s) is/are directed to one or more abstract idea(s). The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the abstract idea(s).
Step 1
The claims and their dependents are directed to one of the statutory classes. The claims herein are directed to subject matter which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
Step 2a Prong 1
The enumerated groupings of abstract ideas are defined as:
1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations
2) Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion)
The claims are directed to each of those 3. MPEP 210.04 discusses multiple judicial exceptions
Because abstract ideas, laws of nature, and natural phenomenon "are the basic tools of scientific and technological work", the Supreme Court has expressed concern that monopolizing these tools by granting patent rights may impede innovation rather than promote it. See Alice Corp., 573 U.S. at 216, 110 USPQ2d at 1980; Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012).
The claims are Certain Methods of Organizing Human Activity such as
[Wingdings font/0x9F] fundamental economic principles or practices (including hedging, insurance, mitigating risk)
[Wingdings font/0x9F] commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)
[Wingdings font/0x9F] managing personal behavior or relationships or interactions
Alice
clearinghouse
implemented by computer
Here
advertising
implemented by computer
Ultramercial
advertising
implemented on Internet
Bilski
hedge
implemented by computer
The claims could be done with pencil and paper or even mentally for small data sets.
CLAIM 9 21 29
9. [A system comprising: one or more processors; and one or more computer storage media storing computer-executable instructions that, when executed by the one or more processors, implement a method comprising: ]
O receiving recipient data for a recipient of electronic communications, the recipient data indicating response behavior associated with received electronic communications;
O determining an opt-out probability for the recipient by applying a first model on the received recipient data; and
O determining a frequency cap for the recipient, the frequency cap determined, via a second model, based on the opt-out probability compared to a recommended electronic communication frequency for the recipient.
Applicant says “human” “manual” (US PG Pub 20250166019 ¶ 19-21).
SAP America (CAFC):
“We may assume that the techniques claimed are “[g]roundbreaking, innovative, or even brilliant,” but that is NOT ENOUGH for eligibility. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014). Nor is it enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 89–90 (2012); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct” from demonstrating novelty or nonobviousness.
Thus, the claims “recite” an abstract idea (i.e. “PEG” Revised Step 2A Prong 1=Yes).
Other steps do not present significantly more or integrate the idea into a practical application.
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
Prong 1 answered “YES”, the next question in Prong 2 is whether there is an integrated practical application.
The claims: one could do it with pen and paper, or mentally. This judicial exception is not integrated into a practical application. The elements are recited at a high-level of generality (e.g. generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component, general linking of idea to generic element. Accordingly, these additional elements do not integrate the abstract idea into a practical application for lack of any meaningful limits on practicing the abstract idea. The claims can be done with pencil and paper or mentally.
Step 2b
The claims: one could do it with pen and paper, or mentally. Applicant says “human” “manual” (US PG Pub 20250166019 ¶ 19-21). The additional elements are not sufficient to amount to significantly more than the judicial exception because the claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, and do not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. Additionally, the claims are directed to an abstract idea with additional generic computer elements that do not add meaningful limitations to the abstract idea because they require no more than a generic computer to perform generic computer functions.
Implementing is display, extra-solution activity MPEP 2106.05g.
Moreover, these generic limitations do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment, not meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. See Alice Corp p.16 of slip op. noting that none of the hardware recited "offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment', that is implementation via computers" (citing Bilski 561 US at 610).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements merely detail generic computer processors and software that implement the abstract idea. The generically recited computer elements do not add a meaningful limitation to the abstract idea because they would be routine in any computer implementation. The additional element merely instruct that the execution of the abreact idea occurs on other generic technology, but does not offer any disclosure of any additional technology beyond the abstract idea itself. Moreover, the claim steps as an ordered combination do not present significantly more. The claims are not directed to an improvement in computer functionality like in Enfish v Microsoft, but rather to an abstract idea. The claims "do nothing more than spell out what it means to 'apply it on a computer'”, Intellectual Ventures I 792 F.3d p1371 (citing Alice). Nowhere in the claims or specification is there any indication that the computer, processor, medium do something unconventional such that Applicant has improved computer functionality. Applicant presents an abstract idea for which computers are invoked merely as a tool.
Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. The claim limitations do not improve upon the technical field that the abstract idea is applied nor do they improve upon any other technical field. The claimed limitations do not improve upon the functioning of the computer itself. Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
The further elements of the claims are merely directed to further abstract ideas (a plurality of exceptions December 16, 2014 Interim Guidance p 74625, Fed Register Vol 79 No 241) and in ordered combination pose a list of abstract ideas, and invoke merely as a tool what is conventional (medium, processor, storage). There is no improvement in these items, but rather they are invoked as a tool to solve a business problem (marketing), not a technical problem.
The claim limitations alone or in ordered combination do not improve upon the technical field to which the abstract idea is applied nor do they improve upon any other technical field. The claimed limitations do not improve upon the functioning of any device itself.
The additional elements alone or in combination are not sufficient to amount to significantly more than the judicial exception because the claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, and do not provide meaningful limitations beyond generic linking use of an abstract idea to a particular technological environment.
Moreover, these generic limitations do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment, not meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. See Alice Corp p 16 of slip op. noting that none of the hardware recited "offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment', that is implementation via computers"(citing Bilski 561 US at 610).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements merely detail generic elements that implement the abstract idea. The generically recited computer elements do not add a meaningful limitation to the abstract idea. The additional element merely instruct that the execution of the abreact idea occurs on other generic technology, but does not offer any disclosure of any additional technology beyond the abstract idea itself. Moreover, the claim steps as an ordered combination do not present significantly more. The claims are not directed to an improvement in computer functionality like in Enfish v Microsoft, but rather to an abstract idea. The claims "do nothing more than spell out what it means to 'apply it on a computer'”, Intellectual Ventures I 792 F.3d p1371 (citing Alice). Nowhere in the claims or specification is there any indication that the computer, processor, medium do something to improved hardware functionality.
The further elements of the claims are merely directed to further abstract ideas and in ordered combination pose a list of abstract ideas, and invoke merely as a tool what is generic. Here, the claims neither improve the technological infrastructure nor provide particular solutions to challenges. Rather, in ordered combination the claim limitations spell out the steps of determining an ad effectiveness factor.
In addition to these indisputably generic features device, Applicant did not invent those features, and the claims do not recite them in a manner that produces a result that overrides the generic use of these features. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014). When viewed as an ordered combination, the proposed claims recite no more than the sort of “perfectly” generic computer components employed in a customary manner that we have held insufficient to transform the abstract idea into a patent-eligible invention. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016). We must thus conclude that the claims fail step two as well.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements merely detail generic computer processors and software that implement the abstract idea. The generically recited computer elements do not add a meaningful limitation to the abstract idea because they would be generic in any computer implementation. The additional element merely instruct that the execution of the abstract idea occurs on other generic technology, but does not offer any disclosure of any additional technology beyond the abstract idea itself. Moreover, the claim steps as an ordered combination do not present significantly more. The claims are not directed to an improvement in computer functionality like in Enfish v Microsoft, but rather to an abstract idea. The claims "do nothing more than spell out what it means to 'apply it on a computer'”, Intellectual Ventures I 792 F.3d p1371 (citing Alice). Nowhere in the claims or specification is there any indication that the computer, processor, storage do something nongeneric such that Applicant has improved computer functionality. Applicant presents an idea for which computers are invoked as a tool.
By way of example, in Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017), the steps in the claims described "the creation of a dynamic document based upon ‘management record types’ and ‘primary record types.’" 850 F.3d at 1339-40; 121 USPQ2d at 1945-46. The claims were found to be directed to the abstract idea of "collecting, displaying, and manipulating data." 850 F.3d at 1340; 121 USPQ2d at 1946. Examples that the courts have indicated may not be sufficient to show an improvement to technology include:
- Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48;
- Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016)
Here, the claims neither improve the technological infrastructure nor provide particular solutions to challenges. Rather, they spell out the steps of an algorithm implemented with generic technology or no technology but rather manually or mentally. In addition to these indisputably conventional features, Applicant did not invent any of those features, and the claims do not recite them in a manner that produces “a result that overrides the routine and conventional” use of these features. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014). When viewed as an ordered combination, the proposed claims recite no more than the sort of “perfectly conventional” generic computer components employed in a customary manner that we have held insufficient to transform the abstract idea into a patent-eligible invention. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016).
We must thus conclude that the claims fail step two as well.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for obviousness rejections in this Office Action:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made
MPEP 2123: “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331 (Fed. Cir. 1983) A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).”
Claims 9-16, 21-21 rejected under 35 USC 103 over Brechbuhl US 20180097759 (aka US Pat 10778628)
CLAIM 9 21 29
9. A system comprising: one or more processors; and one or more computer storage media storing computer-executable instructions that, when executed by the one or more processors, implement a method comprising:
O receiving recipient data for a recipient of electronic communications, the recipient data indicating response behavior associated with received electronic communications;
Brechbuhl Abstract, ¶ 9 10 specific recipient, Fig 1-3 and corresponding text
Brechbuhl unsubscribe tolerance ¶ 12 25 51 opt-down for less frequent
Brechbuhl at least ¶ 22 25
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O determining an opt-out probability for the recipient by applying a first model on the received recipient data; and
Brechbuhl Abstract, ¶ 22 25 35 unsubscribe model ≈ claimed “first model”, Fig 1-3 and corresponding text
O determining a frequency cap for the recipient, the frequency cap determined, via a second model, based on the opt-out probability compared to a recommended electronic communication frequency for the recipient.
Brechbuhl Abstract, ¶ 9 specific recipient model ≈ claimed “second model”, Fig 1-3 and text
Brechbuhl Abstract, ¶ 9 specific recipient, Fig 1 and corresponding text; model based on group or bin or segment or persona or demographic and past recipient frequency used to determine individual frequency, ¶ 50-51
Brechbuhl at least Fig 1 and corresponding text ¶ 25; Brechbuhl discusses model in terms of unsubscribe model, unwanted, opt-down
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CLAIM 10 22
10. The system of claim 9, wherein the first model comprises
O machine learning model
Brechbuhl US 20180097759 Abstract, ¶ 24 31 ML model Fig 1-3 and text
CLAIM 11 23 30
11. The system of claim 9, wherein the second model includes at least a
O non-decreasing smooth function
Coleman US 20240020769 Title “…Capping …¶ 21 in a smooth, non-decreasing progression ¶ 24 in a smooth (e.g., constant or nearly constant rate), non-decreasing progression
CLAIM 12 24 31
12. The system of claim 9, wherein the recipient data further includes
O recipient profile data
Brechbuhl US 20180097759 Abstract, ¶ 24 31 ML model Fig 1-3 and text
Brechbul recipience persona Fig 1 Brechbul ≈ recipient profile
Brechbuhl Abstract, ¶ 9 specific recipient, Fig 1 and corresponding text; model based on group or bin or segment or persona or demographic and past recipient frequency used to determine individual frequency, ¶ 50-51
CLAIM 13 25
13. The system of claim 9, wherein the recipient data further includes
O recipient electronic communication delivery data
Brechbuhl at least ¶ 22 25
Brechbuhl Abstract, ¶ 9 specific recipient, Fig 1 and corresponding text; model based on group or bin or segment or persona or demographic and past recipient frequency used to determine individual frequency, ¶ 50-51
CLAIM 14 32
14. The system of claim 9, wherein the response behavior includes
O results of recipient electronic communication tracking data
Brechbuhl Abstract, ¶ 9 specific recipient, Fig 1-3 and corresponding text
CLAIM 15 27
15. The system of claim 14, wherein the results of recipient electronic communication tracking data include
O a number of electronic communication links selected by the recipient
Brechbuhl at least ¶ 22 25
Brechbuhl US 20180097759 Abstract, ¶ 24 31-50 ML model Fig 1-3 and text
CLAIM 16 28
16. The system of claim 9, further comprising:
O preprocessing the recipient data to determine the recipient is associated with an electronic communication-delivery count below a threshold amount
Brechbuhl US 20180097759 Abstract ¶ 32 33
POINT OF CONTACT
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BREFFNI X BAGGOT whose telephone number is (571)272-7154. The examiner can normally be reached M-F 8a-10a, 12p-6p.
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BREFFNI BAGGOT
Primary Examiner
Art Unit 3621
/BREFFNI BAGGOT/Primary Examiner, Art Unit 3621
