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 .
Claims 1-20 have been examined.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The instant specification and drawings, and the specification and drawings of parent application 18/072,316, do not describe the operations of: “generating a user interaction prediction score by comparing the generated source embedding to the user embedding, wherein the user interaction prediction score represents a likelihood that the user would interact with an item associated with the source; computing a training error score based on the user interaction prediction score and the label indicating whether the user interacted with the item associated with the source; and updating the plurality of parameters of the source embedding model based on the computed training error score.” These operations are recited in each of independent claims 1, 9, and 17.
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 2 and 10 are rejected under 35 U.S.C. 101 because the claims are directed to a judicial exception (abstract idea) without significantly more.
First, it is determined that the claims are directed to a statutory category of invention. See MPEP 2106.03 (II). In the instant case, claims 1-8 are directed to a method, in the statutory category of process. Claims 9-16 are directed to a non-transitory computer-readable medium storing instructions that, when executed by a computing system, cause the computing system to perform operations, and therefore fall within the statutory category of article of manufacture. Claims 17-20 are directed to a non-transitory computer-readable medium storing parameters for a source embedding model, and therefore fall within the statutory category of article of 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 whether the claims are directed to a judicial exception. See MPEP 2106.04. The claims are analyzed to evaluate whether they recite a judicial exception (Step 2A, Prong One) 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 (Step 2A, Prong Two). See MPEP 2106.04.
Independent claims 1, 9, and 17 are not directed to an abstract idea or other judicial exception. However, dependent claims 2 and 10 are directed to an abstract idea (commercial interactions, in the field of certain methods of organizing human activity). Commercial interactions include agreements in the form of contracts; advertising, marketing or sales activities or behaviors; and business relations. Representative claim 2 recites (emphasis added):
The method of claim 1, further comprising:
receiving an order comprising a set of items for a user;
identifying an ordered item from the set of items for suggesting a replacement item to the user;
determining a set of candidate replacement items for the ordered item;
determining a source similarity score for each of the set of candidate replacement items by, for each of the candidate replacement items;
generating a first source embedding a first source associated with the ordered item by applying the updated source embedding model to source features associated with the first source;
generating a second source embedding a second source associated with the candidate replacement item by applying the updated source embedding model to source features associated with the second source; and
generating the source similarity score based on the first source embedding and the second source embedding;
selecting one or more candidate replacement items based on the source similarity scores; and
transmitting information identifying the one or more selected candidate replacement items for display to the user.
Claim 10 is parallel to claim 2. Claims 2 and 10 are on the face of it directed to commercial interactions. (Step 2A, Prong One: YES for claims 2 and 10, NO for claims 1, 3-9, and 11-20)
Proceeding to Step 2A, Prong Two, claims 2 and 10 do not recite any of the specific limitations that are indicative of integration into a practical application, and do not otherwise apply or use the judicial exception in a meaningful way beyond generally linking the judicial exception to a particular technological environment, such that the claims as a whole are more than a drafting effort to monopolize the judicial exception. For the instant claims other than 2 and 10, Prong Two is not reached. (Step 2A, Prong Two: NO for claims 2 and 10)
Next, under Step 2B of the Alice/Mayo test, the claims are analyzed to determine whether there are additional claim limitations that individually, or as an ordered combination, ensure that the claims amount to significantly more than the abstract idea. See MPEP 2106.05. In the instant case, Step 2B is reached only for claims 2 and 10. Step 2B involves the same considerations as Step 2A, Prong Two, with the additional consideration of whether there is a specific limitation other than what is well-understood, routine, and conventional in the field. To the extent that the same considerations are involved, the same conclusions may be reached on essentially the same grounds. It is additionally noted that claim 1 and parallel claim 9 recite, “wherein the source embedding model is a neural network comprising a plurality of layers,” a limitation that is therefore included in dependent claims 2 and 10. Ferguson et al. (U.S. Patent Application Publication 2003/0149603) discloses (paragraph 127, emphasis added), “As is well known in the art, a neural network comprises an input layer of nodes, an output layer of nodes, and a hidden layer of nodes disposed therein, and weighted connections between the hidden layer and the input and output layers.” Therefore, the recited neural network requires only the use of well-understood, routine, and conventional technology.
Claims 2 and 10 recite the steps of “receiving an order” and “transmitting information identifying the one or more selected candidate replacement items for display to the user.” The courts have recognized the following computer functions as well-understood, routine and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: 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); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., 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). Hence, the recited operations of receiving and transmitting require only the use of well-understood, routine, and conventional functions and technology.
Claim 1 and parallel claim 9 recite “storing a plurality of training examples” and “storing the updated source embedding model to a non-transitory computer-readable medium.” Additionally, claim 9 recites, “A non-transitory computer-readable medium storing instructions that, when executed by a computing system, cause the computing system to perform operations”. The courts have recognized storing and retrieving information in memory as well-understood, routine, and conventional functions, in Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d at 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1363, 115 USPQ2d at 1092-93 (Fed. Cir. 2015). Therefore, the operations of storing require only the use of well-understood, routine, and conventional functions and technology. Furthermore, Rajaram et al. (U.S. Patent 8,548,940) discloses (column 10, lines 10-24, emphasis added), “Computer code for operating and configuring system 416 to intercommunicate and to process webpages, applications and other data and media content as described herein are preferably downloaded and stored on a hard disk, but the entire program code, or portions thereof, may also be stored in any other non-transitory machine readable medium as is well known, such as a ROM or RAM, on any non-transitory machine readable medium capable of storing program code, such as any type of rotating media including floppy disks, optical disks, digital versatile disk (DVD), compact disk (CD), microdrive, and magneto-optical disks, and magnetic or optical cards, nanosystems, (including molecular memory ICs), or any type of non-transitory machine readable medium suitable for storing instructions and/or data.” Hence, the non-transitory computer-readable medium to which the updated source embedding model is stored requires only the use of well-understood, routine, and conventional technology, and likewise with the “non-transitory computer-readable medium storing instructions” of claim 9 and its dependent claim 10.
Thus, the limitations of claims 1 and 2, and also the limitations of claims 9 and 10, whether considered separately or in combination with each other, do not raise the recited method and non-transitory computer-readable storage medium to significantly more than an abstract idea. (Step 2B: NO for claims 2 and 10)
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Smith (U.S. Patent Application Publication 2016/0019608). Claim 17 of the instant application recites, “A non-transitory computer-readable medium storing parameters for a source embedding model, wherein the source embedding model is produced by a process comprising: [a series of operations].” Claim 17 does not recite that the stored parameters cause a computer to perform the operations of claims 17-20, or anything else that would make the parameters functional descriptive matter. The parameters are therefore non-functional descriptive matter. Smith discloses (paragraph 43, emphasis added), “For example, rather than use a fixed value of 7 days, it is possible to make this value changeable via an operational GUI, through which authorized users can change the parameter in real-time without having to modify the relevant scoring scenario itself. Operational parameters 204 thus may be stored in a non-transitory computer-readable storage medium, and they may be associated with one or more scoring scenarios, as appropriate.” Hence, the “non-transitory computer-readable medium storing parameters for a source embedding model” is obvious over the disclosure of Smith, for the obvious advantage of storing data (parameters in particular), which users may have occasion to re-use, or to change and then use and perhaps re-use. The parameters of claim 17 and its dependents may differ from those in Smith, but difference in non-functional descriptive matter does not make stored data non-obvious.
Non-Obvious Subject Matter
Claims 1-8 are rejected under 35 U.S.C. 112, and claim 2 is rejected under 35 U.S.C. 101, but claims 1-8 recite non-obvious subject matter.
Claims 9-16 are rejected under 35 U.S.C. 112, and claim 10 is rejected under 35 U.S.C. 101, but claims 9-16 recite non-obvious subject matter.
Claims 17-20 are rejected under 35 U.S.C. 112, and under 35 U.S.C. 103, but claims 17-20 could be amended so as not to recite merely non-functional descriptive matter, and presumably become non-obvious under 35 U.S.C. 103.
The following is a statement of reasons for the indication of non-obvious subject matter: The prior art references of record, considered individually or in combination, do not disclose, teach or reasonably suggest the operations of: “generating a user interaction prediction score by comparing the generated source embedding to the user embedding, wherein the user interaction prediction score represents a likelihood that the user would interact with an item associated with the source; computing a training error score based on the user interaction prediction score and the label indicating whether the user interacted with the item associated with the source; and updating the plurality of parameters of the source embedding model based on the computed training error score.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Smith (U.S. Patent 9,922,350) is the patent issued on the application published as U.S. Patent Application Publication 2016/0019608, and used in rejecting claims 17-20 under 35 U.S.C. 103. Wang et al. (U.S. Patent 10,963,973) disclose an adversarial example detection method and apparatus, computing device, and storage medium. Feuz et al. (U.S. Patent 11,216,745) disclose an incognito mode for personalized machine-learned models. Joglekar et al. (U.S. Patent 11,443,202) disclose real-time on the fly generation of feature-based label embeddings via machine learning. Jain et al. (U.S. Patent 11,636,500) disclose an adaptive server architecture for controlling allocation of programs among networked devices. Shatdarshanam Venkata et al. (U.S. Patent 12,106,352) is the patent issued on the application published as U.S. Patent Application Publication 2023/0196436, and made of record by Applicant in the Information Disclosure Statement of February 24, 2026. Balasubramanian et al. (U.S. Patent 12,266,005) is the patent issued on the parent of the instant application, and has been considered for possible double patenting (rejections not made). Prasad et al. (U.S. Patent 12,430,511) discloses generating suggested instructions through natural language processing of instruction examples. Balasubramanian et al. (U.S. Patent 12,548,062) is a case with overlapping inventorship, also considered for possible double patenting (rejections not made).
Feuz et al. (U.S. Patent Application Publication 2019/0138940) disclose an incognito mode for personalized machine-learned models. Joglekar et al. (U.S. Patent Application Publication 2021/0004693) disclose real-time on the fly generation of feature-based label embeddings via machine learning. Wang et al. (U.S. Patent Application Publication 2021/0049505) disclose an adversarial example detection method and apparatus, computing device, and storage medium. Cosgrove et al. (U.S. Patent Application Publication 2023/0049505) disclose a multimode conversational agent using a pattern-completion engine. Prasad et al. (U.S. Patent Application Publication 2024/0070393) disclose generating suggested instructions through natural language processing of instruction examples. Langford (U.S. Patent Application Publication 2024/0070393) discloses systems and methods for minimizing development time in artificial intelligence models using dynamic dataset fittings.
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/NICHOLAS D ROSEN/ Primary Examiner, Art Unit 3689 September 2, 2026
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