DETAILED ACTION
This is the initial Office action based on the application filed on February 27, 2025. Claims 1-20 are currently pending and have been considered below.
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,265,544. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘544 Patent anticipates the instant claims.
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 claimed invention is directed to an abstract idea without significantly more. The Claims recite abstract subject matter directed towards using a user interface to select different elements.
Specifically, Independent Claims 1, 8 and 15 recite:
generating, for display on a client device associated with a user account of a genealogical data system, a first set of suggested nodes selectable to modify a genealogy tree of the user account, the first set of suggested nodes comprising interface elements selectable to perform respective processes – Identifying how to modify a genealogy tree is something that a person can perform in the mind and/or with aid of pen and paper. Also, interface elements are considered additional elements.
executing a process, from among the respective processes, with respect to a first suggested node from among the first set of suggested nodes in response to detecting a selection of a first interface element – Clicking on a user interface element is a generic function of a computer as discussed at least at MPEP 2106.05.
generating, based on executing the process in response to the selection of the first interface element, a modified candidate node pool by updating a candidate node pool utilizing a machine learning model to process features corresponding to the selection of the first interface element – Modifying a node in a genealogy tree is something that a person can perform in the mind and/or with aid of pen and paper. Also, interface elements are considered additional elements. Furthermore, the use of machine learning seems to be a generic computer function as there is no actual improvement to anything related to machine learning.
generating, for display on the client device, a second set of suggested nodes selected from the modified candidate node pool – Displaying a result of an abstract idea is a generic function of a computer as discussed at least at MPEP 2106.05.
This judicial exception is not integrated into a practical application. Other, the abstract idea, the claims recite additional elements of hardware such as a processor, memory, etc executing the abstract idea. The additional elements are recited at a high level of generality, i.e. as generic computer components performing generic computer functions of information processing. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Dependent Claims, 2-7, 9-14 and 16-20, further describe more details of the above identified mental processes and thus do not provide additional elements that would make them statutory under 35 USC 101.
Claim Rejections - 35 USC § 102
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 1-2, 8-9 and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hulet et al (US Patent Application Publication 2014/0082568).
Claims 1, 8 and 15: Hulet discloses a method, a system and a non-transitory computer readable medium comprising:
generating, for display on a client device associated with a user account of a genealogical data system, a first set of suggested nodes selectable to modify a genealogy tree of the user account, the first set of suggested nodes comprising interface elements selectable to perform respective processes [0020]. [“the system 100 uses the stated relationship rules, among other things, to suggest a list of candidates for inclusion in a family tree, from which the user selects candidates that will be added to the family tree.”]
executing a process, from among the respective processes, with respect to a first suggested node from among the first set of suggested nodes in response to detecting a selection of a first interface element [0020, 0035]. [“… the user is requested to select a person in the candidate list .”]
generating, based on executing the process in response to the selection of the first interface element, a modified candidate node pool by updating a candidate node pool utilizing a machine learning model to process features corresponding to the selection of the first interface element [0024, 0041]. [See at least re-ranking a candidate list after a user selection.]
generating, for display on the client device, a second set of suggested nodes selected from the modified candidate node pool [Fig. 6, 0024, 0041]. [See at least displaying a re-ranked candidate list after a user selection.]
Claims 2, 9 and 16: Hulet discloses the method, the system and the medium of Claims 1, 8 and 15 above, and Hulet further discloses wherein the interface elements of the first set of suggested nodes comprise one or more of: a save element selectable to save a suggested node for further review, a print element selectable to print the suggested node, an add element selectable to add the suggested node to the genealogy tree, a compare element selectable to compare the suggested node with another suggested node, or an ignore element selectable to ignore the suggested node [0036-0037]. [See at least adding the node.]
Claims 3, 10 and 17: Hulet discloses the method, the system and the medium of Claims 2, 9 and 16 above, and Hulet further discloses wherein executing the process with respect to the first suggested node comprises one or more of: saving the first suggested node for further review in response to selection of the save element as the first interface element; printing the first suggested node in response to selection of the print element as the first interface element; adding the first suggested node to the genealogy tree in response to selection of the add element as the first interface element; comparing the first suggested node with another suggested node in response to selection of the compare element as the first interface element; or ignoring the first suggested node in response to selection of the ignore element as the first interface element [0036-0037]. [See at least adding the node.]
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 4-5, 7, 11-12, 14 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hulet et al (US Patent Application Publication 2014/0082568) in view of Hale et al (US Patent Application Publication 2013/0318047).
Claims 4, 11 and 18: Hulet discloses the method, the system and the medium of Claims 1, 8 and 15 above, but Hulet alone does not explicitly disclose wherein generating the modified candidate node pool comprises utilizing the machine learning model to process a previous candidate node pool, user-level features associated with the user account, and tree- level features associated with the genealogy tree.
However, Hale [0078] discloses suggesting new nodes (i.e. modified candidate pool) that includes adding at least links and tree nodes.
As such, it would have been obvious for one of ordinary skill in the art before the effective filing date to modify Hulet with Hale. One would have been motivated to do so in order to help a user with finding other member of a family tree.
Claims 5, 12 and 19: Hulet as modified discloses the method, the system and the medium of Claims 4, 11 and 18 above, and Hulet further discloses wherein generating the modified candidate node pool further comprises modifying the user-level features based on the selection of the first interface element to impact inclusion of the first suggested node within the modified candidate node pool [0024, 0041]. [Also see Hale [0078].]
Claims 7 and 14: Hulet as modified discloses the method and the system of Claims 4 and 11 above, and Hulet further discloses wherein generating the second set of suggested nodes for display on the client device comprises selecting, utilizing the machine learning model, nodes from the modified candidate node pool according to action features defining previous interactions with suggested nodes and further defining a focused node within the genealogy tree [0024, 0041]. [Also see Hale [0078].]
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
O’Reilly (2016/0364813) describes at least changes to family tree including during a particular time range.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX GOFMAN whose telephone number is (571)270-1072. The examiner can normally be reached Monday-Friday 8-5.
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/ALEX GOFMAN/Primary Examiner, Art Unit 2163